Classmates.com going after me for trademark. What to do?

Discussion in 'Legal Issues' started by classmatesguy, Jun 27, 2008.

  1. #1
    I received the following letter from Classmates Online, Inc. (classmates.com) regarding my domain name classmates-forum.com (I also own classmate-forum.com). I'm trying to build a forum where current and former classmates can connect.

    I do have an intellectual property attorney at one of the largest IP law firms in the country that I use, but I'd like to do some legwork on my own before I start paying him $xxx per hour (which I'm willing and able to do).

    What does everyone think? Seems like the classic "big corporation trying to squash the little guy" story. :(

    [​IMG]

    [​IMG]
     
    classmatesguy, Jun 27, 2008 IP
  2. CheapCreditSearch

    CheapCreditSearch Peon

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    #2
    It looks like thay have a registered trademark for "Classmates" - even though you've appended the domain it still is using a trademark name in the title.

    It would be a losing battle on your part to try to fight it - why not notitify all of your visitors about the action taken against you (it makes Classmates look really bad and actually may do more damage to them that they hope to gain from the take-over) and purchase another domain that can house your site. Then write back to the attorney and explain to him that you are in the proccess of transfering the domain over (through registered mail) and expect the process to take about a week or so - giving you enough time to notifiy your visitors of the domain name change.

    Good luck.
     
    CheapCreditSearch, Jun 27, 2008 IP
  3. classmatesguy

    classmatesguy Peon

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    #3
    Cheap - that would work well except I have only built the shell and done 0 marketing so far. In other words, I have no users and very minimal traffic. Agree on trying to find another domain name, but the name in this case kinda makes the site.
     
    classmatesguy, Jun 27, 2008 IP
  4. MakeThatDollar

    MakeThatDollar Notable Member

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    #4
    Sorry about your luck there. I don't like classmates.com as much now. Good luck with your new site.
     
    MakeThatDollar, Jun 27, 2008 IP
  5. indyguidedotinfo

    indyguidedotinfo Notable Member

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    #5
    thats crazy. So they think they own the word 'classmates ' come on!. the legal system in the US is out of control.
     
    indyguidedotinfo, Jun 27, 2008 IP
  6. classmatesguy

    classmatesguy Peon

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    #6
    That's what I don't get. I just can't get my head around being able to copyright a common word.
     
    classmatesguy, Jun 27, 2008 IP
  7. classmatesguy

    classmatesguy Peon

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    #7
    Notice my * This site is not affiliated with Classmates Online, Inc. or classmates.com! disclaimer on the top of the site now. Also, they offered to pay me the costs of transferring the domain to them. I find that offer a bit insulting.
     
    classmatesguy, Jun 27, 2008 IP
  8. allout

    allout Prominent Member

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    #8
    Your lawyer should easily find out if they trademarked the name or not. Copyrighting and trademarking are not the same thing. If they trademarked the name, you will lose and it is a useless battle. if they did not, chances are they will not be able to do much.
     
    allout, Jun 27, 2008 IP
  9. affiliatemarket5000

    affiliatemarket5000 Guest

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    #9
    Hello,

    Legal battles are not only costly but are also very stressful. Technically the word "classmates" is in your domain name so it would probably be an quick win for them. I would apologize and comply with them, they are much too powerful to try and battle.

    If you've done zero marketing, I would change the domain to something like schoolfriendsunite.com. Be sure to check for trademarks first at the government website.

    Best of Luck,
    Jack
     
    affiliatemarket5000, Jun 27, 2008 IP
  10. classmatesguy

    classmatesguy Peon

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    #10
    Here is another (moot?) point. They registered classmates.com in 1994. I registered classmates-forum.com in 2007, 13 YEARS LATER!!! At no point did it occur to them (or anyone else) to register that domain?
     
    classmatesguy, Jun 27, 2008 IP
  11. CheapCreditSearch

    CheapCreditSearch Peon

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    #11
    Trademarks are a funny beast - after studying the subject for my own ventures, a common word such as Amazon can be trademarked if it is shown to be substantially different from another company's use of the word.

    Amazon.com almost was not granted a trademark because numerous other companies had already used it. It was not until they changed their application to exclude items other companies were selling to keep themselves from being mistaken for those companies and eventually was granted a trademark.

    It sounds like in your case - a trademark for the domain Classmates-Forum.com would fail because your audience can easily mistaken thier site for yours. Therefore you wouldn't be able to challenge the trademark in court.

