Befuddled as how to proceed

[cac14850]

I think I have a rather unique issue here. I regged a mobi that begins with geo and then uses a short second generic word to describe a capability similar to "see." Had I actually paid better attention I likely wouldn't have regged it given there is a .com site that has a TM and I am fairly certain, if this were the only issue, I would lose. HOWEVER, there is a second company at a different site on another common use extension (I wont say which one but it is not a country code) that does what is more or less the same thing. Now I am thinking my response to a letter asking me to relenquish the name might be to say I don't appreciate the threating note and I am going to contact the owners of geoXXX site and offer it to them for free. Let them battle out the TM issue and maybe, if they don't want to fight with them for it, the first company will come back with an offer. Thoughts?

 

[DNQuest.com]

Thoughts?

First, if you were contacted witha C+D (ehich is what it sounds like), even if you gave it for free, you are still liable for the registration of the domain in the first place. Now, you give it free to a competitor, I have a feeling that might really upset a lawyer who is probably paid by a company with deep pockets. And if they sue under the ACPA, you will end up paying theri legal fees, not to mention the possbile $100,000.00 fine, plus lose of monies and punitive damages.

As far as feeling threatened, many letters are like that, if you take it personally, then you need to get out of the domain business now, I am sure you will get more. The question is, do you think they have a case (being partial). Have you shown bad faith? Like trying to sell the domain or have it parked (with no doubt competing ads)? IF they do, then do as they ask.

 

[Mark]

Even if you were to give or sell it to another party - It does not relieve you of any liability (Providing the TM holder wished to go that far). If it is in fact a completely generic term and has another possible use other than what the .Com holder uses it for - There is a chance you "might" be safe .... But that is unlikely.

As far as "Threatening" the TM holder as a bargaining method - Terrible attitude to take IMO ~ Just because Many TM infringers have gotten away with some things for a while now ... Doesn't mean it's safe or will continue. If you try to push Back in a rude manner , They may decide to make an example of you.
It's just not worth it IMO ~ It only takes ONE solid case against you to ruin your name and possibly hurt your cashflow at the same time.

 

[cac14850]

thanks

Thanks for your thoughts. As far as threating it was going to be more pointing out there is a company doing the exact thing with the exact name. I actually dont have the name parked for reasons cited above but there really is not much else one could do with the name (hence the .XX person doing pretty much the same thing) although I suppose I could make the argument geo and "see" are pretty much generic. ah well, I was hoping for an end around the name issue.

 

[IAmAllanShore]

Other companies doing the same thing does not mean that you are somehow safe.

For example, if you were to register MyDelta.com, you could be infringing on Delta Airlines, Delta Faucets, Delta Power Equipment or more depending on content, etc.

Similarly, using two TM's in one name "BuyGoogleOnEbay.com" doesn't relieve you from responsibility to either/both.

And "threatening" in response to a C&D is almost always a bad idea, as others have already noted.

-Allan :gl:

 

[cac14850]

now i am curious

Thanks for the Delta analogy and I know why all of them would have individual issues if I sold plane tickets, or faucets etc.. but wouldn't this be a bit different? Two companies doing the exact same thing, doest that make the name more generic? Anyway, thanks again for the help.

 

[IAmAllanShore]

No.

The fact two people do something proves little other than two people do something.

It can tend to make one fact more likely to be true, but nothing that is conclusive in this situation (Especially without knowing exactly what the words are, but that is not overly material based on your description.).

Not trying to be curt/rude, but think "big picture".