4 letter domain - received "Trademark Infringement Notice"

[broke-r]

My worst nightmare has come true!

I regged a 4 letter domain two months ago (a name that has great potential imo) and parked it at Sedo WITH an asking price.

Last Friday I received an email from the legal dept. of a huge company (they have also attached a report from a well known trademark ...monitor agency, with my contact details, date and time of registration, etc.) saying that my domain infringes one of their trademarked products and that I have to transfer the domain to them or else they will follow all legal procedures required to secure their brand. They also say that I'm using the domain in bad faith because I have put it up for sale and that they have also sent me a "Trademark Infringement Letter" by regular mail.

I visited their website and they have a product, consisted of two words, where the second word is the name of my domain, followed by the TM (trademark) symbol. Next thing I did was to visit uspto.gov and search their database-the name is indeed trademarked as a word combo (their tm'ed product) as well as a single word (with a LIVE status), ages ago.

So, what am I supposed to do now?

First of all, I wasn't aware of that company or product before. I regged that name for myself like everyone else is doing lately with four letter domains. I had no plans to develop it and that's why I parked it at Sedo-if I had an interesting offer I would sell it though, that's for sure! :hehe: Also, the keyword I used for the parked page had nothing to do with that company or product-I used a generic one: "domain name".

I spent all weekend talking with friends, but I'm not sure how to respond to them. From what I understand they will follow the ICANN domain dispute route, as I don't live in the States. But again, what should I claim to ICANN? I don't want to lose this domain! It's one of my best 4 letter domains and I can get $x,xxx for it from the the right end user!

Any ideas guys? :notme:

 

[acronym007]

It's hard to know without knowing the name but if it is indeed a product then I would turn it over because imo your going to lose it. If it's up at Sedo, bad faith is evident without much research. It doesn't matter legally whether you knew of the product or service. All that matters is that it does exist. How do suppose you can keep it if your trying to sell it? Your in a tight spot, ask a domain attorney but if you don't going without a lawyer I would simply give it up from the sounds of things in this post you don't have much choice. I have lost 3 domains but I never fought them I just gave up the domains.

 

[vaunter]

Don´t be afraid to negotiate. Be polite, but direct. None of their perception is equal to reality, and you know it. Answer that you intended the name (example) ZCFK.com thinking on "Zero Chocolates From Kamtchatka" and you are open to offers.

Try to investigate how much does a WIPO procedure costs... from other domainers I heard is about 2k euros (3k usd) but I´m not too shure about it.
So you can play the pragmatic game and tell them: the bad way will cost you 3k usd, the "win-win" alternative is that they pay you 2k usd and the name this week with them. Negotiate with a lawyer, not with the firm. A lawyer is easier to acept from you 500usd (outside of the water) and get the 2k from the company, so you profit anyway.

If they refuse, send them to hell and benefit from "scandal" and increase your domainer rank or your other domains popularity.

You have nothing to lose, fight! Don´t give up the name... learn to negotiate and if you lose, no problem, experience costs.

Good luck!

 

[buymynames]

Welcome to the club and congrats to your C&D...

Lawyer's job is to intimidate, but don't fall for this. Just treat these guys like any other inquiries and get at least $500 from it. Just be nice and talk about your cost, time, etc..

My last C&D was settled at $2k... So, heads up and goodluck!

 

[acronym007]

Cybersquatter = Cybersquatting, according to the United States federal law known as the Anticybersquatting Consumer Protection Act, is registering, trafficking in, or using a domain name with bad-faith intent to profit from the goodwill of a trademark belonging to someone else. The cybersquatter then offers to sell the domain to the person or company who owns a trademark contained within the name at an inflated price

Fight, for what? You have allot to lose if you lose.

Under UDRP policy, successful complainants can have the names deleted or transferred to their ownership (which means paying regular renewal fees on all the names or risk them being registered by someone else). Under the ACPA (Anticybersquatting Consumer Protection Act) a cybersquatter can be held liable for actual damages or statutory damages in the amount of a maximum of $100,000 for each name found to be in violation.

Some people in this thread are telling you or suggesting you to cybersquat and try to sell the name to the trademark owner. That's bad news and more evidence against you if this issue proceeds to a UDRP or court. I'm not trying to scare just be warned your playing a losing game. I wish you the best and it's possible you could get something from someone but don't think it's an automatic victory.

 

[AdoptableDomains]

If they refuse, send them to hell and benefit from "scandal" and increase your domainer rank or your other domains popularity.

...and have a permanent record of a WIPO or UDRP that can be used against you in the future as well as all the links proving it. That only works if you have a legitimate right to the name. your rank as a domainer has nothing to do with how many UDRP's you've lost or had filed. Actually, I think it's quite the opposite.

You have nothing to lose, fight!

How do you know what he has to lose?. If they fight tough, you can lose all your assets and end up in bankruptcy. Not to mention your reputation.

Don´t give up the name... learn to negotiate and if you lose, no problem, experience costs.

losing the domain is one thing. Losing your reputation and integrity is quite another. Nothing wrong with negotiation, as long as you know where to stop. It's a lot like the old song lyrics "You gotta know when to hold 'em, and know when to fold 'em."

If vaunter takes his own advice, he won't last long in this business.

and congrats to your C&D...

??? ???

 

[labrocca]

Link removed.

hehe.I sure wish we could post images on this site.

Just take it slow sir.

 

[PowerUp]

http://www.intertwingly.net/slides/2005/images/DP.jpg

hehe.I sure wish we could post images on this site.

Just take it slow sir.

What's this link about? It requires a password to proceed.

