Weird C&D letter from enom.com (demand media) - Said OK for usage before

Update from demand media representative :

I do not have record of your conversation with Ms. May Blatherwick as she no longer is employed here at eNom, Inc. Your alleged conversation with this employee occurred over two years ago. Furthermore, you contacted the customer support center about "copyright infringement," not the legal department or any legal counsel that is familiar with trademark law. Had you contacted the legal department with your inquiry, the legal department would have objected to your registration of XENOM or KENOM for domain registration services. I also note that you are not the registrant of XENOM.COM, the domain in which you allegedly inquired about.

eNom, Inc was founded in 1997 and quickly became a leader in domain name registration services. Demand Media acquired eNom, Inc in 2006, but still operates as eNom and offers its services under the ENOM trademark. ENOM is a federally registered trademark and has been in constant use since 2002. ENOM and the ENOM.COM domain are widely recognized as the second largest domain name registrar worldwide. As such, you can certainly understand the importance of Demand Media protecting its intellectual property rights as well as protecting its consumers from confusion, mistake, or deception. Your registration and use of the KENOM.COM domain to offer domain name registration services is confusingly similar to ENOM.COM. Slight changes in a word may be deemed a purposeful misspelling to deceive consumers, particularly when the same services are offered in the same channel of trade.

I do hope that you can understand and respect Demand Media's desire to protect is intellectual property as well as its consumers. eNom consumers expect a high quality domain registration service and Demand Media would like to keep that goodwill intact. Therefore, I respectfully ask that you cease use of the KENOM.COM domain name and transfer this domain to Demand Media at once. I do hope that we can reach an amicable resolution in this matter before it become necessary to take some form of legal action.

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QUICK Notes from me :

1. The fact that an employee doesn't work there makes the information invalid?
So if she did work there they would ask her, she would remember by heart and verify or not the incident?

2. Is it my fault or enom's fault that i received a reply from a customer support representative ?

3. Is this a joke or not that i'm not the registrant of XENOM.com that i mentioned as an example in my communication with clear references of what i wanted to say
a. The use of xenom.com ( where x can be any combination ).....
b. If i use a name such us xenom.com ( where x can be any english letter like benom.com for example ).....

 

1. The fact she no longer works there is not an issue.

2. The fact that you asked a telephone operator a legal question, intending to bind the company to the answer is the majority of your problem. If i want to use the McDonalds logo on a website. I can't just get in line at the local restaurant and ask the employee at the front of the line. It is silly to think that they have the authority to bind the company.

3. Not to insult you, but your English is not very precise. In your email conversations with enom it appears you both are not understanding what the other is saying. So when you gave an example of [x]enom.com type names, they thought you actually meant xenom.com. They still do not know that you meant any variable before the enom.com part.

You have a couple major problems.

First, your question to enom asking for permission is unclear and talks about copyright. Regardless of the answer to that question, the question was so unclear making any answer worthless.

Second, you did not seek permission from the corporate office or from the legal department of enom but merely asked a sales rep a question about registering the name. It is clear from her reply that she never intended to convey that you had legal permission from enom to use those names.

So, as far as your defense of having been given permission - it is worthless. (you were NOT given permission. There is no reasonable reading of those emails that would cause someone to think enom had given you permission to use kenom.com) That is not to say they would necessarily have rights to those names, but I certainly would not spend one cent fighting it.

Good luck.

 

Weird or not browntwn, i liked your reply
I think it was full

1. Quoted my questions
2. Present the problems
3. Gave an advice

(this is no joke, i really liked your reply)

My opinion about this is :

CS reps and any kind of reps are actually representatives of a company
If the company is not responsible for their representatives and accepts their mistakes at least to the point to say "sorry it was our mistake" then i think it's unacceptable to hear them say that it was registered in bad faith

We don't talk about verbal or phone communication
There is a specific support ticket with enom's email headers

If someone says OK and you invest time to make something based on that OK is not a lesson that i'm forced to learn but the company that used the CS person

