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”?

 

[PowerUp]

This is an interesting issue and I'm curious of the outcome of signing that piece of paper.

Say I own windows . com, and I have been using it as bad faith. Microsoft demands I hand over, which I did. In addition to that, they force me to sign this letter that I agree not to "not use the name / mark in the future".

Now, months down the road, I find that I am not cut out to be a domainer and I've not made any money in domaining. And out of sheer coincidence and opporunity knocking, I became a windows cleaner. Now does that mean I cannot register windowscleaner . com because I've signed that piece of paper? Or I can still register windowscleaner . com because though it contains the word windows however, I am not using the name / mark for commercial gain?

 

[DNQuest.com]

The paper you sign is saying you won't register TM infringing domains. In your example, the domain is descriptive of the services you are providing, or if it is part of a name to which you are doing business, then you are not infringing on the TM.

 

[labrocca]

I have signed also the "won't do it again" clause. I have only been asked where the TM is unique. People also think that because you sign this paper you're suddenly up shits creek. It's just not true. Does the agreement have an additional penalty for breaking the agreement? Doubtful. What the agreement says is basically you respect the rights of the TM holder...which helps them in their TM defense.

By handing over the domain you are placing a similar liability against yourself for the future anyways. The document is just more official. Lawyers gotta dot their I's and cross their T's. They like to get paid and do so by writing in whatever clauses they can. Sign it...make them happy.

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.

Exactly...Phil has come to my rescue!

 

[Rebies]

I’m not trying to fight anyone. I’m looking for insight and discussion. I’ve admitted there is a TM, so I think it’s rude for others to “dare me to provide the TM” and to insinuate it’s my fault that the Snowe bill was proposed and tell me I’m “lucky they did not sue my ass”. This is one domain we registered a few months ago, and I’m looking for suggestions, not inflammatory comments. I’m looking for reasonable course of action – and to me (and others here) it sounds like signing anything is just dumb to do. I could go ask any lawyer – and they will most likely tell me in a heartbeat – “don’t sign anything if you don’t have to.” It’s common sense 101.

Netfleet… That’s very interesting about offering the domain up but them pursuing WIPO anyway. Although I assume you could be responsible if they really want the domain and you delete it – and then they don’t get it. Then you could be liable for damages at that point I might guess?

I have signed also the "won't do it again" clause. I have only been asked where the TM is unique. People also think that because you sign this paper you're suddenly up shits creek. It's just not true. Does the agreement have an additional penalty for breaking the agreement? Doubtful. What the agreement says is basically you respect the rights of the TM holder...which helps them in their TM defense.

By handing over the domain you are placing a similar liability against yourself for the future anyways. The document is just more official. Lawyers gotta dot their I's and cross their T's. They like to get paid and do so by writing in whatever clauses they can. Sign it...make them happy.

Jesse - thank you for this comment. Much more insightful and helping address the issue. Yes, my primary concern is we sign this, and then out of pure mistake in the future we register another domain containing this mark - there is now a legal trail that gives the company right to come after us - with proof we know (and signed) to not do it again in the future. I don’t think we’re “up a creek”, but do think we’re potentially harming ourselves in the 4 or 5 year scheme of things.

 

[RJ]

Whether it was an intentional or unintentional violation of trademark is besides the point of the question. I think we can all agree that trademark infringement is wrong and whatever our past sins were, we can strive towards changing today to behave with ethics and be respectful of trademarks.

Now, about the question at hand. Your willingness to hand over the domain without a fight, or any request for compensation, is admirable. That is the proper thing to do. However I personally would not feel any need to sign ANY type of contract whatsoever with the other party, unless my hand was absolutely forced to do so. Transfer the name, apologize if you feel the need, and be done with it, imho.

RJ

 

[flamewalker]

I agree with RJ... You should not be compelled to sign anything...If you do sign, make sure you read EVERYTHING and understand it fully before you do... make sure they don't have some god aweful terms in there... but imho you are under no more obligation to do anything other than turn the name over.

