Hi guys, I have received a letter from some solicitors telling me I need to hand over some domains I have and stop using their trademarked terms. I would like some guidance please. Let's say the firm they represent is Google, I'm selling a 'Google clone' so a piece of software that does the same thing. Aesthetically it is not similar. The domains I own are GoogleScript.com and GoogleClone.net, they want me to hand them over. At the bottom of my site I say I am not connected with Google, Inc etc and also have a disclaimer. To make matters more confusing the name of my site is actually an older term that they used to trade under but no longer do, but have the trademarks nonetheless. I don't mind changing the name of the site (URL) if it means I am not sued, but the fact that they want me to sign a form stating I will hand over these URLs to them really irks me. I have built up pagerank etc etc and a good name. Can I fight this? If I was pretending to *be* Google I could understand it but I am just helping others start up similar software. My keywords are also under attack, they want me to stop using all of their copyrighted names in my keywords. This really sucks. I'm considering doing a Pirate Bay and just ignoring them and then mocking them. Has anyone ever fought this and won?
From the description you provided you are clearly violating their trademark rights. Hope that helps you make a decision.
Hello, Thanks for your reply. The point I'm interested in is would the 'layman' consider www.googlescript.com to be linked to www.google.com in any way? Particularly if it clearly states at the bottom of every page that they are not? That's one angle I'm looking at. I know little about copyright/patent law but appreciate that a good lawyer can work wonders. I'll change the trading name, stop using the keywords, but handing over the domain name is one thing I am reluctant to do after having working on building up the pagerank for the past 9 months.
Yes, there is no question there is confusion created by your use of the term in the fashion you are describing. It is too bad you invested time in an infringing domain, but this is just a cost you have to pay. You should stop wasting time and start working on a new domain name. Any other course of action is only going to end up costing you more time and money with, in my opinion, no chance of success.
You might be interested in this example list of domains that Google has taken over for trademark infringement this year: http://forums.digitalpoint.com/showpost.php?p=12477991&postcount=94 Also, here is another thread discussing using the "Google" trademark in domain names: http://forums.digitalpoint.com/showthread.php?t=1500535
I think "google" was just used for an example. Although, I am pretty sure whatever it really is, it is likely just as infringing.
That is actually common, especially in the U.S. Generally speaking, you do not have to sign anything someone else wrote for you. You can tell them something like you do not agree out of personal principle to sign anything; that you're willing to transfer the domain name without cost at any time, change the domain name and let them drop, etc. And lest other members suddenly start posting "fight the f******", or "go tell them to s*** a**" or whatever, note that nobody can accurately tell him as not enough specific details are known. Then again, the OP does right not post anything in an online forum where the other side can possibly see this.
Ah, I missed the "Let's say" in the original post. But if it's analogous to the example, you're right, it's likely just as infringing.
First, the basics -- did they prove to you that they own the trademarks? Send them a polite request to see the proof with a promise that you will hand over the domains as soon as they provide it. And yes, I'd comply if they do own the trademarks.
It is all well and good to go around demanding proof, but the simple fact is that if you know you don't own the rights and you have no reason to suspect it is fake, don't waste everyone's time and piss the other side off. If you have some reason to think it is a fake or something then by all means demand proof, but please have a clue what you are doing. Every communication with the other side is evidence. Making absurd demands for things you have no right to demand is not going to help most people - in fact it will run up legal fees on the other side making things worse for you.
browntwn, IMHO there is nothing wrong with asking for proof of trademark ownership, although, http://tess2.uspto.gov/ is a free trademark search tool provided by the USPTO that would likely display whether or not there is a trademark registered. If you do not find it in your search, then you move onto asking for the proof of registration with the trademark number.
One does not need registration to have a legal trademark. Also what "proof" will satisfy someone who knows that they damn sure don't own the mark? With the average complaint around here it is as total waste of time and in my experience likely to cause you more problems. If you are living in Pakistan by all means fuck around with US companies and ask them to prove they own a trademark that you have no rights to. If you live in the US and are using the trademark of a major company - and they ask you nicely for it without suing you - give it up and consider yourself lucky.
Google use an external company: Registrar: Markmonitor Inc. t/a Markmonitor [Tag = MARKMONITOR] URL: http://www.markmonitor.com I think it might be them that trace stuff like this... I think you are clearly in violation I'm afraid...