Trademark Domain Names

[ManOnTheRoad]

Hi all

I bought a domain name few months ago , but then i received a letter from a lawyer in USA informing me that i own a trademark domains of their client a jewelry company, they deal in custom made jewelry for celebrities . And they ask me to contact them asap. I think they must have gotten my mailing address from the domain whois.

Should i politely contact them back ? What happens now ?

I tried searching on google about this matter i see some people settle it off court and earns tons of money form the settlement and some got sued and have to give up their domain for free.

The domain is new and i have not set up any sites.

Cheers

Edited June 28, 2012 by ManOnTheRoad

[phl]

i do not believe there is any law stopping you from owning the domain name.

actually i am sure there is no law.

no doubt they will first try to threaten, but then will start to make offers to buy.

Do not give up too easy or give in to threats, you can do that at any time, even half way through the court case.

All the balls are in your court, it actually gave me an idea to register some domain names, if the trademark was not smart enough to do it in the first place

[bangkockney]

i do not believe there is any law stopping you from owning the domain name.

actually i am sure there is no law.

no doubt they will first try to threaten, but then will start to make offers to buy.

Do not give up too easy or give in to threats, you can do that at any time, even half way through the court case.

All the balls are in your court, it actually gave me an idea to register some domain names, if the trademark was not smart enough to do it in the first place

Sorry but this is nonsense.

The Anticybersquatting Consumer Protection Act means you will have to give up the domain name if it is trademarked.

Call the lawyer who wrote to you.

[CharlieH]

Be careful, there are some naughty people out there who send these "cease and desist" notices just to get the domain from you and then use it themselves its quite a well know scam. I would totally ignore it initially and see where it goes.You will probably never hear from them again. Get your details hidden (private) in "who is".

Edited June 29, 2012 by CharlieH

[phl]

i do not believe there is any law stopping you from owning the domain name.

actually i am sure there is no law.

no doubt they will first try to threaten, but then will start to make offers to buy.

Do not give up too easy or give in to threats, you can do that at any time, even half way through the court case.

All the balls are in your court, it actually gave me an idea to register some domain names, if the trademark was not smart enough to do it in the first place

Sorry but this is nonsense.

The Anticybersquatting Consumer Protection Act means you will have to give up the domain name if it is trademarked.

Call the lawyer who wrote to you.

I do not believe Anticybersquatting Consumer Protection Act would apply unless the trademark would prove that OP registered the domain name with no intention of creating legitimate website but instead to sell domain name to a 3rd party of trademark.

OP was not even aware that such trademark existed and OP did not contact 3rd party offering to sell it.

Sure trademark and lawyers can file a law suit and possibly prove the case after spending few hundred thousands $$$$

[happysanook]

There's no law against you owning the domain name, however, there's no law against them suing you as well. Personally, I would ignore it until you heard further communication.

[Tywais]

My understanding is that the Trademark must be legally registered and not defacto as in copyrights.

3. Registration and use of a can be a potential infringement of a trademark where the name is also a trademark or word mark in use by another.

• It has recently been stated that traditional trademark principals cannot be made to apply to the Internet. This author disagrees with such statements. Trademark law applies as well here as it did in ancient times, when Greek artists "signed" or etched their names in their pottery to identify it from other, inferior brands.
  
• Courts are consistently applying general trademark infringement law to claims of Trademark users against some "domain name" owners whose names are also trademarks of companies.
  
• This means that one could be liable for infringing another's trademark by using a domain name.
  
• The test is, "whether the infringing URL might cause "public confusion." In other words, if the URL bottom level domain name is the same or very similar to a famous, known or used trademark, the trademark owner might have a claim based on:
  
• >Whether the domain name as an address might lead customers to the web site in the expectation that certain desired goods or services would be found at the site. Does the domain name cause public confusion or might it?
  
