Trademark (TM) issue need advice

Discussion in 'Legal Issues' started by golb12, Dec 10, 2008.

  1. #1
    So 3months ago I bought the domain lets say for example newdomainidea.com


    After 1month I find out that new-domain-idea.com is a owned website. The site does a similar area of business but not the same products or services. He tries to get rid of me and when he fails to he now emails me and says he is going to sue me for TM instead of buying me. He says it falls under TM of passing off, but my business doesn't provide the same service, nor do I use his logo. I am afraid I will get served soon and was wondering if there is a cheap way to resolve this being that I am lawful so I don't have to pay legal fees/lawyer.


    any advice?
     
    golb12, Dec 10, 2008 IP
  2. tukarinfobispak

    tukarinfobispak Peon

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    #2
    your domain name look like more valuable than the other, without "-" in between domain name :)
    i think arbitrage forum is a good way to resolve your problem.
     
    tukarinfobispak, Dec 10, 2008 IP
  3. golb12

    golb12 Peon

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    #3
    Problem is I think hes going to serve/sue me though, not a disagreement.
     
    golb12, Dec 10, 2008 IP
  4. tukarinfobispak

    tukarinfobispak Peon

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    #4
    if the case like that, there is a long long way and not cheap for someone who want to sue you, especially if you're not in the same country with him/her.
     
    tukarinfobispak, Dec 10, 2008 IP
  5. Feydakin

    Feydakin Active Member

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    #5
    Have you looked to see if he "really" holds the trademark on the term??

    Most people don't and just claim that they do to scare people in to rolling over.. I'd make sure that he actually holds the mark before I did anything.. And then I'd look at dates of domain registration to make sure he got there first..
     
    Feydakin, Dec 10, 2008 IP
  6. Colbyt

    Colbyt Notable Member

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    #6
    No court of compentent jurisdiction is going to allow a suit to be filed unless a properly delivered cease and desist notice has been properly served to the person being sued and a reasonable amount of time to cease has been allowed.

    Don't let this person bluff you.

    99.9% of the people who threaten lawsuits do not have a clue as to the expense or time involved it the action. They have merely watched way to much television.

    Now if you have copied anything from his site you may have far bigger problems.
     
    Colbyt, Dec 11, 2008 IP
  7. xtreme fever

    xtreme fever Active Member

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    #7
    you should be ok if it's only a trademark and not a registered trademark.
     
    xtreme fever, Dec 11, 2008 IP
  8. hostlonestar

    hostlonestar Peon

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    #8
    Can you give us the domains so we may look and compare the sites to be able to give you better advice?
     
    hostlonestar, Dec 11, 2008 IP
  9. cheapez

    cheapez Active Member

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    #9
    You want to check if his domain is a trademark first, I got a really good advice from a DP member by asked the same question.
    Even if he won the case, what do you have to lose other than dropped that domain name?
     
    cheapez, Dec 11, 2008 IP
  10. Dave Zan

    Dave Zan Well-Known Member

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    #10
    Heh, tell that to Microsoft and the courts they've filed suit in without sending
    a C&D first. They seem to have changed tactics of late, but there's no lawful
    requirement currently that a C&D be sent first prior to filing suit.

    Golb12, you ought to be fine if your use isn't commercially competing against
    the other party. But be ready to consult a lawyer who specializes in this since
    no online forum opinion can substitute for real-world advice from licensed and
    experienced professionals.
     
    Dave Zan, Dec 11, 2008 IP
  11. GhengisKhan

    GhengisKhan Banned

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    #11
    Hey, why not threaten to countersue for harassment? Make him nervous for a change.
     
    GhengisKhan, Dec 11, 2008 IP
  12. baddaman1

    baddaman1 Guest

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    #12
    Only in America.


    I'd call his bluff.
     
    baddaman1, Dec 12, 2008 IP
  13. Colbyt

    Colbyt Notable Member

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    #13
    MS has bored lawyers on payroll that need something to do.

    There may not be an official requirement but around here lawyers will not file without some demand for action before they do. The judges take a very dim view of their time being wasted.

    YMMV (your milage may vary).
     
    Colbyt, Dec 12, 2008 IP
  14. mjewel

    mjewel Prominent Member

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    #14
    I must disagree. There is absolutely no requirement to send a C&D before suing, in fact you'll find that many top IP attorney's advise against it - especially if the probability of compliance is slim (I have personal experience with this). Why? Venue. If you send a C&D they can turn around and file suit against you in their home turf without every responding to your C&D (and their attorney is going to want to keep the business and not refer it out). By filing a suit first, you get the advantage of a local court without having to hire another firm, or paying travel time to your attorney. If the company that feels they are going to ask for substantial damages, they will also not bother with a C&D.
     
    mjewel, Dec 12, 2008 IP
  15. hostlonestar

    hostlonestar Peon

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    #15
    No where is a C&D required. As stated, Microsoft has recently filed on several domains for violating their trademarks. Sometimes, if Microsoft is feeling generous, they will send you a C&D. But don't count on being able to violate someones registered trademark until a C&D as it is not required. But, I would inquire about the trademark, I have never done this, but I got this number off the United States Patent and Trademark Office Website (www.uspto.gov 800-786-9199. Not sure if it will help, but on the website it says to call that number for help on trademark matters.
     
    hostlonestar, Dec 13, 2008 IP
  16. browntwn

    browntwn Illustrious Member

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    #16


    You are simply wrong, as previously pointed out, on this point. Judges, for the most part, follow the law and there is no requirement to warn someone and ask them to stop before bringing legal action for trademark violation.
     
    browntwn, Dec 14, 2008 IP