Need Advice

What is the name of your state? pa

I have a website with the string lordoftherings in its domain name. New Line is currently trying to take the a huge list of domain names with lordoftherings in them, including mine. I did not buy the name to squat or mislead ppl....it is exactly what it says it is in the domain name and has grown to a thriving resource and community. I called the U.S. patent and trademarks office and they told me that New Line can only claim one domain in their trademark. How can they be doing this?

They also say that I am selling merchandise without the approval, authorization, or endorsement of New Line, which is just completely untrue. I sell no products on the site at all, I do however link directly to New Line for products because I was approved for their affiliate program and they provide me with code to do it.....isn't that authorized?

I called their attorney that contacted me, but she was little help (siding heavily with New Line). I would post the url for the site and the fury that is starting in the forums, but don't want to spam your board. Please let me know what you guys think...thank you

P.S. I have the letter online that they sent me, if you want me to post the addy.

Unfortunately, you are probably in a tough position. You are right, that if you purchased the domain with the bonafide intent to use it for your own purposes, and are not attempting to "squat" on the name, then you would not be running afoul of the cybersquatting laws.

HOWEVER -- and this is a big HOWEVER -- the provisions in the anticybersquatting laws that protect a bonafide purchaser of a domain name do not apply if the trademark holder can show that you are using their trademark to drive traffic to your site, especially if you are in the same or similar industry or space as they are. If you had a lord of the rings site, and you were a jewelry store, for example, they would have a harder time making a case than if you are selling LOTR action figures. But, since you are running what is apparently a fan site, they could make a good case that you chose that name to "confuse" the surfer into thinking that you are a New Line authorized site.

Did you purchase the domain name PRIOR to New Line registering the trademark? If so, your case is marginally stronger. If not, you are almost certainly doomed.

The USPTO is right, of course -- they can only register one domain name with each trademark registration -- but a domain doesn't have to be identical to the trademarked name in order for infringement to exist -- only a "likelihood of confusion" is necessary.

So, whether or not you would be found by ICANN to be squatting, or by a court to be infringing, is based on a whole lot of facts. You are very likely going to have an uphill battle if you want to keep your name. A very uphill battle.

And this brings us back to reality -- if New Line decides to pursue this, how much money are you willing to spend to retain your domain name? A lawyer is probably going to want a significant retainer up front. And you still might lose your name.

I realize that all you want to do is run a fan site, and it would seem that the more sites were out there, the more interest there would be in the movies, and the more money New Line would make. But none of that matters; they are the trademark holder, and they can defend their trademark as they want, even if it means alienating their fan base.

weeee

Thank you for the reply Divgradcurl.

I understand all that, but what New Line is doing is trying to take ALL the domain names online with the string lordoftherings in it. How can they justify that? I called the U.S. patent and trademark office and they basically told me New Line couldn't do that. I talked to New Lines lawyer on the phone today and she told me that she was looking at a huge list of domains that New Line is trying to take currently solely because they have "lordoftherings" in the domain somewhere. So how can they be doing it?

You may remove this if you like but i have to post the domain because it is relative to the discussion. lordoftheringsrisk.com is my domain, which is a resource and community for a board game that Hasbro makes called "Risk: The Lord of the Rings Conquest Game"

Here is a link to the letter they sent me if you want to read it..... http://lordoftheringsrisk.com/images/bs.gif

Sorry for the spam...erase it if you like

How can they justify that?

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Well, they don't rely have to justify that. If they own the trademark "Lord of the Rings" then they can make a pretty good argument that anything with that string in the title is using their "goodwill" to drive traffic to the particular site. In other words, if I had a site called "hasbroslordoftheringsrisk.com" then both New Line AND Hasbro would probably be after me. As long as there is the risk that the domain name will "confuse" the websurfer into thinking the site is run by or authorized by the trademark holder, the trademark holder will likely come after the domain owner.

As far as the selling stuff goes, it may be that the way you have the New Line stuff linked into your site doesn't make it clear that you have switched sites, but instead appears that you are selling stuff directly.

Here's the thing: Trademark law is really based on confusion. The purpose of trademark is that a company can invest time and money into a symbol or mark that identifies the company. When you see a "swoosh" mark, you think Nike. That kind of thing. So, when you are shopping, if you see a swoosh, you know that it is a Nike shoe, and can (in principle, at least) assume certain things about the quality, fit, etc. In exchange for that investment, trademark law now allows Nike to keep any other shoe maker or apparel maker from putting that swoosh on their products -- if they couldn't, then the consumer wouldn't know if a particular shoe with a swoosh on it is up to Nike standards or not. This confusion is what trademark law is designed to prevent.

So, since New Line owns the LOTR trademark, they want to keep anyone else from using it; maybe they don't want websites with crappy workmanship making them look bad. In fact, they HAVE to keep others from using it, if they want to keep their mark. The way trademark works in the U.S., if a trademark holder is sloppy in protecting his mark, he can lose the protections for the mark. That's why you see McDonalds going after kids running lemonade stands, Microsoft going after Mike Rowe's software company, and why New Line is coming after you.

Hasbro probably purchased a license to use the LOTR stuff from New Line, which is why they can get away with it.

Again, you could try to fight it, but it's going to cost a lot of money. You could stop by and talk with a local attorney who has experience in trademark and see what he or she has to say.

Thank You again

The links from my site clearly go to New Line Cinema's site. As far as confusing our site with the official Lord of the Rings site or something, there's really no chance of that, but it's not the issue anyway. New Line's lawyer told me they didn't care about the site, it was just the domain name. She said it could even be the same site with just a different name.

That said, we are talking solely about the domain. I said to her that there is an infinate number of possible domain names with lordoftherings in them. She said "I know, i'm looking at that list now"...lol

so they are basically taking every name with lordoftherings in it...is this not a precident?

What if I were to buy lordoftheringsrisk.org? could they take that as well?

What if I were to buy lordoftheringsrisk.org? could they take that as well?

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Most likely. Maybe you could ask New Line if there is something that would work for you and is acceptable to them -- if they say okay, get it in writing! Good luck.

That was actually the decision I came up with myself Div Thank You

I don't know if fighting New Line can be an option for me....even though what they are doing is WRONG!

How much do you think it would cost them to actually take everyone to court that has a lordoftherings name? lol

How much do you think it would cost them to actually take everyone to court that has a lordoftherings name? lol

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Probably not as much as you think. For one thing, they may not even have to go to court at all -- they can work through ICANN to get the domain transferred without court, if they do have the rights to it. If they have a registered trademark, ICANN will almost certainly side with them...

Writer, I would change your domain name. New Line has more power and money than you to fight this. Unless you have the power of the ring my pretty.