If they throw a hissy fit that you won't sign it, imho you could tell them that you don't think its necessary to sign anything, but that you will make your best effort to make sure your company doesn't do it again. The trouble with signing is that they could come in the future and say in court see he signed it and broke your contract... which would be doubly bad.

Just IMO.

 

[Diabro]

What the agreement says is basically you respect the rights of the TM holder...which helps them in their TM defense.

I did not think of it from this standpoint. Good answer.

 

[labrocca]

there is now a legal trail that gives the company right to come after us

They have that right anyways. What exactly do you think NOT signing does for you? Weight the positives and negatives. Worse case scenario vs best case scenario. As someone else here already pointed out...they refused to sign one of these and the company decided to UDRP. Would a judgement in UDRP against you be a benefit vs signing the paper saying you won't infringe on their mark in the future. I already pointed out the OBVIOUS negative of having a WIPO decision marking you FOREVER a squatter.

I could go ask any lawyer – and they will most likely tell me in a heartbeat – “don’t sign anything if you don’t have to.” It’s common sense 101.

And common sense tells me that if I am violating a companies mark and in exchange for leniency they want me to agree not to do it again I AGREE TO THAT. You are under and impression that "you don't have to" sign this. What gives you this impression? "you don't want to" is very different then "you don't have to" ...seems the TM holder has you dead to rights and has made this clause as part of their agreement. What standing legally do you have to deny them?

Is you plan to basically not sign and "hope" they just go away? That seems a bit more risky given the current climate of going after domainers don't you think? You're the only person that knows who we are dealing with. Once a company contacts me I walk on glass for a couple weeks till it's blown over. If you are comfortable in telling them you won't sign then hey...go for it. Good luck in that.

 

[verbster]

You are under and impression that "you don't have to" sign this. What gives you this impression? "you don't want to" is very different then "you don't have to" ...seems the TM holder has you dead to rights and has made this clause as part of their agreement. What standing legally do you have to deny them?

You can't be serious.

 

[DNQuest.com]

You can't be serious.

What is wrong with what he said, could you please expand your answer to maybe see why you don't think he is serious. The TM holder may do whatever they want, just like you may do whatever you want. They want the reassurance that the person doesn't squat on thier domains. What is wrong with that? It is a better option than UDRP, or even worse, ACPA. So basically, in exchange for not esculating this matter to court or UDRP, they are asking you don't infringe on thier mark.

 

[PowerUp]

How long does it take to completely delete a domain. ie your name not showing on whois info.

 

[verbster]

I was remarking on the implication that a respondent must accept or agree to anything in a C&D letter (beyond being prepared for the consequences of not doing so). Even if you believe it's the prudent thing to do, there's a huge difference between a C&D order and a C&D letter.

 

[DNQuest.com]

The respondant does have the choice to sign or not sign, I agree. But the complainant has the choice to solve the situation amicably or to be aggresive. They chose amicably and in order to keep it amicable, they gave certain conditions to let the coplainant off the hook. If the respondant wants the easy way, they agree to the terms. If they don't agree to the terms, then the complainant has other avenue's, some of which the respondant may end up paying a huge fine and all the legal costs for both sides.

 

[psalzmann]

What we're seeing here is a new approach of TM holders understanding that they do in fact have other ways to handle one situation, long term. :bingo:

This is their brand, this is their business and I would follow their requests to avoid any issues. I agree 100% with DNQuest.

It's a choice available to you. However I would do what they want you to do. This isn't going to be the first time something like this will happen. Think about it... this topic is growing very large as the days go on

But the ultimate choice is up to you. I feel that you might be under the impression that all you should simply do is give the domain back "like everyone else does". This day and age, it's becoming more of a problem for TM holders and they want to ensure their mark means business.

