Cease and desist letter from Microsoft

I was talking about just the retainer/opinion from a decent copyright lawyer, not for the actual case

Edit: I hope this guy complied with Microsoft.

 

Bloody hell!

Since when were windoesmobile and wwwhotmajl registered trademarks of Microsoft? What stops that company from registering those exact words to themselves, then Microsoft will have jackshit against them. Or am I missing something?

 

you are missing intent. these lawsuits are based on the grounds that the squatter is using the domain in a way that microsoft deems unfit. This person or persons intent was to profit from a Microsoft Trademark while offering nothing to them in return.

I have a Zune fan site that helps promote their products and services to the benefit of both parties. My intent is such that they allow the infringement of my domains until my intent changes or I violate their trademarks in a way they deem unfit.

These guys were probably hijacking traffic with typo domains and sending them somewhere Microsoft did not like. They broke the unwritten rules and upset Microsoft.

they lost because they did not play fair

 

This is really funny, my brother who is an attorney was over at my house on holiday we where reading this and I decided to add my 2 cents. He said that the biggest problem you have here is MS has the money to make your life hell! The best argument to MS would be ....If MS which hopes to corner the market for ZUNE or any other products they must buy the available domains, (we know this is not 100% possible) he is not sure if turning over the domain is the best thing to do GO SEE YOUR ATTORNEY, (ONLY TURN OVER THE DOMAIN IF YOU REACH AN AGREEMENT TO RELEASE YOU FROM ALL LIABILITY IN WRITING REVIEWED BY IP ATT.!!!!) you paid for the domain this does give you ownership rights no matter the wording. As far as your website and your content or possible infringing on Zune or any copyright I cant really speak for this is a very Grey area. I don't know what your net worth is, but this is a concern when filing a lawsuit like this, if you don't have much I mean anything under 50k I wouldn't lose any sleep over this. MS being a bully is one thing, but they are not stupid. These are very expensive lawsuits and the tables can turn very fast picking on small guys, next time invest some money in a corp (100BUCKS) to protect your money! and they can sue till the cows come home GL hope this helps

 

Also be certain it is not a Phfishing type email. I get weird emails all the time saying I broke an adwords policy or whatever so double check it before you do anything

 

I know pretty much nothing about law. But do people win lawsuits based on intent? As you said yourself, 'unwritten rules'. I get the impression that Judges/Juries don't give a damn about Morals and Intentions, just what they have as hard solid evidence.

And if in court, the defendants go: "Your honor, here are the relevant legal documents proving that we own the registered trademarks 'windoesmobile' and 'wwwhotmajl' " Then what could Microsoft possibly say to that?

All a domain name is, is a bit of text. If I put the word Microsoft one of my pages, would they sue me for all the sales i lost them? We're can we draw the line? Especially when the domains don't actually relate to what is legally theirs.

 

Wow, bad luck dude, hope it turns out well and post the outcome here

 

First, you could never get a trademark on "windoesmobile" or "wwwhotmajl" - when you apply for a trademark, the mark is examined for any possible conflict with an existing mark. These would surely not get past the examiner, but if they did, there is an opposition period to dispute pending marks. Microsoft would have made sure they were never granted.

Do you really want to go in front of a judge and argue that you had a legitimate use for "wwwhotmajl" and didn't register it to ride the goodwill established by Microsoft? I don't think so. It's a bad faith domain registration.

 

You might be surprised if you look online hard enough. But there's a couple on
domain name-trademark infringement disputes, some of which include intent.

There's a lot to lookup. But to give you possibly one idea, look up likelihood of
confusion.

It's not black and white as you're aware of. Generally civil disputes are what's
called "fact intensive" (meaning it depends on what facts were provided) and
"judge dependent" (meaning it depends on the judge overseeing it), but there
are various decisions in favor of trademarks that are quite unique and famous
like those of Microsoft.

It's one thing to understand, it's another to agree. But if there's one thing a
person ought not to do, it's to give someone else some enforceable cause to
hold you liable for your actions.

 

Dammit you guys are good Ive guess I've been watching too much Judge Judy.

But there is another guy on this forum, who has something like zunevideos . com, and Microsoft wants him to hand it over - Someone said it could just be Zoom Upload Any(NE) Videos It looks like a perfectly normal file hosting site/domain, but its an obvious trademark infringement. Do you think he would get away with that?

If i were to register the domain microsfot.org - And it pointed to nothing, would that be illegal? It is just a word, does it only become illegal when I try to make money out of it?

 

It becomes illegal as soon as the trademark/copyright is infringed. If you registered that domain, it would more than likely result in something from microsoft, especially because it is so close to their name, and is no where near a regular word. You don't have to make anything from it, and microsoft can still come after you. They would at least demand your domain name.

 

Quickly change your legal name to Zune Video, then say it's your legal name and they can't take it, then after the dispute is over change your name back to your original name

 

That's 100% wrong. I don't care if your legal name is Zune Video, it would still be trademark infringement with the usage.

