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  1. #1
    ABW Ambassador Packy's Avatar
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    Need Some Advise Might be Sued
    I just received my first certified letter about a trademark infringement with one of my websites. Personally I don't see it but the letter threatens to sue unless I transfer the name over to them within 7 days. Nothing about cease and desist and it doesn't even get into what would happen once I did transfer the name over.

    The biggest problem is I would probably fight it but I have too many other things going on in life right now to take on something new That said I am actually an affiliate of theirs also but it's for another site. The letter says confidential so I don't know whether I can post the names here for you to see that although there is a similarity there is nothing in my opinion that even comes close to trademark problems. They also stated that I have caused great monetary loss and so on to the company. My site is a two page thrown up quickly site that averages less than 3 visitors a day so that's a bunch of Plus most of the links go to their site.

    Does anyone have any experience with this sort of stuff? Thanks for any feedback you can give.

  2. #2
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    Do you have their TM in the domain somewhere?

  3. #3
    ABW Founder Haiko de Poel, Jr.'s Avatar
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    PM me, I'll help.
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  4. #4
    Antisocial Media Expert ProWebAddict's Avatar
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    I don't know how much help this will be, but I have this site bookmarked just in case I need it eff.org

  5. #5
    ABW Ambassador Packy's Avatar
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    Thanks Haiko, Trust and ProWeb for the quick replies. Haiko, I just sent a PM to you and thank you.

    Trust, as far as I can tell I would say no. Part of it I suppose but it's a common word. In other words not what they are saying is trademarked.

    Pro Web, I'll check that site out and thanks.

  6. #6
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    What is there to transfer if they already own it??
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  7. #7
    ABW Founder Haiko de Poel, Jr.'s Avatar
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    PM answered.

    BTW, I wanted to post a link to another site that will help others (merchants and affs) determine typo squatting exposure - www.citizenhawk.com Met Graham (owner) at Summit, great guy.
    Continued Success,

    Haiko
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  8. #8
    ABW Ambassador IOWNIE's Avatar
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    You have NOTHING to worry about as long as you do the right thing. I have received several of these over the years and have had some fun with some. First of all, be advised that the letter you got, as formal as it may seemed, was just a "process" and probably had some big fancy anticybersquatting legal mumbo jumbo from a cut and paste attorney.

    What to do? If it is THEIR trademark....surrender it. PERIOD. Its not worth the hassle or fees to try and convey your side of the story. If they have enough money and time to have a legal department send youi a certified letter chances are they have more money than you to pursue it.

    A funny one happened with me. A while back I bought several religious oriented domains as in: IownBuddhism, IownGod, IownAthiesm, and........ IownScientology. Sure enough I received the same type of certified mail that you did from Tom Cruise and John Travoltas "Senior Attorney" I spoke to her several times ( all along with the intent to "give" her HER name back ) but I kept on insisting that I wanted autograpghed pictures of the two-famed scientologists so I could sell them on Ebay. I made her SOOOOOO mad and it was just so fun to screw with someone over a $6.85 cent purchase. Did I know it was Trademarked when I bought it? ABSOLUTLEY NOT. So, in the end, I just simply transferred the name to them without incedent.

    Still waiting for my autograpghed photos though.

    Good luck!

  9. #9
    Beachy Bill's Avatar
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    In ten years I have had two such letters. One was from Universal studios - I had HarryPotterPix dot com and was selling HarryPotter posters and books via Amazon and AllPoster - less than $200 bucks in total sales. The domain now redirects to "them."

    I decided not to try to fight anything.

    In another situation I had purchased a working website in the travel vertical and it contained three "A"s in a row. Yep about two years later a lawyer from A A A sent me a C&D or get sued letter. I did get her to explain in a follow-up letter that it was OK to use it for anything not related to the auto or travel services. I think I did a short article about the A A A size battery - but then let it drop.

    Neither domain was making anything to speak of - but it sure p*ssed me off because I was not trying to dilute their trademark. Today I know better - don't even come close, 'cause the corporate lawyers gotta collect their fees. In those two years that little site with three-As only sold about a dozen reservations - so I certainly didn't take much away from A A A. But since then I've had five good years of discouraging people from buying A A A services on one of my good "car" domains. There are alternatives that I point people to all the time - many of them are free.

