Hey everyone I need some legal advice on the following letter I just received. I think its complete BS but I want to hear your opinions. I registered the following names at godaddy.com proxifiedbrowsing, proxifiedsurfing, and proxifiedinternet. Now the owner of proxify.com says the following. Any help would be greatly appreciated. Dear Mr. Huot, I am president of UpsideOut, Inc. D.B.A. Proxify, the owner of federal, state and common law rights in and to the service mark PROXIFY. In addition to its rights under common law, UpsideOut enjoys full statutory protection of its valuable rights in the PROXIFY Mark under both state and federal law and vigorously protects and defends these rights. The PROXIFY Mark is registered on the Principal Register in the United States Patent and Trademark Office and assigned Registration Number 3138482. The PROXIFY Mark is registered in connection with "providing anonymous transmission and delivery of information over global computer networks" in International Class 38. UpsideOut began using the PROXIFY Mark on April 14, 2003, and since that time has actively and continuously used the mark in connection with its business and services. We have made substantial investment in developing, providing and promoting our services under the PROXIFY Mark. As a result, the PROXIFY Mark is widely known and embodies substantial and valuable goodwill. We are extremely concerned about and object to your unauthorized use of "PROXIFIEDBROWSING", "PROXIFIEDINTERNET", and "PROXIFIEDSURFING" in connection with your websites www.proxifiedbrowsing.com, www.proxifiedinternet.com, and www.proxifiedsurfing.com. Even though these domain names are not completely identical to "Proxify", they are so like "Proxify" in form, spelling, and sound as to constitute trademark infringement. Your use of "PROXIFIEDBROWSING", "PROXIFIEDINTERNET", or "PROXIFIEDSURFING" on your websites and in connection with the services and products they offer, regardless of whether the word "PROXIFY" is used alone or in combination with other words, infringes our valuable rights in the PROXIFY Mark and is likely to cause confusion. In addition, the services offered via your websites, namely, providing anonymous proxy services, are similar to the services we provide in connection with the PROXIFY Mark increasing the likelihood of confusion between your websites and the PROXIFY Mark. We note that you have included "PROXIFY" within the title tag embedded in each of your websites. Your unauthorized use of the PROXIFY Mark in title tags is clearly an attempt to divert Internet users to your website to the detriment of my company and our business. We understand that federal law recognizes that use of trademarks in this way is essentially a "bait and switch" scheme, expressly prohibited under the federal Lanham Act. We also believe that these practices, to the extent that they infringe the PROXIFY MARK and otherwise violate federal law, may place you in violation of your agreements with your web-hosting and/or internet service providers, which thereby would result in still further liability imposed on you and your companies. Any display or use that you make of the PROXIFY Mark on your website or in connection with your proxy services, as well as related goods and services, infringes our rights in the PROXIFY Mark and constitutes, among other things, service mark infringement, passing off and dilution in violation of the federal Lanham Act and other applicable federal, state and common law. Therefore, we hereby demand that you immediately cease and desist any and all use of "PROXIFIEDBROWSING", "PROXIFIEDINTERNET", and "PROXIFIEDSURFING" and any other service marks, trademarks or names confusingly similar to the PROXIFY Mark in connection with your websites. In addition, we hereby demand that you immediately transfer to us all rights that you have to the domain names "proxifiedbrowsing.com", "proxifiedinternet.com", and "proxifiedsurfing.com". Attached to this letter are instructions for effecting the transfer of each domain name to us. We look forward to your written confirmation by no later than April 13, 2007, that you will resolve this matter as requested. Your prompt attention and response to this matter will prevent the need for further action. If you cease and desist immediately from any further illegal use of the "PROXIFY" name and mark and settle this matter now, you may save yourself damages from the date of this notice. Finally, be advised that this letter is not intended to be a complete statement of the facts or legal issues regarding this matter, nor as a waiver of any of Proxify's rights or remedies, whether at law or at equity, all of which are expressly reserved. Sincerely, Justin Schlecter, President UpsideOut, Inc. D.B.A. Proxify 1-877-PROXIFY
Well i dont think there is much you can do since they are registered and tradmarked so you have there name in your domain so the easiest way is to trasnfer it to them.
NetworkTown are you sure? They can have the word Proxify owned to them? Whats to stop someone from copyrighting the word Proxy? Then what all the proxy owners would have to transfer their domains over to them too? If they had the rights they should have bought the domain names. I appreciate the feedback but I am really upset about this. Anyone else have any other advice? Thanks guys.
it does seem like they "enforce their mark" http://www.proxifyme.com/] You may get away with adding in "we are not affiliated with ___" in your footers, but then, I really know nothing of trademark laws...
Trademarks do not typically cover domain names. I read once (and I'll try to find it again for you) that domain names are seen more as realestate. As long as you are using deceptive practices to make your self appear to be the trademark company then they can't touch you. I have had friends also threatene before for names and it went nowhere further then an initial nasty letter. One guy owned a name with "fordummies" in it and he got the nasty-gram but it was dropped. Best of luck with it. Obviously I would look further into the legality before doing anything or taking my word. Maybe offer to sell them the name at a fair price. It was their fault IMHO for not owning their own trademarked name to begin with! They should have had the foresite if they were interested and bought the name themselves.