Notice all the replies of DM repr.
1. "No one by that name currently works at Demand Media, Inc..."
2. "I do not have record of your conversation with Ms. May Blatherwick as she no longer is employed here at eNom, Inc. Your alleged conversation with this employee occurred over two years ago"

She doesn't accept or as she says can't verify the data i provided
(I have complete records from 1995 but enom don't have the support tickets of 2005)

Also as a sidenote do you see any legal email form at the ETP control panel or generally ?
I tried to find something today, there was none and i remember correct that wasn't there in 2005 too

From what i read i think i should start a poll and let people vote about how vague my question and her reply was from the first place
This will help me understand if it was my mistake or enom's mistake before i proceed to anything else (however if you have a lead for enom's manager will be good too)
At least i accept my mistakes (even grammar mistakes) as i see enom can't

 

I think there were mistakes all around, but I don't think the mistakes on the part of eNom's employee has bound them to anything.

 

The sales rep does not have, nor should you expect them to have, the power to authorize the use of a trademark. That type of opinion letter would have to come from an officer of the company. The sales letter's approval, if it was that (I think the person was confused), is not binding and does not support your case at all.

 

The rep's reply doesn't explicitly say that it's OK or address copyright. It reads to me that she still didn't get your question & replied generally that you can register any domain thats available.

 

In my opinion, you did NOT register the domain in bad faith and this seems likely clear for any judge to see.

1 - Print out and save all of your correspondence with them - past and present.
2 - Cease discussions
3 - Wait for certified mail (if it ever even comes and hand it to an attorney)

 

What's clear his is that he didn't act in bad-faith. I can't see how damages could be assessed from this situation either. Enom obviously needs to work on it's communication skills. I am rooting for the domain owner to get a fair offer for the domain.

 

The fact that the eNom employee is no longer working there, or didn't have the legal permission to say it is no fault of the OP's and it's not going to wash. The employee is acting on behalf on eNom.com and what they say is binding. If something is forwarded to eNom the onus is on them to ensure it's acted upon by the right department for a response and the correct information is given..

If not, i can put it in writing people can use domains similar to mine for the same purpose as me then wait until they become popular and claim the domains for my own gain by saying oh that was written by my partner who had no right to give permission.

If i was in the OP's position, i would not be handing over the domains or altering the business based around them.

 

You are fighting a losing battle. You may have more luck using the keynom.com domain you have...

 

You have a reasonably good case with you.
The representative was representing the company when you asked that question. Does not matter where she is now.
You asked the question through the proper channel.
If you have records of the communication, it does not matter whether they say they cannot recall the mails/conversation.
If you specified "x" to mean any letter in your mails, and if that was conveyed in the mail, then the argument of the company about "xenom" being different from "kenom" is invalid.
Also, if someone registered "xenom.com", would they behave differently? As long as the answer is no, their argument of "xenom" and "kenom" being different is not valid. It is valid only if the difference would have resulted in them acting differently.

It is a case well worth fighting for - a company appointed a person who was careless, and the responsibility for that lies with the company. Instead of owning that up, the company is trying to shirk their responsibility.

You have a ***fair*** chance of winning this, or getting compensated. Don't get intimidated.

 

No, actually there isn't a good case here. First, we don't know which support desk the OP contacted whether it be the main one or the reseller desk. Second, from the OP's original email he said that he thought there might be a legal issue. That being the case, the courts will determine that he should have sought a clear response from somebody he knew had clearance to answer legal questions. The fact that the person was an employee makes little difference. That would be like saying if I went to a Sears store and asked the janitor if I could buy the store for $50 and he said yes, then they would have to honor that. It just doesn't work that way. Third, it is clear from reading the emails that the OP and the rep were talking about different things. The sales rep didn't even know what ETP was (which suggests that the OP was contacting the wrong support desk). @sweetfunny, your example also does not hold any water because a reasonable person can would assume that a partner in a business has the authority to make decisions. However, the courts will decide that a reasonable person would not assume that a confused help desk person that neither understands the questions being asked nor gives answers that directly cover the question would have authority to make legal decisions on behalf of the company.

