S
Shaunie
Guest
They want me to hand over my domain name
What is the name of your state? Australia
I have a registered domain name, 'jobsearchexpress.com', that I run from Australia and it is a service that will only be available to people in Australia.
Just yesterday I received an email from an attorney from the US saying I am breaching trademark law because their client has trademarked the term "Express" in relation to employment services in the US.
This is a copy of the email and do they have a case?
Our firm is trademark counsel for Express Franchise Services, L.P. ("Express"), a franchisor for the operation of a personnel services business, which includes temporary help, full-time employment, professional search and contract staffing business. An Express franchisee operates a personnel services business which provides temporary employment service, full-time employment service and a professional staffing business which includes contract staffing and executive search.
Express is the owner of numerous federal trademark registrations in class 35 including, among others:
· EXPRESS, Registration No. 1,647,022 for temporary help and employment agency services; · EXPRESS PERSONNEL SERVICE and Design, Registration No. 1,708,586 for employment agency services; · EXPRESS TEMPORARY SERVICE and Design, Registration No. 1,718,629 for temporary help and employment agency services;
· EXPRESS STAFFING SERVICES and Design, Registration No. 1,946,030 for employment staffing services; · EXPRESS HUMAN RESOURCES and Design, Registration No. 2,124,198 for employee leasing and personnel recruiting;
· EXPRESS MANAGEMENT SERVICES and Design, Registration No. 2,225,130 for administrative personnel and recruitment as well as permanent and temporary employment agency services;
· EXPRESS PROFESSIONAL STAFFING, Registration No. 2,530,726 for temporary and permanent employee placement services; and · EXPRESS HEALTH SERVICE and Design, Registration No. 1,623,976 for health and medical employment agency services (collectively the "Express Marks").
Our client adopted and has continually used the Express Marks for nearly twenty years. Through continuous, exclusive and proper use, the Express Marks have become well established and widely recognized.
We actively police and protect our client's trademark rights and, where appropriate, we challenge entities who register or use marks (such as trade names or domain names) that are confusingly similar to the Express Marks. It has come to our attention that you are the registrant for the domain name JobSearchExpress.com (the "Domain Name"). The Domain Name is composed of three terms - "job", "search" and "express". The terms "job" and "search" are generic terms. The term "express" as it relates to employment services is distinctive and specifically relates to services provided by our client and its franchisees.
Your registration and use of a domain name relating to employment services which incorporates our client's distinctive term "express" and the generic terms "job" and "board" conflicts with our client's trademark rights. See Space Imaging LLC v. Brownwell, AF 0298 (eResolution Sept. 22, 2000); Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000); Travel In A Moment, Inc. v. F.S. Janco, FA 96821 (Nat. Arb. Forum Apr. 9, 2001); Fisons Horticulture, Inc. v. Vigoro Industries, Inc., 30 F.3d 466, 477 (3d. Cir. 1994) (finding that the domain name is confusingly similar to Complainant's mark because it is comprised of Complainant's famous mark and a generic term that relates to Complainant's business). Consumers will mistakenly associate the Domain Name and any website(s) thereunder with Express, and will falsely conclude that the employment related services that you provides or may provide in the future are offered in conjunction with, sponsored by, or otherwise endorsed or authorized by Express.
Our client is very concerned that your registration and use of the Domain Name is deceptive, disconcerting and misleading and will likely cause confusion when encountered by consumers. Furthermore, your registration and use dilutes the distinctiveness of the Express Marks and tarnishes the affirmative associations conveyed thereby, all of which constitute infringement and dilution in violation of applicable federal and state statutes and common law prohibitions against unfair competition, including the provisions of the Anticybersquatting Consumer Protection Act ("ACPA") and the Uniform Domain Name Dispute Resolution Policy ("UDRP").
Although we find your registration of the Domain Name unacceptable, it is our desire to seek an amicable resolution. We must therefore insist that you transfer the Domain Name to Express and agree not to register or use any other domain names that conflict with rights of Express.
We request your response with regards to this matter no later than January 31, 2003 so that we may advise our client accordingly. Nothing contained herein is intended to be or should be construed as a waiver or relinquishment of any such rights, remedies or entitlements.
