Asked for assurance that “you won’t infringe again”

[Rebies]

We have a domain I marginally believe is trademarked. Let’s call the trademark “XXL” (out of pure randomness.) We own XXLweb.com and get a legal letter from their representing law firm.

We have no issue transferring this domain to the company that claims trademark ownership. The domain really means little to us. However, the law firm also wants us to agree to no use the name / mark in the future. Sure, we’ll try to not use this mark in the future, but the last thing we’re going to do is sign anything saying we’ll agree to never buy a domain with “XXL” in it again. That’s just plain stupid on our part.

So how do you handle this? Do you ignore this part of the request? I feel legally responsible to put something in the response like “We however can not agree to not purchase any domain in the future that your client might believe is similar. We will take our own precautions to stop this from happening and will in our best efforts try to avoid such issues in the future, but can offer no legal guarantee as I’m sure you can understand.”

Is that calling for more action? I’m not going to sign anything – that is for sure! But at the end of the day I rather transfer the domain to them without any UDRP issues on such an insignificant domain. Or is it just better to reply "sure, here is the domain", but not even acknowledge the request for “future assurances”?

 

[labrocca]

That's common language. And imho it's not a problem. It's either you believe you are infringing or you are not. If you believe you are (and they do too) then why wouldn't you agree to stop the activity and future activity as well.

 

[Rebies]

We have many different purchasing methods, and I won't purposely buy a domain with this again. But that is not to say my business partner won’t do that accidentally. Or it’s not to say it won't slip my mind in 6 months, or that another purchasing process won't buy a domain with XXL in it in the future. So - signing something literally gives them legal means to come after us if we do it again in the future. Last thing we need is some company suing us for a million dollars because we accidentally infringed on their TM for a second time – after agreeing to not do it once.

 

[verbster]

That's common language. And imho it's not a problem. It's either you believe you are infringing or you are not. If you believe you are (and they do too) then why wouldn't you agree to stop the activity and future activity as well.

It may be common language, but it's definitely a problem. Use a real name like "bowl" instead of XXL. For example, while superbowl.com may be a TM, and superbowltelevision.com may be a TM, soupbowl.com or fillmybowl.com may not. If their company is apple.com, applecomputersales.com may be TM, but hotapplepie.com may not. For a company to request that you never use a keyword in the future for any reason is nonsense.

 

[Rebies]

Yes, I agree verbster and that describes it perfectly. Our intention is 100% to not to infringe again on this company (nor any company for that matter), but assuming it's "apple", I can't buy RedApple.com? It's insane and shooting ourselves in the foot to sign something saying we won't TM infringe again. It also lines us up for a lawsuit if that company really cares and we do it again too.

So, do you ignore the request - or honestly tell them "we won't guarantee anything". I'm sort of want to make it public knowledge "we're transferring this domain, but won't agree to your future terms"

 

[Dave_Z]

http://www.namepros.com/showthread.php?t=271415

 

[labrocca]

His example XXLweb tends to make the XXL the trademark. I am willing to bet it's not a dictionary word. And he should be grateful they aren't suing his ass for damages and his revenue.

You do whatever you think is neccessary Rebies.

 

[Rebies]

Dave Zen - thanks for the link! I looked around but did not find any previous threads about this. That thread was especially helpful.

I guess it comes down to how to contact / reply and transfer. I agree 100% with what was said in the other thread, and without compensation, we're not going to sign anything. Seriously, I don’t plan to use this mark in the future, and never meant to use it or saw it at first myself, but I surely am not going to sign a contract without compensation. Since I don’t care about this domain we'll transfer the domain to them for free.

I’m thinking now my approach will be this… Move domain to a new account at the current registrar, then write a polite reply, mailing it to them essentially saying…

“Attached is the login information for managing this domain, however we can not sign any contract without compensation. Unofficially we will watch out for this trademark, but can not absolutely guarantee a domain of similar nature is not accidentally purchased by us in the future.”