    Try another term for classmates ..... ie. Alumni
     
    CheapCreditSearch, Jun 27, 2008 IP
  12. classmatesguy

    classmatesguy Peon

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    #12
    Alright, but if I have a disclaimer prominently displayed shouldn't that be enough? I was thinking a splash page that says "This site is not affiliated with classmates.com. Continue to classmates-forum.com or go to classmates.com"
     
    classmatesguy, Jun 27, 2008 IP
  13. classmatesguy

    classmatesguy Peon

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    #13
    What are my best exit strategies if my goal is to ethically and legally maximize value?
     
    classmatesguy, Jun 27, 2008 IP
  14. bluearrow

    bluearrow Well-Known Member

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    #14
    How much do they offer for the domain ? If its a good amount you can consider about it specailly since you don't have traffic or members a lot.
     
    bluearrow, Jun 27, 2008 IP
  15. classmatesguy

    classmatesguy Peon

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    #15
    It was an insulting amount of money. Enough for a nice dinner perhaps.
     
    classmatesguy, Jun 27, 2008 IP
  16. WebmasterTL

    WebmasterTL Banned

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    #16
    Thats terrible. I wonder if any words can be Tm? :p
     
    WebmasterTL, Jun 27, 2008 IP
  17. mjewel

    mjewel Prominent Member

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    #17
    They have a Federal Trademark on the name "classmates."

    It is the obligation of anyone registering a domain to check for existing trademarks before they register a domain.

    A trademark holder does not need to register all or even any available domain names to protect their mark. There are tens of thousands of domains that could contain "classmates".

    Never ask the trademark holder for money. It helps them prove bad faith, and there are also cybersquatting laws on the books. http://en.wikipedia.org/wiki/Cybersquatting

    Offering to pay you a nominal sum of money to transfer the domain is not required. They don't have to pay anything to the holder of a domain that is infringing upon their trademark. In fact, they could sue and ask for damages and treble attorney fees if they wanted.

    A site disclaimer will not get around TM infringement. They will argue the name alone causes confusion and the "theft" of visitors by riding the goodwill they have established has occurred before they get the chance to read the disclaimer.

    They have demonstrated in other similar cases that they will take legal action.

    You can fight for the right to keep the name. A court case will run tens of thousands of dollars in legal fees. If you win, you are out attorney fees. As the holder of a registered trademark, they are entitled to recover attorney fees (up to treble) if they win. IMO, they have a very good chance of winning - although as you don't have any type of advertising on the forum, it makes their case somewhat harder (although this also limits your ability to have the site produce any type of revenue).

    Your options are to take what they have offered or spend a considerable amount of money to defend your usage claim. From an economic standpoint, it probably doesn't make sense to fight for a domain that currently has limited value. If you have the financial strength to fight the case on principal, you should have your law firm do some research and give you their assessment. Remember, your attorney gets paid whether you win or lose so that's something you also should consider.
     
    mjewel, Jun 27, 2008 IP
  18. classmatesguy

    classmatesguy Peon

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    #18
    But how could someone possibly get confused and type -forum.com? I mean, they have 40 MILLION users. It's not like 10 million are going to wake up and say "Uh, what was that domain name again? classmates-forum.com?"

    If I create a homepage that doesn't let them get to my site until they've agreed they've read a disclaimer, that should satisfy them, no?

    For the time being, I am disabling the board so as to not look hostile.
     
    classmatesguy, Jun 27, 2008 IP
    IntellectToday likes this.
  19. mjewel

    mjewel Prominent Member

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    #19
    When you have a TM, you own the rights to the name in a particular classification. Adding words to the TM does not get around infringement (Ebay successfully sued perfumebay.com for trademark infringement). They won't argue that someone will type in your domain by mistake, they will say it creates consumer confusion, that you are riding their goodwill. People will see your domain name and could assume it is associated with their company and click the link i.e. steal a visitor looking for an official site of classmates.com. That is why a disclaimer will not help you.

    There are other trademarks on "classmates" but the classmates.com business model for the trademark is a site that involves "Internet based dating, introduction and social networking services" "Internet based dating, introduction and social networking services" and "Providing an online computer database featuring directory information services via a global technology computer network" and it would seem that your usage is certainly infringing upon their usage. They came up with the idea first and have rights to the usage of and domain name with "classmates" in it as it relates to their trademarks.

    To be honest, they aren't worried about losing a few visitors to your site - they are protecting their trademark from being genericized (not going after people using their TM). This is actually something they are required to do to keep their trademark. Since they have notified you, the chance of them filing a WIPO or lawsuit is probably close to 100% as they now can't claim they weren't aware of your site.
     
    mjewel, Jun 27, 2008 IP
  20. classmatesguy

    classmatesguy Peon

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    #20
    Ok, what if I completely disable the site but maintain ownership of the domain OR ever forward the site to theirs?
     
    classmatesguy, Jun 27, 2008 IP