Please help
What is the name of your state? Australia
I have a registered domain name, 'jobsearchexpress.com', that I run from Australia and it is a service that will only be available to people in Australia.
Just yesterday I received an email from an attorney from the US saying I am breaching trademark law because their client has trademarked the term "Express" in relation to employment services in the US.
This is a copy of the email and do they have a case?
Our firm is trademark counsel for Express Franchise Services, L.P. ("Express"), a franchisor for the operation of a personnel services business, which includes temporary help, full-time employment, professional search and contract staffing business. An Express franchisee operates a personnel services business which provides temporary employment service, full-time employment service and a professional staffing business which includes contract staffing and executive search.
Express is the owner of numerous federal trademark registrations in class 35 including, among others:
· EXPRESS, Registration No. 1,647,022 for temporary help and employment agency services; · EXPRESS PERSONNEL SERVICE and Design, Registration No. 1,708,586 for employment agency services; · EXPRESS TEMPORARY SERVICE and Design, Registration No. 1,718,629 for temporary help and employment agency services;
· EXPRESS STAFFING SERVICES and Design, Registration No. 1,946,030 for employment staffing services; · EXPRESS HUMAN RESOURCES and Design, Registration No. 2,124,198 for employee leasing and personnel recruiting;
· EXPRESS MANAGEMENT SERVICES and Design, Registration No. 2,225,130 for administrative personnel and recruitment as well as permanent and temporary employment agency services;
· EXPRESS PROFESSIONAL STAFFING, Registration No. 2,530,726 for temporary and permanent employee placement services; and · EXPRESS HEALTH SERVICE and Design, Registration No. 1,623,976 for health and medical employment agency services (collectively the "Express Marks").
Our client adopted and has continually used the Express Marks for nearly twenty years. Through continuous, exclusive and proper use, the Express Marks have become well established and widely recognized.
We actively police and protect our client's trademark rights and, where appropriate, we challenge entities who register or use marks (such as trade names or domain names) that are confusingly similar to the Express Marks. It has come to our attention that you are the registrant for the domain name JobSearchExpress.com (the "Domain Name"). The Domain Name is composed of three terms - "job", "search" and "express". The terms "job" and "search" are generic terms. The term "express" as it relates to employment services is distinctive and specifically relates to services provided by our client and its franchisees.
Your registration and use of a domain name relating to employment services which incorporates our client's distinctive term "express" and the generic terms "job" and "board" conflicts with our client's trademark rights. See Space Imaging LLC v. Brownwell, AF 0298 (eResolution Sept. 22, 2000); Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000); Travel In A Moment, Inc. v. F.S. Janco, FA 96821 (Nat. Arb. Forum Apr. 9, 2001); Fisons Horticulture, Inc. v. Vigoro Industries, Inc., 30 F.3d 466, 477 (3d. Cir. 1994) (finding that the domain name is confusingly similar to Complainant's mark because it is comprised of Complainant's famous mark and a generic term that relates to Complainant's business). Consumers will mistakenly associate the Domain Name and any website(s) thereunder with Express, and will falsely conclude that the employment related services that you provides or may provide in the future are offered in conjunction with, sponsored by, or otherwise endorsed or authorized by Express.
Our client is very concerned that your registration and use of the Domain Name is deceptive, disconcerting and misleading and will likely cause confusion when encountered by consumers. Furthermore, your registration and use dilutes the distinctiveness of the Express Marks and tarnishes the affirmative associations conveyed thereby, all of which constitute infringement and dilution in violation of applicable federal and state statutes and common law prohibitions against unfair competition, including the provisions of the Anticybersquatting Consumer Protection Act ("ACPA") and the Uniform Domain Name Dispute Resolution Policy ("UDRP").
Although we find your registration of the Domain Name unacceptable, it is our desire to seek an amicable resolution. We must therefore insist that you transfer the Domain Name to Express and agree not to register or use any other domain names that conflict with rights of Express.
We request your response with regards to this matter no later than January 31, 2003 so that we may advise our client accordingly. Nothing contained herein is intended to be or should be construed as a waiver or relinquishment of any such rights, remedies or entitlements.
Please help
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