I still wonder if the above sentence does not fire them up or give them rights to come after us later? Is it better to just give them the login information without “declining” their offer? But the above is 100% the truth. We’ll watch out for it, but won't guarantee it.

 

[Diabro]

When you bought XXLWeb.com were you aware of XXL the trademark?

 

[Rebies]

Diabro,

No. Actually I don't remember buying the domain at all. One of those - sliped in somewhere between many other domain registrations. Looking back on it I would not have manually approved buying this domain.

Did I "know" this was a trademark? No. (keyword being "know" there!) Have I heard of the company? Yes. I would most likely have guessed it was a trademark in looking at it. But somehow, not on purpose, this domain did slip into our portfolio.

 

[verbster]

His example XXLweb tends to make the XXL the trademark. I am willing to bet it's not a dictionary word. And he should be grateful they aren't suing his ass for damages and his revenue.

Granted, if the company is something very distinctive like ebay.com, that would make a difference. Anything not very obviously different (like granitebayboats.com) would be trouble.

 

[Rebies]

I don't want to deceive you guys. It's a fairly obvious trademark. Nothing like Nike or Google. But more like Sotheby’s. Most everyone has heard of it, but on quick glance you might not see it as a trademark or might read it differently.

I think it might be aside from the point. I see the trademark concern, and I really don’t care, so we’ll transfer the domain back. The question is - we don't want to sign anything, but what is the best way to transfer back without getting into any legal issues?

 

[netfleet]

I have just experienced the same. I offered to transfer the domain name in the end but refused to sign anything regarding future conduct.

Amazingly, they decided to proceed with a WIPO (under consideration at the mo) anyway, seemingly to impress how serious my 'offence' was! I still can't believe it - the absolute best they can hope for is a transfer of the names following the WIPO decision - precisley what I'd offered weeks ago.

It's an absolute waste of their time, their money, the panel's time and my time (I filed a defence).

My advice is not to sign anything. And in terms of transferring, why not just delete the domain & send them an email informing them when it would be available? Then it's out of your hands.

 

[.Andy]

I have recieved similar things. Say I EED is a tm. From any companys standpoint seed.com would be a tm violation or bleed.com. I wouldn't be surprized how many of those ciest and desist orders are sent out each day. If its obviess tm violation give them the doamin but dont be stupid and sign that guarantee. Tell them Simply I'm no attorney and I'm no god. Mistakes in life happen. I'm providing this domain as requested but I make no guarantees on not using the tm in the future by mistake however If that happens I will deal with it as I deem necessary.

 

[labrocca]

I don't want to deceive you guys. It's a fairly obvious trademark. Nothing like Nike or Google. But more like Sotheby’s. Most everyone has heard of it, but on quick glance you might not see it as a trademark or might read it differently.

So you admit the TM violation and yet you won't agree in exchange for leniency not to do it again? That's great....and this is why the Snowe bill is coming to punish domainers such as yourself. Thanks bud.

I have just experienced the same. I offered to transfer the domain name in the end but refused to sign anything regarding future conduct.

Amazingly, they decided to proceed with a WIPO (under consideration at the mo) anyway, seemingly to impress how serious my 'offence' was! I still can't believe it - the absolute best they can hope for is a transfer of the names following the WIPO decision - precisley what I'd offered weeks ago.

It's an absolute waste of their time, their money, the panel's time and my time (I filed a defence).

My advice is not to sign anything. And in terms of transferring, why not just delete the domain & send them an email informing them when it would be available? Then it's out of your hands.

What domainers do not understand is that the companies do not want these domains. The C&D's are sent to PROTECT their brand. By telling them you don't recognize their right to the brand you are instigating them to react. It's costly for them but if they want to keep their TM status alive it's imperative.

Once you lose this WIPO and get the official cybersquatter label forget ever winning any future decisions...even if you are in the right. I just wish companies went for the $100k fine more often and teach a few bad apples a lesson.

Namepros members...you should feel ashamed so many here are telling this guy not to agree to stop the TM violations in the future. Blantantly it's like saying he can cybersquat as long as no one is looking. Shameful.