    On the other hand - there are some unscrupulous folks who will try to "bully" you out of a domain that they have no right to whatsoever. So, if you have a valuable, producing domain, that is the time to get a lawyer.

    From the way you worded your first paragraph it almost sounds like the bully at work. It is good of Haiko to look at it for you.
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  10. #10
    Member JAYMEDINC's Avatar
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    I was threatened by two of my competitors last year that they were going to sue if I didn't remove there name as an Google Adsense keyword for my company.

    Everything I have read says that it is OK to use their company name as a keyword, but they were always pains in the butt, peers in the biz, so I just stopped using the keywords anyway.

    Was I wrong to use their company name?

  11. #11
    Affiliate Manager buyjewelry's Avatar
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    Years ago i bought a domain name which was related to an auction site. I did receive a letter from the company that had the name trademarked - and since I didn't really start working with the domain, I just didn't renew it when it expired. A year or so went by - and out of curiosity - I did a whois on the domain I let expire - someone else bought it, and is still running it. I guess the letter I got was just an empty threat.

  12. #12
    Member JAYMEDINC's Avatar
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    Quote Originally Posted by JAYMEDINC
    Google Adsense keyword
    Correction, I was using Googles Adwords.

  13. #13
    ABW Ambassador
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    I've had to give up one domain. I think the second one I ever bought, when I didn't have a clue to what I was doing, before I went full time with this, before I ever found ABW etc. Imagine Coke having cocacola.com registered but not coca-cola.com It was a situation like that, so I got the one with the dash. Figured it was alright or they would have gotten it themselves. Now the words with the domain I had, by themselves were common words, put together tho and they were the TM of the company. So they were 100% in the right, were real cool about it. After all it was a fan type of site for them.

  14. #14
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    Quote Originally Posted by Haiko de Poel, Jr.
    PM answered.

    BTW, I wanted to post a link to another site that will help others (merchants and affs) determine typo squatting exposure - www.citizenhawk.com Met Graham (owner) at Summit, great guy.
    I met Graham too while waiting in line for Cheese Cake bar at SaS party and we discussed what his company does .. He was nice and could be of help in this case

  15. #15
    Affiliate Manager Howard Gottlieb's Avatar
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    Remember the rules in the legal arena. Anyone can sue anyone for anything at anytime and you either need to settle or defend yourself. Only you can judge the cost effectiveness of getting into the fight.

    Someone mentioned above that you should not worry as long as you are right. That is not very good advice. Right does not always win. But defending against an aggressive lawsuit can be very costly.
    I would rather live my life as if there is a God and die
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  16. #16
    ABW Ambassador Packy's Avatar
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    Haiko, thanks for the PM and one more sent back just to make sure I stated the first names right. That said if and most likely when I do transfer the name over to this company I think I might contact another company who it is more similar to. Then maybe they will send them a cease and desist letter In other words I just looked and there is another company that has the same name as mine without a dash which I didn't realize so the company that sent me the letter would be infringing on their trademark most likely

    Thanks again for the great feedback and advise. I'd love to play around with this company like Iownie did but I'm a sissy man

  17. #17
    Outsourced Program Manager John Jupp's Avatar
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    Providing the domain is not attempting to "pass off" as the merchant alleging trademark infringement then they generally cannot win.

    If the domain uses a common word as part of the name then stick to your guns. I am really sick to my eye teeth of companies trying to trademark basic words that have no relevance to them as a business except it features in their name.

    Reminds me of McDonalds who have the "McDonald" trademark trying to sue CLAN McDONALD for the use of the McDonald name. This related to their use of the name in promoting traditional Highland fayre.

    The company lost big time. ONE - the use of the name pre-dated the trademark. Clan McDonald had been in existence for centuries before the trademark TWO - McDonalds was answerable under heraldic law to Clan McDonald. This was owing to antecendence. THREE McDonalds had to get permission from CLAN MCDONALD to continue to use the name as the Clan Chief could revoke the right for any antecedent to use the name.

    Back to your issue .. lets say you own aaainsurance.com and aaa demand you hand over the domain as they are moving into finance and the use of aaa is trademarked and they state you are "passing off". All you do is point out that aaa is an industry term for grade 1++ super fantastic credit worthiness and that the insurance is for low risk consumers. aaa then lose.
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  18. #18
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    It looks like you got some very good advice in this discussion thread (except, unfortunately, JJ's post directly above mine), but I'll add my two cents worth.