• The proof is expensive and extensive since a public survey may have to be done to prove such a claim. The trademark owner might obtain a court injunction to stop a domain name if the mark is similar to a domain name and it is strong, registered and not generic or descriptive. Claims may be held to be infringements, and whether willful or not this can cause cancellation of a "domain name", criminal liability, civil liability and punitive damages and seizure of goods or shut down of a site could occur. The InterNIC has been the subject of a litigation over these and other similar issues. No doubt this will be the situation with ICANN.
  

4. Whether the Domain Name Register can settle Disputes:

• To attempt to offset claims, Network Solutions has a second new policy to suspend or remove all potentially infringing marks IF a few things have been done: (1) the mark must be registered (in some country), (2) it must be the SAME as the URL and (3) the mark will only be removed (rather than suspended) if a court orders InterNIC to do so. This policy is not set by government, nor perhaps should it be, however regulation could appear if we do not police our marks.
  
• The policy is not totally accepted by the industry and there are conflicts within the legal world, so the law on this subject is in a state of flux. It is likely that this is one of the major potential sources for much future litigation, appeals and perhaps the Supreme Court will speak on it. See the related article on the Future of Domain Names.
  
  • POLICY OF NETWORK SOLUTIONS, Inc. If a third party claims ownership in domain name and complains to N.S.I., but has a valid trademark registration, NSI and other registers will listen to them and might put a domain name on hold. If you have no valid registered trademark, the domain name remains unless a court says otherwise:
    
  • If the third party presents certified copy of valid Patent and Trademark Office trademark registration of a mark identical to the domain name, and if the date of domain name activation is earlier than either date of first use or registration of the domain name owner, the domain name stands unless a court orders otherwise.
    
  • However, the domain name may be put on hold if complainant has: a Certified copy of valid a registration from any country of an identical mark ---and the Domain name was activated later than date of first use or trademark registration of the mark, then the Domain name user will get 90 days to select a new name or it is put on hold.
    
  • A hold might last until a court orders it to be removed, and litigation will most likely get to the appeals courts and possibly the Supreme Court, in this author's opinion, soon. There are many Intellectual Property and Information Technology industry arguments why this private policy is inadequate.
    

http://greenandgreen.com/lib/wwwvstm.html

More - http://www.law.ed.ac.uk/it&law/ch4_main.htm

[Guest]

It's quite common that these emails say 'Our customer in HK... '

Do an reverse check of the sending domain name, both for sending email address and their website address, with whois.

Normally these domains have been created just few month back and in my opinion lack credibility. I have always ignored these emails. They will send a few more and then it stops as the senders move on to another domains. Anyway do a research of the sending party and then do an decision if you need to reply.

[astral]

I agree about the wait and see approach.

If they try to play hard ball, then suggest they buy the name from you,

say One Million Dollars, as a starting price..................

after all you bought it in good faith.

[Thailand]

i do not believe there is any law stopping you from owning the domain name.

actually i am sure there is no law.

no doubt they will first try to threaten, but then will start to make offers to buy.

Do not give up too easy or give in to threats, you can do that at any time, even half way through the court case.

All the balls are in your court, it actually gave me an idea to register some domain names, if the trademark was not smart enough to do it in the first place

Uniform Dispute Resolution Policy (UDRP)

http://www.wipo.int/amc/en/domains/decisionsx/index-gtld.html

[phl]

i do not believe there is any law stopping you from owning the domain name.

actually i am sure there is no law.

no doubt they will first try to threaten, but then will start to make offers to buy.

Do not give up too easy or give in to threats, you can do that at any time, even half way through the court case.

All the balls are in your court, it actually gave me an idea to register some domain names, if the trademark was not smart enough to do it in the first place

Uniform Dispute Resolution Policy (UDRP)

http://www.wipo.int/...index-gtld.html

was there a point?

[ManOnTheRoad]

Hi guys,

The domain in question is a 5 letter dot com , i didn't realized it was a brand name . I bought it in good faith thought it could be the next google, yahoo or even apple. A brand that could make good use of it.

So i received alot of calls from a private number early morning in bangkok while having a nice sleep. So i only realized that this law firm from New York is trying to get hold of me. In the letter sent via USPS they required me or my representative to contact them.