 

[.Andy]

Namepros members...you should feel ashamed so many here are telling this guy not to agree to stop the TM violations in the future. Blantantly it's like saying he can cybersquat as long as no one is looking. Shameful.

I'm not telling him to not to stop registering TM violations. (I've done it myself by accident and honestly its no real big deal if you work with them) The fact of the matter is were humans and do make mistakes. Take my example above eed as the tm and me registering seed.com. Lets take it a step further and say I established seed.com as a plant food company (seeds). If I signed that letter it says I wouldn't register anything with eed in it as thats a tm. Under regular law I would be allowed to own seed.com if it was obviessly not infringing on there tm (diffrent product diffrent indestry) From what this company wants her to do is say she wnot have those letters at all.

 

[netfleet]

Namepros members...you should feel ashamed so many here are telling this guy not to agree to stop the TM violations in the future. Blantantly it's like saying he can cybersquat as long as no one is looking. Shameful.

Nonsense. These things are usually grey areas and large companies (which they invariably are) even if they hold hundreds of TM's do not and should not have the power to go around making such demands of others. Signing that thing, the OP could get unwittingly caught in the future and, with a legal document to be used against him, absolutely slammed.

Eg say the TM holder was "O2" the UK mobile phone company and you signed the letter. Then you realise you have a domain with the word "O2" in it , say o2tents.com which is all about sales of oxygen tents? How about you wanted to start a blog called whyo2mobilesarecrap.com - that's free speech.

Am I making sense?

 

[labrocca]

Signing that thing, the OP could get unwittingly caught in the future and, with a legal document to be used against him, absolutely slammed.

OP admitted it's an obvious TM. Imagine if Google asked you to sign a similar agreement. What logic is there for "unwittingly" after the company has contacted you and made it CLEAR their TM.

And we aren't talking about EED here. I dare the OP to give us the TM. Everyone here would probably stop dead in their tracks with their nonsense defense of this.

 

[netfleet]

I'm not defending what the OP has done. Of course it's hard to defend or condemn without seeing the domain in question. The original question and pertinent issue is his rights into the future.

By signing that he is ever so slightly limiting what he can do in the future including plenty of circumstances which anyone would reasonably consider entirely in good faith. He shouldn't have to do that. Not unless mandated to by an independent body (in which case he should!)

See my other thread in this section - in this case, the complainant does indeed have a TM on the term realestate.com.au (check here - http://pericles.ipaustralia.gov.au/atmoss/falcon.application_start) but I have dozens of domains with the term realestate within them. If you were me, labrocca, and the complainant did what is being asked of the OP, would you sign that form?

 

[DNQuest.com]

I am not Jesse, but I have signed a form like that before way back about 7-8 years ago when myself (like most everyone else here) registered TM domains not realizing it was illegal. Luckily, I did not have many TMed domains and I let the others drop way back when. It is understandable to fall into the trap everyone fell into when we first starting out, but once you are informed of the situation, I would hope one would say, "ok, I won't register any of your TMs again".

Now, it seems to be a unique TM, if that is the case, just sign the thing and get it over with. Realize, it is the DOMAINERS responsibility to not register TMed domains. You sign an agreement with each registration saying so. The ignorance defense is usually ignored by everyone of influence (lawyers, panelists, judges). So, what is the problem? Just say you won'y register anymore of thier TMs. As far s all the "if-buts", if a domain is registered where the usage has nothing to do with a TM holder, that is a different situation.

(I didn't want Jesse to rant alone )

See my other thread in this section - in this case, the complainant does indeed have a TM on the term realestate.com.au (check here - http://pericles.ipaustralia.gov.au/atmoss/falcon.application_start) but I have dozens of domains with the term realestate within them. If you were me, labrocca, and the complainant did what is being asked of the OP, would you sign that form?

There is a difference between the 2 situations (I did respond on your post already). Yours seems to be a descriptive domain while this seems to be unique. Additioinally, the ccTLD hae thier own things going on, at least the TLDs have more fairness than those (or would seem to be).