 

Guess you don't catch on to jokes very well

 

You just need to be careful with joking in a legal forum. It's a common misconception about having it be your company or real name and you would be surprised on how many people believe that to be true.

 

You can keep the domain, you don't have to hand it over. You just can't use it for anything "ZUNE" related without it clearly being labeled as a non-official site.

Another option for keeping the domain is establishing that the domain has nothing to do with the "zune" media player. You can use ZUNE as an acronym, just not as a word in a domain relating to media players. After doing so MS may still contact you asking for the domain, you are not obligated to hand it over.

Simply explain that you own the domain for your zebra site but if they want the domain for something else they're welcome to purchase it from you.


If you wish to keep the domain, the best thing to do would be to put together a quick page like so:

Zebras Undergo New Examination - Video

I really love Zebras! I really want for people to look at this video of zebras, examine their form! These are fine creatures whose beauty is often overlooked. Take a moment and examine the video.

[embed this youtube video: http://uk.youtube.com/watch?v=o9HCk1r4OWg ]


I have saved and then sold many domains this way.

 

This is very bad advice.

A disclaimer will do nothing when the name alone is enough to create the "likelihood of confusion" - it is still trademark infringement. The name infringes upon their trademark usage.

The owner has already used the domain in a manner that infringes. You can't change the usage AFTER and get off the hook. The infringement has already taken place and they are entitled to the domain and damages.

Offering to sell the domain is also very bad advice. It will be used to prove bad faith and can result in even more damages.

Word Mark ZUNE
Goods and Services IC 009. US 021 023 026 036 038. G & S: Peripherals and accessories for use with multimedia player entertainment and communications devices, namely, speakers, stereo amplifier and speaker base stations; software for connecting multimedia players to existing audiovisual systems in automobiles; computer software for use with multimedia player, entertainment and communications devices for recording, organizing, transmitting, manipulating and reviewing text, data, audio, image and video files; straps, armbands and clips all for use in carrying multimedia player, entertainment and communications devices;computer hardware for recording, playing and organizing music and video recordings; computer software for online accessing and purchasing of music, videos and other digital recordings; downloadable digital files, digital recordings, online discussion boards, web casts, pod casts, webinars featuring music, audio books and news broadcasts; downloadable video recordings featuring music, movies, television programs, documentaries, drama, animation, sports, live-action, comedy, musicals, news, current events, and weather. FIRST USE: 20061114. FIRST USE IN COMMERCE: 20061114

IC 035. US 100 101 102. G & S: Online retail store featuring multimedia players, entertainment and communications devices, and peripherals and accessories therefor, and digital recordings. FIRST USE: 20061114. FIRST USE IN COMMERCE: 20061114

IC 041. US 100 101 107. G & S: Entertainment services, namely, providing information on the music, video and entertainment industries; providing a website featuring information in the fields of music, video and entertainment. FIRST USE: 20061114. FIRST USE IN COMMERCE: 20061114

 

The point is, as you state, once infringement has taken place that can't be changed.

But there is still no reason to give the domain away. Whether they attempt to sue for past infringement only they will know. Over here in the UK it is very unlikely that a case would be successful if the infringement was ceased once notice was provided. Regardless, I have all my domains owned by a shell LTD that does no revenues so that there is nothing to be gained from a lawsuit.

I've retained attorneys on this matter before and have been successful. How many cases have you been involved with, or what is your experience on the matter?

 

I've been involved in dozens of cases over the past 15 or so years. I have been on both sides, and have legal fees that collectively run into low seven figures - and that is never having been on the losing side. Microsoft is not someone you want to get involved with in a lawsuit. They have deep pockets and aren't likely to care if they go after someone with no assets. If all your domains are in a shell, at best, they could take all the domains (which you may or may not care about). Not knowing UK law, I would wonder about the implications of revenue that is being paid to an outside party since the shell operates with no revenue. I am highly suspect of the claim that you can commit trademark infringement in the UK, and then when caught, change the usage and remove yourself from liability. You can't do that in the US.

Changing the usage may get the trademark to voluntarily drop their claim in some cases, but that doesn't mean they will, nor is it a legal defense.

 

There is NO WAY I would let go of the domain without monetary restitution! Microsoft can kiss my ass when it comes to these issues! Zune is a registered trademark, yes BUT fair use and owners rights supercede their copyright claim when it comes to URL's.

In this case they produce a device that allows the playing of digital video, how the hell can they claim that no one is allowed to use their product name in an 'informative manner'??

Completely insane. If they claim rights to this domain they also have to show proof that they will go after/seek access to EVERY OTHER domain who's name is a combination of one of their product names and any type of related media - digital or otherwise! Congratulations to Microsoft! You now obviously lay claim to xxxwindows.xxx , wwwword.xxx, wwwexcel.xxx and ANY and ALL other trademarked names in conjunction with dictionary names that are used in domain names???

No Way! Tell them as politely as possible to kiss your ass!