Just got a threatening letter from a law firm regarding trademark infringemen domain

[MMC47]

Hi,

I have recently received a letter from a law firm threatening legal action if I do not transfer a domain name I have to them as they have a trademark for the word I registered. The company is very popular and well known all over the world.

I registered the domain name when I seen it was available as a memorable word that I could use to connect to my own servers. I thought it would be cool to have my servers named different things and one of them uses this domain name. The server in question is used only by me and never used or advertised to the public.

I am wondering if they have a case of infringement since I am only using the domain name for personal use and not trying to piggy back off their trademark ie - no "bad faith". There is no public access to my server and you will not even get a response if you visit the address as the firewall only allows white-listed IP addresses.

Do I have to hand over the domain name? In retrospect it was stupid to register it, I should've known they would come knocking. If they had've asked me nicely I would have given it to them if they wanted it so badly, but now that they have come along threatening me in the first communication I received from them - I don't want to back down.

 

[Zigner]

Hi,

I have recently received a letter from a law firm threatening legal action if I do not transfer a domain name I have to them as they have a trademark for the word I registered. The company is very popular and well known all over the world.

I registered the domain name when I seen it was available as a memorable word that I could use to connect to my own servers. I thought it would be cool to have my servers named different things and one of them uses this domain name. The server in question is used only by me and never used or advertised to the public.

I am wondering if they have a case of infringement since I am only using the domain name for personal use and not trying to piggy back off their trademark ie - no "bad faith". There is no public access to my server and you will not even get a response if you visit the address as the firewall only allows white-listed IP addresses.

Do I have to hand over the domain name? In retrospect it was stupid to register it, I should've known they would come knocking. If they had've asked me nicely I would have given it to them if they wanted it so badly, but now that they have come along threatening me in the first communication I received from them - I don't want to back down.

What US state are you in, MMC47?

 

[MMC47]

What US state are you in, MMC47?

I'm in Illinois

 

[FlyingRon]

If they already had a trademark or company name, you'll probably lose. Even though you didn't register the name with the intent to sell it to them, the UDRP procedure is not ruled by any sane legal procedure. If they decide to invest the few thousand in the arbitration, you'll probably lose it unless you can document some bonafide use for it.

 

[quincy]

Hi,

I have recently received a letter from a law firm threatening legal action if I do not transfer a domain name I have to them as they have a trademark for the word I registered. The company is very popular and well known all over the world.

I registered the domain name when I seen it was available as a memorable word that I could use to connect to my own servers. I thought it would be cool to have my servers named different things and one of them uses this domain name. The server in question is used only by me and never used or advertised to the public.

I am wondering if they have a case of infringement since I am only using the domain name for personal use and not trying to piggy back off their trademark ie - no "bad faith". There is no public access to my server and you will not even get a response if you visit the address as the firewall only allows white-listed IP addresses.

Do I have to hand over the domain name? In retrospect it was stupid to register it, I should've known they would come knocking. If they had've asked me nicely I would have given it to them if they wanted it so badly, but now that they have come along threatening me in the first communication I received from them - I don't want to back down.

If you registered the domain name knowing it used the name of a famous trademark, you are right that you should have expected the company "to come knocking."

It will probably be best for you to respond to the company and, with little to lose, request payment for the costs you have expended on the domain name ONLY (i.e, your annual domain name fees) but do NOT try to sell the domain name for more than this to profit off the name. You can consult with an IP attorney in your area to better determine the best action to take.

Your rights to the domain name will be terminated more than likely anyway, under trademark law principles (infringement), possibly for cybersquatting, or possibly for dilution of the value of the famous mark - all depending on the specific facts of your purchase and use of the domain name.

Good luck.

 

[STEPHAN]

What TLD is it? Is it a descriptive term?

 

[quincy]

What TLD is it? Is it a descriptive term?

The top level domain (the "TLD") is typically the last part of a domain name (the .com, .org, .edu). While a trademark can potentially contain as part of their trademark the TLD, it would not be a descriptive term.

Also, even if the trademark itself is a descriptive one, if it is a well-known or famous mark (which it would need to be to qualify for federal registration), the holder of the well-known mark can prevent all others from using a domain name that contains their name.

Consumer confusion can be presumed when someone tries to use another's famous mark.

 

[STEPHAN]

Quincy I am a domain pro.

These were 2 unrelated questions.

I wanted to know what TLD this is, as some TLDs have quite different rules.

 

[quincy]

Quincy I am a domain pro.

These were 2 unrelated questions.

I wanted to know what TLD this is, as some TLDs have quite different rules.

Ah. There seem to be a lot of domain pros on this forum. Nice.

The TLD will not make a difference in the trademark question asked by MMC47 if the trademark in question is a famous one, though, as indicated by MMC47 that it is.

Nor will the fact that the domain name is descriptive make a difference, if the descriptive trademark has developed a secondary meaning that allowed for it to be federally registered.

I guess I don't know where you are headed with your two unrelated questions. Are you perhaps thinking the company is a foreign one or the domain name held by MMC47 has a country code serving as a TLD?

 

[quincy]

UDRP applies equally to all the "generic" (i.e., not country specific and not .gov, .mil, and .edu) TLDs.

As Quincy points out you have UDRP issues and you have trademark issues. They are governed by completely different sets of laws and principals.

A domain name isn't necessarily a trademark. It might be or it might include one. For example "match.com" is a trademark. Apple has Apple.com but "Apple" is the trademark.
Given the namespace issue, there are many companies that may have trademarks that appear the same company name, trademarks, or domains in different spheres.

I have for example had a company called Sensor Systems that was established in 1993 and we have used that trademark in addition to our corporate name. I registered "sensor.com" back when nobody much knew anything about the internet and have maintained it since. There are a half a dozen other companies called Sensor Systems. The closest that comes is one with that name in California. They sell GPS antennas which is somewhat remotely related to our geospatial computing business. Every once and a while I get a price quote for an antenna and redirect the customer.

I have a friend whose initials were MTD (his name Michael T. Donnelly). He lost that domain to MTD Yard Machines. Note that he was in a similar situation to yours I think.

Another one with more ups and downs and full of information for you is http://www.nissan.com/Lawsuit/The_Story.php You will note he spent over half a million dollars defending himself against Nissan Motors and even though partially awarded fees (less than 2%), Nissan didn't pay.

It is often smartest to turn over the domain name to the company holding the famous trademark. The odds are stacked in favor of the trademark-holder, and any battle over the name (especially if it is just being held in reserve for use later) can be an awfully costly one.

That said, if someone has a real attachment to a domain name and believe they had good reason to purchase it and have a good reason to keep it, the pros and cons of turning it over without a fight can be personally reviewed by an IP attorney. In the situation described here, the domain name was purchased knowing it contained a famous trademark. I am not sure there is much worth discussing (based strictly on what has been posted so far).

Nice information, FlyingRon.

 

[MMC47]

Thanks for the help everyone.

I think I will just transfer the domain name to them like they asked.

 

[quincy]

Thanks for the help everyone.

I think I will just transfer the domain name to them like they asked.

I think that is smart - but it won't hurt for you to ask for your costs (annual fees). They can always say no but they might say yes.

Good luck.

 

[STEPHAN]

Make sure you make an agreement that they drop everything else once the domain is transferred.

 

[quincy]

Make sure you make an agreement that they drop everything else once the domain is transferred.

Drop their threats if the domain name isn't turned over?

You know, STEPHAN, your comments are often more puzzling to me than the questions the posters ask.

 

[STEPHAN]

If he just transfers the domain, he can still have claims against him from the infringement.

So, if he is willing to transfer the domain, make an agreement that this ends the case completely.