It makes sense. You guys would do the exact same thing... I think

 

[flamewalker]

If that is all they want is an assurance that you won't do it again, its not unreasonable. Personally, I would want it rewritten that you will make every reasonable effort to make sure you and your purchasing agents will not infringe again. That way, if you hire a new guy or get another partner and they reg another, you aren't instantly under the gun again. Also, if a parter regs something that infringes, that doesn't necessarily make you guilty or liable unless they registered it with your permission or under your guidance of some sort... someone else can chime in on that point... The others are right, there are risks to signing and not signing... it is up to you to determine what risk you want to take.

 

[Rebies]

Good posts and points!

Yes, it's exactly that flamewalker. If a new guy comes on and registers a domain with that same TM - we don't want to be under the gun because of that. If this company has an issue and it unfortunately did happen again - we'll turn the domain over again. But I can not “guarantee” this TM won't accidentally make it into our portfolio again. Heck, automated systems could do it accidentally for some reason or another. Or a new program written.

At the end of the day, we have a blacklist we watch out for and this TM will get added. We will do what we can to not make the same mistake again. I think I agree flamewalker - a rewritten contract might be better. Heck, maybe I'll rewrite it, sign it and send it back that says "we'll take precautions this does not happen again". But that is not a guarantee. I can guarantee Ill TRY to keep this TM out of our portfolio. I won’t guarantee it though. Everyone somewhat gets what they want.

Good question as well… If I theoretically signed their agreement and send it back, but someone else comes onboard and buys the same TM – where is the legality in that?

 

[labrocca]

Good posts and points!

Yes, it's exactly that flamewalker. If a new guy comes on and registers a domain with that same TM - we don't want to be under the gun because of that. If this company has an issue and it unfortunately did happen again - we'll turn the domain over again. But I can not “guarantee” this TM won't accidentally make it into our portfolio again. Heck, automated systems could do it accidentally for some reason or another. Or a new program written.

At the end of the day, we have a blacklist we watch out for and this TM will get added. We will do what we can to not make the same mistake again. I think I agree flamewalker - a rewritten contract might be better. Heck, maybe I'll rewrite it, sign it and send it back that says "we'll take precautions this does not happen again". But that is not a guarantee. I can guarantee Ill TRY to keep this TM out of our portfolio. I won’t guarantee it though. Everyone somewhat gets what they want.

Good question as well… If I theoretically signed their agreement and send it back, but someone else comes onboard and buys the same TM – where is the legality in that?

I could live with that. I have a feeling they could too. Interesting discussion at least.

 

[Name Trader]

I bought a dictionary .biz about a year ago with some vague idea of what it could be used for. Which was not even remotely close to the trademark. As with all my purchases, I just park them. Rarely do I optimize them or develop them. Out of the blue, I got a C&D from a trademark owner. When I looked at my parking page, it was smothered with competitors ads. Gotcha! They asked me to turn it over, provide them with income from the domain, and sign something similar to what is being discussed here.

I explained and apologized all this to the lawyer by reply email. I didn't state categorically that I wouldn't turn it over. I changed the keyword, and gave them assurances that their trademark would not be infringed on this domain whilst the domain still belonged to me. It's been a couple of months without any further contact from them.

I provided them with info about my revenue. Exactly $0 in nearly a year. Except for when their lawyers checked out the domain and clicked on the links. So although there were some visitors to the domain, none of them clicked on any links. Apparently none of these visitors associated this domain with their trademark, either.

Lesson learned: I checkout USPTO now when buying domains, and set the keyword when parking them.

 

[DNQuest.com]

Lesson learned: I checkout USPTO now when buying domains, and set the keyword when parking them.

Why not spend an extra 10 seconds and search google too? Not all TMs are registered and with a Google search, you can see if being used as a TM or at least could be argue that someone is using it as a TM. Becauseas we all know, it is the domainers responsibility that they do not register TMed domains

 

[verbster]

Becauseas we all know, it is the domainers responsibility that they do not register TMed domains

I'm not sure there's anything wromg with registering a TM'd domain as long as the domain isn't used in a way that infringes on the trademark. Sometimes that's pretty obvious...sometimes it's not. That's why we have forums like this and reputable attorneys to help us figure out the close calls.