When they told me that the domain name i own infringe trademark of their client i was shock , made a research and my they are a multi billion dollar jewelry company .

Well i didn't call them yet as it is weekend today in thailand, but will try and call them noon NY time. Lets see perhaps this might be my golden opportunity to earn some hard cash from this and just sell and let go the domain to them hahaha if at least they pay me Half a million UDS. lol

more updates soon

Edited June 29, 2012 by ManOnTheRoad

[ManOnTheRoad]

Found a good story

Cnn bought ireport.com from a guy for 700k usd wow.

http://www.ricksblog...ortcom-and.html

http://domainnamewire.com/2008/01/17/cnn-buys-ireportcom-for-750000/

Edited June 29, 2012 by ManOnTheRoad

[ManOnTheRoad]

Worst comes , can they really sue me ? or can they even at least pay me some money ? well my worries is that they will just try to take away the domain from me.

[Guest]

Worst comes , can they really sue me ? or can they even at least pay me some money ? well my worries is that they will just try to take away the domain from me.

Why don't you hire an lawyer to deal with that. With your possible USD700K you should be more than afford to it...

[Thailand]

Worst comes , can they really sue me ? or can they even at least pay me some money ? well my worries is that they will just try to take away the domain from me.

Yes they can and probably will if it infringes their copyright/trademark.

My post above, that does have a point, shows just how many actions via Wipo UDRP there have been with the majority by far going to the complainant. (Trademark owners)

The ireport.com sale to CNN was by a well known domainer Rick Schwartz and CNN paid because they wanted the name and had no copyright/trademark on it. There are quite a few generic domain sales in excess of $1million and many in the $xxx,xxx.

The domain industry is very active and vibrant with the vast majority of people conducting their business within strict moral codes.

Those that deliberately register trademark/copyright names to the detriment of the businesses good name are the pariahs of the industry and considered bottom feeding scum.

ManOnTheRoad- just to clarify I do not put you in the last category I mentioned, you were not aware what you were doing/had bought but ignorance of the consequences are no excuse.

I do know in some cases to forgo an expensive court case for both parties the companies have offered a token of around $1500 (cost of an UDRP) to close off quickly.

Tread carefully when talking to the lawyers.Good luck.

[bangkockney]

Hi guys,

The domain in question is a 5 letter dot com , i didn't realized it was a brand name . I bought it in good faith thought it could be the next google, yahoo or even apple. A brand that could make good use of it.

So i received alot of calls from a private number early morning in bangkok while having a nice sleep. So i only realized that this law firm from New York is trying to get hold of me. In the letter sent via USPS they required me or my representative to contact them.

When they told me that the domain name i own infringe trademark of their client i was shock , made a research and my they are a multi billion dollar jewelry company .

Well i didn't call them yet as it is weekend today in thailand, but will try and call them noon NY time. Lets see perhaps this might be my golden opportunity to earn some hard cash from this and just sell and let go the domain to them hahaha if at least they pay me Half a million UDS. lol

more updates soon

If you demand money for a trademarked domain you'll be in a whole world of trouble.

If you want any chance of keeping the domain put a good lawyer on retainer.

Whatever you do don't ignore the letters/calls. Then can take you to court without serving notice and if you don't appear at court, you lose by default.

[astral]

If it is so important, why had they not registered it already?

[bangkockney]

If it is so important, why had they not registered it already?

They have the trademark, presumably before the OP registered the domain. That's all that matters. Protecting themselves with a trademark negates any need to register all TLDs for that name.

[dave111223]

You found a 5 letter .com domain that was unregistered...that someone had a trademark on...something doesn't add up?

What's the domain?

[dave111223]

They have the trademark, presumably before the OP registered the domain. That's all that matters. Protecting themselves with a trademark negates any need to register all TLDs for that name.

The OP specified that it's a .com...obviously no one wants to register all the obscure TLDs...but they don't even register the .com...strange..?