    First, I've been threatened with lawsuits hundreds of times, and I've been sued exactly once (a frivolous suit filed by a publicity-seeking spammer, who abandoned his lawsuit after I refused to play his publicity game). But that frivolous lawsuit cost me $5,000 in attorney's fees and costs to respond in court, before the suit was dismissed.

    Over the past 14 years, I've probably received about 20 "formal demand letters" via certified mail -- about half of those from lawyers. Every single one of those demand letters was "laughable," identifying no actual factual or legal dispute. Instead, the letters were intended purely as intimidation -- pressure to get me to remove accurate, truthful information from my web site.

    But as an attorney, I've written "demand letters" (some for the client to sign, some that I signed) and in a few cases when the other party refused to comply, I've filed lawsuits on my clients' behalf. In every case, the other party was "worse off" because they ignored the demand letter.

    I must stress that I've never been involved in any "domain disputes." You haven't identified the domain name or trademark at issue (and you should never discuss any details of possible litigation in a public forum, because it could be used against you in court), but it sounds as if it's a term which you believe is generic but the company claims as a trademark (it's not even clear if they've registered the trademark, and as you mention there is another company which owns the non-hyphenated version of your domain).

    The reason a "domain dispute" is different is because it usually will NOT be resolved in a courtroom, but instead through the dispute-resolution process created by ICANN for domain disputes. It's a remarkably reasonable and clear process, and most people can determine very quickly whether they are likely to win or lose if that process occurs.

    Finally, don't rush into any decision about this (either fighting them or abandoning the domain). If you "surrender," you're rewarding intimidation tactics, which may encourage these same folks to continue intimidating others. If you "fight," you may incur expenses and effort (time) that could be more profitably spent on other activity.

  19. #19
    ABW Ambassador newestuser's Avatar
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    Quote Originally Posted by JAYMEDINC
    I was threatened by two of my competitors last year that they were going to sue if I didn't remove there name as an Google Adsense keyword for my company.

    Everything I have read says that it is OK to use their company name as a keyword, but they were always pains in the butt, peers in the biz, so I just stopped using the keywords anyway.

    Was I wrong to use their company name?
    It's probably not illegal, but it is a crappy way of doing business. Rather than poach off your competitors, why not try to get your own traffic.

  20. #20
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    As far as that, although I don't do it myself, I don't have a problem with it at all.

    I have a problem if you're bidding on someone's TM and make it look like them, cause confusion to the customer, you can get in trouble with that.

    But just bidding on a TM, there's really not an issue because in real world marketing it happens all the time. Competitors always use other competitors trademarks, target their trademarks etc. Many past discussions on this over the years. Think of commercials, Coke is better than Pepsi, Ragu better than Prego, Drano better than Liquid Plumber etc. Also when I worked in the grocery business, competitors targetted competitors at checkout too. I would buy a 12 pk of coke, I would get a checkout coupon for money off my next Pepsi purchase. Pepsi targetted that TM, so everytime the register read it, it would push out a Pepsi coupon. It's all legal, it's competition. So don't really understand why people think it would be any different in the online world. As long as you don't do stuff like:

    "I have a problem if you're bidding on someone's TM and make it look like them, cause confusion to the customer, you can get in trouble with that."

    And there was that case with one insurance company bidding on Geico and their ad looked like Geico but when you clicked it, it didn't go to Geico, stuff like that you might run into trouble. That case went back and forth, don't remember how all that ended up.

  21. #21
    ABW Ambassador Boom or Bust's Avatar
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    Over a year ago I received an email from somebody named Edith with address enforcement at ebay dot com to the address we use in our domain registrations. The email explained that a domain name I owned infringed on eBay's trademark. The domain was thebays.... dot com and matched an eBay member name I was using at the time. The domain simply redirected to our eBay store.

    Included were statements such as; The Anticybersquatting Consumer Protection Act (http://www.patents.com/acpa.htm) provides for serious penalties (up to $100,000 per domain name) against persons who, without authorization, use, sell, or offer for sale a domain name that infringes anothers trademark. which sound pretty scary.

