Just because you get a cease and desist letter means nothing if you can prove you have or had no bad faith intent.
I am 2 out of 3 with the BIG boys because I did my home work many years back and up to this past August. I will provide some details but per NDF it will be limited and I'm only putting the names in parts no ext.
I had the all star game, I proved to the plaintiff by taking my time, studying what they said and coming up with and Idea that I had the right to own this. I figured that coming after me would mean going after others that use their "claim" SM. (they claimed a service mark) I then proceeded to offer it to other companies (plural) for free, and they each said they would back any challenge by plaintiff. I then told the Plaintiff that they would have to proceed and that others would stand to the claim they have no exclusive rights. Result- (Plaintiff drop case Won & Sold under NDF )
I had A O L Always, used for (All Our Lives Always) that did not fly and I blame past forum post offering it for sale years before, saying it would be a great domain for A O L, they would come knocking, lol I was young and dumb during those post... They threatened and I said bring it,(thinking I knew it all) they then sent me (within 3 days) 200 docs showing I had bad faith intent. From forums, auction sites ect... Things I had forgot I had done. Result-( LOST, but I was paid for all reged years for not fighting...I had many mistakes, the fight would have been to big for the worth.)
Know this, (I learned many years ago the hard way) anytime you post a domain on a forum it goes all over the net, so when selling on NP spell dot com or dot net ect.... and separate the words if more than one. It will not track google ect as well as when you put in the full domain name.
Antiques Mall of America well, you know who this is, MOA came after me this past August, saying I was using their likeness to confuse and send a 3 page cease and desist.
Now equipped with 26 years of experience in this business, I knew how to deal with this and win. I sent a reply via email to everyone on the email, they sent ( they CCd 4 company lawyers and heads).
In short I sent this:
MOA
We noticed you had the domain a few years and let it drop after 8 emails were sent to renew and a redemption email. You still proceeded to let this drop, now that I have picked it up you are asking for me to forward it to you due to the similarity of your said business.
1st. I am informing you that we will not release the domain to you.
2nd. We will argue that we have no bad faith intent.
3rd. You sell retain this is secondary and antiques
4th. If you cared, Antique(S) Mall of America is still available and you have not ever purchased that. (after a month of giving them a chance to buy it, they did not, we did)
5th. If you feel like this is an infringement of your name, why is it that in Las Vegas NV a company in good standing with the state has been in business since 2006.
To clarify, our stand is, we have done nothing to affect your business or hurt the reputation or confuse the consumer that this business name is the same as yours. Antique vs Retail.
Result-Case resolved with no further action.
My point is this, because they are big or send a cease and desist does not mean you have to cave, think it through and make your decision. I would have said I will give to you for the reg fees paid.
99% of the time that's acceptable.
Cheers!
PS. I don`t and never have bought TM domains to try to win a case, its just best to avoid them.
Can you PM name?