If the OP does choose to fight it, one of two things will happen. 1) It will go to UDRP. The UDRP panel does not award compensation, so they will just give the domain to enom. 2) enom decides to sue. enom will win the domain. Now, the courts might award compensation to the OP. It will be for the amount of aquiring the domain. Since the OP registered the domain at enom, that will amount to the registration cost. Hosting, advertising, and development costs are never part of the award in such a case. So, for the thousands of dollars the OP will spend on a lawyer and his own time, he MIGHT get awarded less than $10. Yeah, that seems worth it.

They may choose to pay you something for the domain if you work with them. Their cheapest option is UDRP which will cost a few thousand (2 for filing the UDRP, a couple more for the lawyer's time to write up the complaint - unless they have in-house lawyers). So, they may decide it is cheaper to pay you a little. But don't count on it and don't ask for it. If you do ask for money, that will be just one more nail in your coffin.

 

I agree with a couple of points which you have mentioned here.
Just some points:
1. Whichever way OP contacted them, it was through a conversation which has records. Also, the employee could have checked with the right department. OP may not have known which department to contact. So, he contacts the available person/contact mentioned at eNom's web site. It is upto eNom employees to find out where to route the request to. So, eNom will have a difficult time proving the "Sears janitor" analogy.

2. If the sales rep did not know what she/he was talking about, that is eNom's problem - not OP's.

This being said, the best option is just wait for them to make a tentative offer on the domain, and accept it, rather than going and fighting - I realize that it is your call - it is easy for us to advise to go to court or to settle or to cave in - it is **you** who will have to do it!

Anyway, I am very interested to know the outcome of this - do update us!!

 

That can bind if, say, the OP contracted with eNom to do business. But...the
OP didn't agree to do business with them.

If the OP wants a surefire answer as to whether the former rep's reply to his
query is equal to willfull permission from eNom, that's something only a judge
can authoritatively say. Beyond that, I don't know how you can compel one
to do what you want when they have no agreements or obligations to you.

 

Dave i don't know what do you mean when you say that the "OP didn't agree to do business with them"

The communition i pasted from the first post was the support ticket from the priority support system for ETPs (eNom Technology Provider) and for people who don't know this is the top level of reseller status at enom
This priority system is supposed to be quick and responsible because you provide support for the rest of the reseller chain beneath you.


Even at THEIR ETP control panel at the info section there is the "Organization Name : KENOM" and the "Website URL : www.kenom.com" for years now

Also a sidenote, Kenom.com was not registered under enom but under Domainsite.com
When Kenom.com started to get some traffic that was the time i received the C&D email

I wait for an update to my latest email, i will let the board informed about this issue

 

Final Outcome :

With the full text of the support ticket they withdrew their demand to hand them over the domain and accepted my suggestion to change topic. However it's interesting that they see KEYNOM.com as similar to enom too

"1. Please do not use the KENOM.COM domain name for any domain related services or any other services that might be confusingly similar to eNom, Inc. Demand Media reserves the right to object to your use of KENOM.COM in the future should it find it necessary to do so.

2. Please do not use the KEYNOM.COM domain for domain related services either. KEYNOM.COM is substantially similar to ENOM.COM and may cause consumer confusion. We suggest using a domain that is entirely different. Demand Media also reserves the right to take action in the future regarding KEYNOM.COM if necessary."

 

It is not interesting at all that they see keynom in the same light. Trademark law clearly states that phonentically similar marks may be found infringing as well. Phonetically KEYnom is very similar to Enom. In fact, apart from the k sound, they are phonetically identical.

 

Thanks for the update, they realize they are on shaky ground.. It's funny they say "Demand Media reserves the right to object to your use of KENOM.COM in the future should it find it necessary to do so" when they originally didn't object to you registering the domain for the purpose of selling domains.

Personally i'd ignore their letter and keep using the domain as is.

 

Not a bad outcome, but as most of us said all along they was on shaky ground in the first place.