[bangkockney]

They have the trademark, presumably before the OP registered the domain. That's all that matters. Protecting themselves with a trademark negates any need to register all TLDs for that name.

The OP specified that it's a .com...obviously no one wants to register all the obscure TLDs...but they don't even register the .com...strange..?

Not really. They're a jewellery company selling to celebrities. I bet they generate most business from word-of-mouth/personal referrals. No need for a web presence.

There's 101 reasons why a business doesn't want/need a web presence but would want to protect their trademark.

[dave111223]

Not really. They're a jewellery company selling to celebrities. I bet they generate most business from word-of-mouth/personal referrals. No need for a web presence.

There's 101 reasons why a business doesn't want/need a web presence but would want to protect their trademark.

So they have no interest in buy their own register trademark .COM? Yet they pay lawyers to find the owner of the domain as soon as it is registered (before there is even a website there), and hunt them down?

Spending $1000s for lawyers, or spend $10 to just register the domain....makes sense to choose the lawyer route...

They probably don't have a trademark on the domain at all. They probably got trademark on "abc.com" and the OP registered "ab-c.com" and now they want to kick his butt.

But I guess we'll only know once we actually know the real domain in question.

Edited June 30, 2012 by dave111223

[bangkockney]

Not really. They're a jewellery company selling to celebrities. I bet they generate most business from word-of-mouth/personal referrals. No need for a web presence.

There's 101 reasons why a business doesn't want/need a web presence but would want to protect their trademark.

So they have no interest in buy their own register trademark .COM? Yet they pay lawyers to find the owner of the domain as soon as it is registered (before there is even a website there), and hunt them down?

Spending $1000s for lawyers, or spend $10 to just register the domain....makes sense to choose the lawyer route...

They probably don't have a trademark on the domain at all. They probably got trademark on "abc.com" and the OP registered "ab-c.com" and now they want to kick his butt.

But I guess we'll only know once we actually know the real domain in question.

To you and I your reasoning is sensible. But we're talking about a multi-billion dollar company. The cost is irrelevant to them.

They could well have their own legal department anyway, especially since they're large cap.

You're example is still trademark infringement.

A well known case is Dell.com and dellsucks.com (or something along those lines). Dell sucks was found to be a trademark infringement. As was dellcustomerservice.com and some others I can't remember now.

If the OP were to use the domain name in an unrelated market where there was no possibility of consumer confusion it could be allowed. By the OP must seek legal advice.

Personally the only thing I'd be saying to the lawyer in NY is thanks for your letter, my lawyer will contact you.

[whybother]

Hi guys,

The domain in question is a 5 letter dot com , i didn't realized it was a brand name . I bought it in good faith thought it could be the next google, yahoo or even apple. A brand that could make good use of it.

So i received alot of calls from a private number early morning in bangkok while having a nice sleep. So i only realized that this law firm from New York is trying to get hold of me. In the letter sent via USPS they required me or my representative to contact them.

When they told me that the domain name i own infringe trademark of their client i was shock , made a research and my they are a multi billion dollar jewelry company .

Well i didn't call them yet as it is weekend today in thailand, but will try and call them noon NY time. Lets see perhaps this might be my golden opportunity to earn some hard cash from this and just sell and let go the domain to them hahaha if at least they pay me Half a million UDS. lol

more updates soon

Are you planning to use it for a jewelry related business?

[dave111223]

You're example is still trademark infringement.

No it's not if the domain was purchased in good faith and is unrelated to the trademark owner.

For example:

ABC.com sell empty beer cans, and has a trademark on "ABC"

I buy AB-C.com and start an online dating website; without any knowledge about ABC.com trademarks etc..

No customers could get confused between the two companies as they are running totally different businesses. ABC.com would have to prove bad faith (such as me planning on selling my own empty beer cans, or me only using the site as a parked advertising placeholder to capitalize on ABC typos, etc..)

P.S. To the OP I would make sure I put up a quick HTML page on your domain (NO ADS) which says something like "This is the future home of XYZ, we will be doing this and that etc..".

