Fair Use Letter
domainMarket said:
Nope, sure didn't. But just because I didn't do that how do they have any right to take over a domain I got fair and square and paid money for? They solely could have saw that the domain was for sale based their name on that then come after it. I am going to go for it anyway. I was just wondering if anyone had any good ideas on how verbiage to diffuse the situation yet put myself in the position to sell the domain as well- that was all. I wouldn't want to start a TM debate in this post.
I've seen this happen three times, and have made a different response each time. Once, I had a good case for having my own fair use. Once, I had no case at all, if it came to a legal process. And once, their claim was questionable but so was mine. Each time, I wrote a very different kind of response. I'll go find the three responses, and then post them here.
In any case, the problem is that defending against a lawsuit (even against a meritless lawsuit) costs more than the names are worth. So the initial response to the challenge is very important, even when you are in the right. You want to make the OTHER side WANT to be nice to you in any case.
---J.
Here's the first of my three very different situations. The registrant's name and the domain name have been changed:
Hi Jordan:
I got this email late today.
Looks like I registered a domain which is trademarked?
I registered “OilPaintingSupplies.com”. I just thought it was a good combination of generic words.
Their stock sells over the counter @.13cents a share.
If it is so important to them, why didn’t they register it way back when!
Have you ever gone through something like this?
How would you handle it?
Any chance of making a few dollars or should I just transfer the domain?
Thanks for any help you might provide.
---Harry
--------------------------------------------------
Here's the letter "Harry" got, including the text on the masthead of the letterhead:
Oil Painting Supplies, Inc. (OTCBB:"OPSI")
www.OilPaintPro®.com
Extrusion Engineering & Artistic Technology Partnerships...by "OPSI"
DATE_REMOVED, 2006
Mr. HARRY
[email protected]
Dear Mr. HARRY:
It has come to my attention by my internet hosting company that you registered oilpaintingsupplies.com as a domain today.
Our Company has traded under this name and has treated this as a trademark for eleven (11) years and we consider your use of this name to be a serious federal trademark infringement.
Therefore I demand that you immediately relinquish this domain to my registrar who will be in touch with you by email.
Your immediate action may prevent legal action against you.
Sincerely,
Here's what I wrote to "Harry":
I can't give legal advice, and anything you do is your sole decision and responsibility. If it were me, I would send a polite reply saying that:
I was heretorfore unware of your existence specifically, and also was unaware of anyone's use of those words in any business except as a generic descriptive term, which is what I understood the phrase to be when I registered the phrase, and which is how I understand these words and feel most others would understand them. I'm also surprised to hear any business claim that it has been around for eleven years but has never registered its own name, despite having an internet presence, and that at a different domain name (OilPaintPro.com). "OilPaintPro" is, of course, quite distinctive, memorable, and brandable.
Nevertheless, I am just starting out planning my business, have not invested much in infrastructure dependent on my choice of name, so I can easily choose another name for my small enterprise.
Harry, you should be aware that if your sole intent in registering the name was to sell it to someone, either to them or to anybody else who is in their same line of business, you don't have a prayer of winning any legal battle. It's not enough that the words are generic (which they are). You would also have to prove a legitimate use for them that had nothing to do with that company's field, for otherwise "your" trademark is sufficiently confusing with theirs. (For example, if the generic phrase had a meaning in two completely different fields you might have a chance.)
So all you are trying to do is to save face, to NOT appear to have been a cyber-squatter, so that they will WANT to sympathize and help you; by paying you something for your trouble in having to invest time to find a new domain name for your planned sole proprietorship business.
You don't have to admit that they would win at law. Instead:
I want to help both of us avoid frustrating, time-consuming, and costly adversarial processes, with an outcome that can never be 100% certain; and so I am willing to seek an mutually acceptible solution. I propose transferring the name to you in return for $250, so we can put this behind us and get on with more productive activities.
Harry, there is some cost to them to even file a suit, and your asking price is WAY WAY WAY below that. On the other hand if they sue and win, you'll likely have to pay them back all their recovery costs. On the other hand, no legal process is ever a 100% sure thing, and they ought to have better things to to with their precious time and attention than to sue you just to save $250. Other other hand, that depends on their not WANTING to screw you to make an example. That's why you have to approach them so that they will LIKE you and WANT to do the easy thing, and not feel like they have been raped by a cybersquatter. You have to be a legit person with a use for it, but readiness to find a better name for your planned business.
Good luck in whatever you decide. I accept no responsibility for decisions and action and their consequences. Your temperment, comfort with legal processes, ability to sustain the costs of a defense and even of a loss, and persuasive abilities, may all differ from mine; and your judgement of what to do is solely your own. I am trying to be helpful, but you have no recourse to me for any undesired result. Good luck.
---J.