 

[broke-r]

Guys, many thanks for your kind words and advice! :tu:

I have spoken to a lawyer who instructed me to stop posting about this case on a public forum until we see how it ends up (that's why I have partly edited my first post).

I'll let you know what happens. That's a promise. Many thanks again! Rep added!

 

[labrocca]

http://www.intertwingly.net/slides/2005/etcon/7.html

Try that link. For some reason they added protection for the image.

 

[Ronald Regging]

Parking alone doesn't constitute bad faith. If the keywords were completely unrelated to the product they sell, then they would have to prove exactly how it was infringing on their TM when it had nothing to do with their TM...

 

[Kate]

Also a 4-letter domain could simply be an acronym for something else. Obviously we don't know the name and what the OP had in mind when he registered the domain

 

[DNQuest.com]

Also a 4-letter domain could simply be an acronym for something else. Obviously we don't know the name and what the OP had in mind when he registered the domain

But we know exaclty what he is doing with it, and cchances are pretty good competing ads are on the site. What was that phrase I always hear about?? oh, USAGE USAGE USAGE. His intent was to monetonize the domain and offer it for sale, since, like, that is what he is actually doing. So it can be reasonably determined that his intent was to profit from the doamin. I sthe alleged TM holder can prove thier rights, show he has not earned any rights to the name (parking page witha a for sale will not generate rights to a name), and show bad faith, they might have a case.

 

[Domagon]

1. Take off the parking page - point it your homepage or whatever instead.

2. Contact an attorney who specializes in domain name related issues who has a solid history of successfully handling UDRPs ...

... and knows to ask for a 3 person panel, and furthermore knows a lot about the various panalists that one can choose from.

3. Get ready to spend at least $3K USD to get started ... and be prepared to play hardball - likely they are try to intimidate you because, based on the limited information you provided, they likely have a weak claim, if any at all.

My company owns some generic domains that also happen to match existing trademarks - it's a common situation. TM rights are not absolute ... one has to be prepared to fight it out and/or work out mutually acceptable settlement in such situations.

Rambling on - bottom line is don't let them steamroll over you - they likely have a very weak case, if any at all, based on the info you provided - don't be intimidated.

Good luck and keep us updated.

Ron

 

[Peter]

1. Take off the parking page - point it your homepage or whatever instead.

That will do absolutely no good what so ever. If the companies lawyers are any good (or the trademark protection company) they will have kept screenshots and copies of what the address pointed to in the first place. By moving it and playing around you are potentially giving evidence to them in their wipo.

3. Get ready to spend at least $3K USD to get started ... and be prepared to play hardball - likely they are try to intimidate you because, based on the limited information you provided, they likely have a weak claim, if any at all.

My company owns some generic domains that also happen to match existing trademarks - it's a common situation. TM rights are not absolute ... one has to be prepared to fight it out and/or work out mutually acceptable settlement in such situations.

Why do they have a weak claim? he has admitted that the domain forms part of the companies product name which is trademarked. The fact he has it on a parking page with an offer of sale on it demonstrates that he has no legitimate use for it at the moment and is trying to monetize the domain.

 

[Domagon]

From all indications, a UDRP challange hasn't been filed yet - thus taking off the parking page may make the difference in forestalling a UDRP challenge...

On a related note, he could likely legitimately claim he typically defaults new registrations / acquisitions to parking as a placeholder / gather stats, etc ... or was setup that way and he wasn't aware of it until he received the C&D letter.

TM rights are not absolute. And furthermore, in this instance, the OP says the 4-letter domain, which itself could likely be considered by many as also an acronym, only matches the second half of the company's, presumably generic, two word mark ... sounds like a weak claim to me.

Ron

 

[Kate]

That will do absolutely no good what so ever. If the companies lawyers are any good (or the trademark protection company) they will have kept screenshots and copies of what the address pointed to in the first place. By moving it and playing around you are potentially giving evidence to them in their wipo.

This could also be viewed as a 'good faith' gesture (you acknowledge they might have a case).

Why do they have a weak claim? he has admitted that the domain forms part of the companies product name which is trademarked. The fact he has it on a parking page with an offer of sale on it demonstrates that he has no legitimate use for it at the moment and is trying to monetize the domain.

If I read this right it's the second word that matches a TM name and he was not aware of that TM until he was contacted.
It does not mean it's confusingly similar and of course a lot depends on usage.
We don't have enough info to be sure but they could have a weak case.

The mere fact that the domain is parked for sale is not evidence of bad faith, or that he has no legitimate rights. Domain trading and monetization is a legitimate activity and that is acknowledged by WIPO.

 

[vaunter]

I think he said he doesn´t live in the US...

and

Cybersquatter = Cybersquatting, according to the United States federal law...

so

Am I still wrong?

Or is it good to negotiate based on the amount of the trademark holder would expend (administrative costs of claiming the name) trying to get the name?

 

[DNQuest.com]

I think he said he doesn´t live in the US...

and

Cybersquatter = Cybersquatting, according to the United States federal law...

so

Am I still wrong?

Or is it good to negotiate based on the amount of the trademark holder would expend (administrative costs of claiming the name) trying to get the name?

That is how squatters tend to think, just food for thought.

Just hope they don't come back via an ACPA, then the real fun begins. Though it was not an ACPA, but an asset seizure from an award from a civil court, bodog.com lost thier domain name because it was concidered an asset that resided on US soil. So if someone doesn't live in this country, but has domains on US soil, they could all be at risk.

Sometimes it is better to live and learn than to possibly be penniless.

 

[vaunter]

What´s an ACPA?