Proxify is not like Scotch Tape, Post-Its, Coca-Cola where they have to protect the value of a name so it does not become generic. I don't know of anything that is referred to as Proxify. So i don't think they have much of a case. Based on that they should be suing every site that uses the word proxy or is a proxy site...they are out on a limb with this one i think.
If you yourself are using any terms in commerce, do you have the foresight to register all variations and ensure none of them ever expire? A trademark holder must enforce its rights or risk losing it, famous or not. So is the word apple, yet it's registered as a trademark at the USPTO. As for the OP: http://forums.digitalpoint.com/showthread.php?t=212517&highlight=proxify And I agree with the letter that the domain names are phonetically similar. But it's up to the OP to assess his/her risk since it's his/her choice.
I have 2 domain names that are trademarked . . . one on the primary register and one on the supplemental register. I've had them for 6 years. Maybe there was a rule put in place after I got my marks. I don't know.
thanks for all the feedback guys. I think I am just going to wait it out and see where it goes because I just dont see this going much farther than a scare tactic letter. I will let you guys know what happens in the end. Thanks again.
Trademarks generally cover a word or combination of words for a particular classification(s). This protects any usage of the term in that classification, including any domain name - i.e. if your trademark is "proxify" you don't need to trademark "proxify.com" or "proxify-proxy" - it is already protected. Misspellings, foreign spellings, and similar usage can also be protected. IMO, they have a pretty strong case for infringement unless you were using those domains prior to them. I would suggest consulting an intellectual property rights attorney. As they have already sent you a notice of infringement, it is likely they will proceed with legal action. They could either file with the WIPO to take the domains, file a lawsuit against you, or both. They could seek all revenue the sites have ever generated, plus damages, and treble their attorney fees since their mark is registered. A trademark holder is required to take action against infringement to protect their rights. If you wait until they file a lawsuit, you might wind up paying some hefty legal fees. It would also cost tens of thousands to defend an action through the courts - and even if you won, you wouldn't likely get your attorney fees awarded.
mjewel you have a point. I just said screw it and gave them the 3 domains. Its not worth the headache over this. Thanks everyone
No way, I would have told them to pi$$ off. No way they should be able to make any claim on those domain names.
That was a mistake. In practice what mrjewel said is true, but its never that simple. They would not have a good case at all in claiming any damages and the same goes for forcing you tp provide the names. For a start they have the trademark Proxify, not Proxified. Apple and Oranges are completely different, as to is Proxify and Proxified regardless of the subject. Remove the Proxify term and you would have been fine. Its true also that if your domains were older then the trademark you would be okay, but thats not true anyway, but may be useful for some other people reading. I wouldnt have done what you did.
Smart move. choosing your battles is the hardest part. This would have cost you time and money and you probably would have lost. Best to move on to something else.
I don't understand this post. One can't remove a word or even a letter from a domain name that's been registered, although they can ask that it be deleted. At this point, the issue appears moot if the OP has already given the domain names to the trademark holder. If you thought otherwise and decided to fight it, then be ready to pay the costs of fighting for your principles.
proxified - of about 11,100 for proxified... As a matter of fact a simple search for the word "proxify" and "proxified" in groups.google.com shows evidence that both words were used in discussions, related to the industry this organization is in. Just because someone trademarked something, it does not mean they have the rights to it. You can challenge it by demonstrating that both words were in use prior to the registrations. Get a lawyer.
edited because I clearly have to update my knowledge on the new TLTIA I still believe you should DISREGARD ANY c&d notice that is NOT sent via registered mail and talk to a lawyer before contacting the sender of the c&d vanessa.
This whole post is full of incorrect and misleading facts about the law. I wont even go into all of them but here is a start. 1. A cease and desist letter does not need to be sent via registered mail or by a lawyer to be effective. 2. The conclusion that PROXIFIED is free to use, just because it is not registered is not a correct statement of the law. 3. The claim that a name not currently registered in CA can be reistered by you and used "where ever I wished to" is also wrong. But thanks for playing. People who follow your advice are getting exactly what they paid for - nothing.
browntwn, I am not a lawyer and I don't even pretend to be one on the internet the last time I had a trademark issue was in 1997 and through a bit of searching I found the TLTIA which I was unaware of before so yes, my trademark knowledge does have to be updated thank you for the heads up I'd also like to say that you are correct - a c&d does NOT have to be sent by a lawyer it can be sent by ANYONE which is exactly why it's little more than a scare tactic aimed at the ignorant and naive surely with all your trademark knowledge you must know that the burden of proof lies on the individual filing the claim to my knowledge thumb scans are not required to open most email programs do you have some new insight you'd like to share? as to your rebuttal #1 - in fact I never said anything contrary to your statement I never mentioned the effectiveness of c&d letters/emails at all you manipulated my words and I have to say I don't like it when people do that quite frankly it makes me grumpy please take the time to actually read what I said before you refute it thank you vanessa.
I carefully read your post before repsonding and stand by everything I wrote. Here is more information to clarify why your advice is poor and should not be followed. You agree that a C&D letter is effective, even if sent from a non-lawyer. Yet, you advise people to just ignore and delete it. How is that consistent? If it is a valid C&D letter it should be considered carefully and then appropriate action taken. It is simply horrible advice to tell someone to simply ignore a valid C&D. Perhaps after consideration the correct action to take is no action, but that is not the same as telling people to toss it out in every circumstance, as you did.