Again this all assume that you will be running a different business from the complaining company.

Edited June 30, 2012 by dave111223

[bangkockney]

You're example is still trademark infringement.

No it's not if the domain was purchased in good faith and is unrelated to the trademark owner.

For example:

ABC.com sell empty beer cans, and has a trademark on "ABC"

I buy AB-C.com and start an online dating website; without any knowledge about ABC.com trademarks etc..

No customers could get confused between the two companies as they are running totally different businesses. ABC.com would have to prove bad faith (such as me planning on selling my own empty beer cans, or me only using the site as a parked advertising placeholder to capitalize on ABC typos, etc..)

Well now you've qualified your example and changed the meaning of what you originally posted.

[Thailand]

You're example is still trademark infringement.

No it's not if the domain was purchased in good faith and is unrelated to the trademark owner.

For example:

ABC.com sell empty beer cans, and has a trademark on "ABC"

I buy AB-C.com and start an online dating website; without any knowledge about ABC.com trademarks etc..

No customers could get confused between the two companies as they are running totally different businesses. ABC.com would have to prove bad faith (such as me planning on selling my own empty beer cans, or me only using the site as a parked advertising placeholder to capitalize on ABC typos, etc..)

P.S. To the OP I would make sure I put up a quick HTML page on your domain (NO ADS) which says something like "This is the future home of XYZ, we will be doing this and that etc..".

Again this all assume that you will be running a different business from the complaining company.

Half decent lawyers will have already taken screenshots of the domain and if there was any conflict from parking or otherwise the op is screwed.

Interested to hear the outcome.

[dominique355]

First, I would need to know which TLD is your domain name.

Depending on that, there are rules to solve a dispute over a domain name and a trademark.

In Principle, trademarks have priority over a domain name. That's because domain names are registered in private registers (.com) and trademarks are registered under the laws of a country, examined and published for opposition.

Here is what you should do:

1. Ask the lawyer for proof of registration (copy of the registration certificate)

2. Ask, in which country (countries) the trademark is registered and protected.

3. If your domain name is a .com, then most likely the Domain Name Dispute Procedure at WIPO (in Geneva, Switzerland) applies and if you ignore that by not answering, you might loose your domain name registration.

4. The same procedure applies to a number of other TLD, check at WIPO's website if your is there.

If you have further quetions, PM me. I might be able to help.

[dominique355]

You're example is still trademark infringement.

No it's not if the domain was purchased in good faith and is unrelated to the trademark owner.

For example:

ABC.com sell empty beer cans, and has a trademark on "ABC"

I buy AB-C.com and start an online dating website; without any knowledge about ABC.com trademarks etc..

No customers could get confused between the two companies as they are running totally different businesses. ABC.com would have to prove bad faith (such as me planning on selling my own empty beer cans, or me only using the site as a parked advertising placeholder to capitalize on ABC typos, etc..)

P.S. To the OP I would make sure I put up a quick HTML page on your domain (NO ADS) which says something like "This is the future home of XYZ, we will be doing this and that etc..".

Again this all assume that you will be running a different business from the complaining company.

While it is true that normal trademarks are protected against identical and confusingly similar trademarks used for the same or similar goods or services, this rule does not apply to so-called famous (or notorious) trademarks. If a trademark is qualified as "famous" (e.g. Coca-Cola) its scope of protection extends to all kind of goods and services.

This also depends on the national legislation, i.e. the country where the trademark is registered and where the alleged infringement takes place. Remember: the scope of protection of a trademark covers only the country where it is registered. In other words, a trademark registered in USA, but NOT in Thailand, has no effect in Thailand.

The problem is that while trademarks are territorially limited, domain names are not. Any domain can be accessed from anywhere in the world. So even if a trademark is not registered in Thailand, the domain owner in Thailand might infringe the US trademark with his domain name. (Because the website behind can be accessed in USA as well).

Trademark / domain name conflicts are very delicate and complicated. Better seek advice from a professional.