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  1. #1
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    Hi, everyone!

    We could really use some advice right now.

    We just got a "cease and desist" letter concerning one of our most popular websites.

    The letter does not just ask us to cease and desist. It also says we have to tranfer our domain to him.

    One of the words in our URL does have a trademark. We did not realize this as it is a fairly common slang word.

    We did not register the name to compete with the other site.

    After researching we see that the person who sent us the cease and desist has started at least 3 other cases. He lost 2 and won the other.

    We think he is just trying to get sites for the free traffic and think we would win a case... but we have NO money to fight.

    What can we do? Perhaps we could change the domain name and just send an email to our members letting them know. We do not want to give the domain to him though. He would get lots of bookmarked traffic.

    Any advice?

    Thanks!
    Paula and Jenny

  2. #2
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    After having lost 2 cases he perhaps has also no money. How was it possible to register a domain if a word has a trademark? Should your registrar not be aware of that?


    carneol

  3. #3
    pph Expert! Gordon's Avatar
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    If its a fairly common slang word I'm sure they cannot trademark it.
    Call their bluff and just ignore them.
    I've done it twice now and I heard nothing off either of them.
    One day parasites and their ilk will be made illegal, I bet a few Lawyers will be pissed off when the day comes.
    Mr. Spitzer is fetching it nearer

    YouTrek

  4. #4
    ABW Veteran Student Heyder's Avatar
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    I agree with Gordon
    Don't return any emails or read receipts and answer your phone vandalay industries for a while.

    Seriously don't give them your domain name, any cash or other settlement until you either go to court or your lawyer makes an agreement. Otherwise he's got nothing on you.

  5. #5
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    He does have the trademark... we just didn't know ahead of time.

    Any idea how much it would cost to get a lawyer to respond if needed?

    Thanks!

  6. #6
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    I would ignore it until you either get served the lawsuit or get notified of a domain complaint. Make sure that your domain information is current so if they do file a domain complaint you will get notified.

    If they do serve you get as much information on the term as you can - ie., show how many google results there are for it so you can show that the term is common slang. Also, see how they are using their trademark.

  7. #7
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    Check which classes (type of goods/services, etc) their trademark covers, if you are in a totally different field then it is possible that you are not infringing (especially if the word is common)on their trademark.

    Good luck !

    Dazz

  8. #8
    I like traffic lights
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    Don't worry too much yet. Some people love to send out C&D's as they count on people getting scraed and handing them domains for free that they're not really legally entitled to.

    I got a C&D once from someone who claimed they had a TM. It was for a descriptive term - the name of a part of a car (like "differential").

    I told them to take a running jump.

    They C&D'd the CJ merchant I was promoting at the domain and the Merchant dropped us from their program WITHOUT EVEN asking us what was going on.

    As it turned out, they only had a TM APPLICATION, and it was denied by the USPTO.

    The big LOSERS in this case was the knee-jerk merchant, as I now advertise their competition on that website AND ALL MY OTHER auto sites as well, and they can go suck my fat one as far as I'm concerned.

    But anyway, I appear to have got rather sidetracked.

    There are attorneys out there who specialise in protecting domain name assets. PM me for a list.

    Whatever you do, if you want to guarantee the best result from this, DO NOT reply to their C&D without consulting a COMPETENT attorney first.

  9. #9
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    If the C&D came from a law office, do not ignore it under any circumstances. You should see a lawyer immediately to prepare a reply.

    This step itself should not cost much (perhaps $100 or so, depending on where you go), and it may be all it takes to fend off the attack.

    "I got a C&D once from someone who claimed they had a TM."

    Yeah, a lot of people CLAIM to own a TM.

  10. #10
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    Just sent you a PM.

  11. #11
    More Cheesier Than Ever Cheesehead's Avatar
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    Yes, get professional advice.
    This World is Not My Home
    We're gonna go inside, we're gonna go outside, inside and outside. . . And then we're gonna go go go and we're not gonna stop til we get across that goalline! Quotes from the movie Rudy, 1993

  12. #12
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    There are specific laws regarding the registration of the trademark. I would take some time and research the trademark.