    It also stated; While eBay respects your right of expression and your desire to conduct business on the Internet, eBay must enforce its own rights in order to protect its valuable and famous trademark. For these reasons, and to avoid consumer confusion, eBay must insist that you not use the domain name for any purpose, do not sell, offer to sell or transfer the domain name to a third party, and instead simply let the domain registration expire.
    Please confirm in writing that you will agree to resolve this matter as requested. If we do not receive confirmation from you that you will comply with our request, we will have no choice but to pursue all available remedies against you.


    Ok, me thinks to me self, this could be from anyone, so I looked at the email header. Turns out this was sent from markmonitor dot com which specializes in trademark protection. In other words, they scan the Internet for their clients(eBay) just searching for TM infringement. When they get a hit, out goes a letter.

    So, I sat down and typed an email to Edith as follows...

    We recently received the email below from markmonitor (.) com with a spoofed return address of enforcement (@) eBay.com. Due to the proliferation of fake/spoofed emails attempting to defraud recipients, and the fact that the return address of this email does not match the sender, we cannot make any kind of business decision based solely on it's receipt. If in fact the content of the email is valid and it was sent by an agent of eBay, as a valid, licensed business in the state of Washington since 1990, we have no intent of infringement on any registered copyright or trademark of any business and would most likely be willing to comply. In order to seriously consider release of the domain name thebays.... dot com, we require an appropriate notice of cease and desist sent through the US Postal service to the following address:...

    That was a year ago January. We renewed the domain name a couple months later and haven't heard from them since.

  22. #22
    ABW Ambassador Packy's Avatar
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    Thanks again everyone for the advise. If I decide to transfer the domain name it doesn't even in the letter say who to transfer it too. It just says that so and so demands I transfer the domain name or else. So what's a man to do

    The other thing is that I just looked at the trademark names similar to my sites name and there is one that has a trademark but they are not the ones coming after me. On my site I do have 90 percent of the links going to the company who sent the letter. No way is the site trying to pretend to be that merchant and time and again I state that so and so is a good company to get the product from so there is absolutely no deceiving going on as far as trying to imitate my site being the merchants. Believe me my web talents aren't good

    Back to the transferring of the domain part. Again who would I transfer it too? If the lawyers are suggesting I transfer it to the company involved that would be wrong because they would then be violation the trademark of the other company if there is a violation. I have no problem doing something like Haiko mentioned. I'm broke and their not but I can't see caving into this company although most likely I won't have a choice.

    Mark, would it be a good idea or a bad one to contact the company reps or lawyers. Thanks again all.
    Last edited by Packy; February 28th, 2008 at 04:53 PM.

  23. #23
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    Quote Originally Posted by Packy
    > "Mark, would it be a good idea or a bad one to contact the company reps or lawyers." <
    Yes. It might be a good idea, and it might be a bad idea. That's one reason to consult with an attorney (not me!) with whom you can confidentially discuss the situation in detail -- without a lot more detailed knowledge, nobody can give you meaningful advice.

  24. #24
    The affiliate formerly known as ojmoo
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    In the November-December Issue of Domainer's magazine (I have no idea why they sent it to me, but I was on a bus to Atlantic City so I read it.) There is a great article on the UDRP/WIPO Process. UDRP = Unform Domain Name Resolution Policy WIPO = World Intellectual Property Organization.

    It says that "for people who want to seize, grab or otherwise acquire a domain that is held by another person or party, UDRP has turned out to be the easiest, cheapest and most convenient way to do so." It also says that it starts with a letter that is a copy of the complainant's official complaint. Did you get one of those???

    I urge you to get a copy of this article. It starts on page 11. If they are serious about getting your domain name, this is how they will come at you. It only costs them $750, and the worst that could happen to you is that you lose the domain name. It doesn't seem to cost the defendant anything, but you do have to gather your evidence, which you should start gathering now.

    Either way, send them back a letter saying that you don't see how your site infringes upon their copyright and that you are willing to fight for it. IF they get really serious about it, you can always turn it over to them later. At least ask them to produce evidence that they have an actual copyright.
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  25. #25
    Member JAYMEDINC's Avatar
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    Quote Originally Posted by Trust
    "I have a problem if you're bidding on someone's TM and make it look like them, cause confusion to the customer, you can get in trouble with that."
    What I did was bid on their company name on AdWords. The when someone typed it in Google, I used my company name as the Link to click on. No deception there in my opinion. Just another way to pay for a click through. I currently don't pay for any links any more. And the five searches a day that I got out of their names, weren't worth the hastle.

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