    If you find, beyond a reasonable doubt that this guy has not trademarked the word, file an application yourself and tell him that if he attempts to sue you in court, you will countersue on grounds that he is illegally trying to interfere with your business. I would also file a complaint with the attorney general of his state.

    The total cost of this is nominal, but it will scare him and give you some protection.

  13. #13
    ABW Adviser Panel Dynamoo's Avatar
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    In my non-legally-qualified opinion, this guy will only have a legitimate claim over the domain name if it's confusingly similar, or has been registered in bad faith, or in some way dilutes their brand.

    Just owning a trademarked word is not enough.. for example there's a large cellphone operator in Europe called Orange, which is a trademark. Clearly you wouldn't be able to use Orange in the context of cellular communications in that marketplace - but because it's a general word it's perfectly possibly to use it in other contexts "orangewidgets.com" without diluting the trademark.

    So a lot of this really depends on the exact details of the trademark and domain name and line of business.

    Investigate the trademark thoroughly, and chekc what it actually covers.

    I think if this C&D has come from an individual then you can offer a rebuttal (on whatever grounds you see fit) and threaten that any unfair restraint of trade would result in legal action against them.

    If it has come from a lawyer, then I'm afraid you're probably going to have to take legal advice though.
    Innovative advertising with Slimeware Corporation and Telephore. Mail-order fuel with Petrol Direct.

  14. #14
    pph Expert! Gordon's Avatar
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    I'm not saying this as advice for you to follow but the two occasions that happened to me both letters (postal mail not emails) were from lawyers from New York. To be honest at first I thought it was Haiko having a joke.

    One was regarding Cartier watches I forget what the other was but I ignored both of them and heard no more.

    [edited to add]
    Then again I am in Canada, maybe they could not afford the bus fare to serve me with the papers.
    One day parasites and their ilk will be made illegal, I bet a few Lawyers will be pissed off when the day comes.
    Mr. Spitzer is fetching it nearer

    YouTrek

  15. #15
    Moderator MichaelColey's Avatar
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    Also, consider what it's worth to you. If it's a hobby site that you make virtually nothing on, I wouldn't spend much money defending it. If it's your livelyhood, by all means contact a lawyer--you can't afford not to.
    Michael Coley
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  16. #16
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    I got a C&D back in April from a large, well-known multi-national electronics producer. I was promoting some of their products.

    Letterhead with legal and marketing department contact info is scary.
    Dr. Strangeweb, or how I learned how to stop worrying about SERPS and love the WOM.

  17. #17
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    Worth looking into:

    Nissan.com
    - car co. won case against Mr. Nissan whose business was not competing against them & has used the family name for business since the days of Datsun...

    and

    Phat Farm (Russell Simmons)
    Saw interview that he trademarked "phat" and nobody else can use it w/out his permission... I hope he was joking...
    Hi, I'm a signature.

  18. #18
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    Here's what you do...

    If they have a real trademark or service mark that has been approved they received an official letter to that effect with a number attached to it from the trademark office.

    Send them a registered letter by snail mail requesting a photo copy of the official letter granting the trademark with the official trademark office number.

    You can then go search it for free and see if they are not just playing games.

    If they have an application pending, ask them to provide you with the official date of the trademark application...TM's don't apply if you can establish useage BEFORE they applied. They only apply after you get the official R.

    Also, you can get trademarks for stuff on a single state basis, so you need to ask for any state registrations in your letter as well.

    If they have neither officially applied nor received an actual trademark and they do the C&D deal to get you to take action that may be detrimental to you and positive for them..you can claim attempted EXTORTION.

    In your request for proof of application or the actual official mark letter, tell them if they have not officially applied by the date of your letter or hve received the actual mark, you will file a criminal complaint against them for extortion.

    Works every time...either the people have applied, have the mark and you get the proof or they go back into the woodwork.

    If they send you proof...make the necessary changes to your site so as to not be in violation.

  19. #19
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    Excellent advice. ^
    www.joeytomatoes.com :: Day Care For Your Brain

  20. #20
    I like traffic lights
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    >Nissan.com

    >- car co. won case against Mr. Nissan whose
    >business was not competing against them & has
    >used the family name for business since the
    >days of Datsun...

    Not enough info. Mr Nissan was winning UNTIL the stage he put car adverts on his electronics site.

    THAT'S when he lost.

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