Citizenhawk Letter

[qwertyuu]

Hi, I would like advice on an issue. I received a letter from citizenhawk claiming I infringe trademark on a typo domain. My issue is not the taking down of the stated site, but handling over to them the domain for FREE. Is this legal? Can I Just take down the stated site?

Here is the letter below:

Dear XXXXXXXX:

Re: Infringement of Various, Inc. Marks

Case Number: #CH-12011XXXXXXXX

This trademark infringement notice is being sent to you by CitizenHawk, the leading provider of digital brand management solutions. This notice is sent on behalf of Various, Inc.

Various, Inc. ("Various") is the owner of United States Federal Trademark Registration No. 29XXXXX for the trademark "XXXXXXXX" (the "Mark"). Various has been using the Mark continuously since 2003 to operate online chat forums that allow for the transmission of messages among computer users for the purpose of meeting others and developing relationships. Various, Inc. has built up substantial commercial value and goodwill in its marks and its business.

It has come to our attention that you have registered the following domain name(s):

XXXXXXXX.com

It appears that you are trying to capitalize on our client's very strong rights in the XXXXXXXX mark by using a confusingly similar domain name(s) to divert traffic to your site. Your registration and use of the domain name(s) infringe our client's trademark rights by creating the likelihood of confusion, mistake or deception as to the source or sponsorship of the goods and/or services you offer, or as to your affiliation with XXXXXXXX. This type of misrepresentation is specifically banned by existing federal statutes, such as the Anticybersquatting Consumer Protection Act of 1999 (15 U.S.C. §1125(d)) (the "ACPA"), which is embodied in the Lanham Act. The ACPA provides several remedies for cybersquatting, including preliminary and permanent injunctive relief, the recovery of costs and attorneys fees, as well as statutory damages of up to $100,000.00 for each domain name that is found to be infringing.

We hereby demand that you immediately discontinue use of this domain name and that you assign the domain name registration to Various, Inc.

Please respond with an affirmative response to this email by replying to "[email protected]" by February 8, 2008. The CitizenHawk domain recovery team will work with you to help facilitate the domain transfer process.

If we do not receive the requested response, we will take such action as we deem appropriate to protect the noted XXXXXXXX Mark.

CitizenHawk Domain Recovery

 

[TT]

if you dont give it to them and they do prevail in having the domain recovered your net worth could be - 100k

 

[Diabro]

I did a search and see they have sent quite a few of these out.

 

[Ronald Regging]

I did a search and see they have sent quite a few of these out.

Yeah, if you check out their website, they offer automated solutions for brand protection. In theory, it's a good service for companies to protect their TMs... However, I don't like the word "automated". They claim to crawl the web using software that identifies infringement, then automatically sends out C&D notices and identifies the revenue source to send take-down notices. I'm assuming these would be DMCA take-down notices, but I was under the impression that only applied to copyrights... Either way, the idea of some automated scripts coming across my site, identifying it as infringing and then sending take-down notices to my host and all of my ad network partners seems frightening. Obviously this is good if I was in fact infringing... But there are just too many cases of human-error when it comes to overreaching TMs, let alone automated processes.

And to answer the OP's question. Yes, you have to give it to them for FREE. You are the one who registered it and used it in bad faith, so they owe you nothing. You can't just take down the site, because you've already committed the infringement. Through your usage, you have stolen their identity, and now you must give it back.

 

[jberryhill]

But there are just too many cases of human-error when it comes to overreaching TMs, let alone automated processes.

Amen. I've seen plenty of Citizenhawk letters concerning domains that in no way related to or infringed the claimed mark, but were based upon automated substring matching.

Citizenhawk, incidentally, is practicing law without a license. It is not a law firm, yet they purport to represent others in a legal capacity, and also purport to interpret and apply the law on behalf of others. What they are doing is illegal in most states.

 

[qwertyuu]

If that's the case, then so be it...I will give it to them.

Lucky I only have a couple of typo domains, I wonder about those with a portfolio of "valuable" typo domain. Are they all in danger now?

Thanks for all your help.

 

[bradocconor]

Send them a certified letter telling them that you would be more than happy to trasnfer the domain name to them if you can see a signed contract from XXXXX.com giving them the authority to represent them. From what I have heard (HEARD NOT SEEN FIRST HAND) they will send these letters out for companies they DO NOT represent in an effort to begin working for them showing trial results they have already got. if this is the case it is wire fraud and mail fraud. If I am not mistaken they have to provide written proof that they are representing that company otherwise you could start a fancy schmancy website etc and send letters out all day comitting what? mail fraud then when the domain is trasnfered wire fraud

These are my opinions though

 

[Ronald Regging]

Amen. I've seen plenty of Citizenhawk letters concerning domains that in no way related to or infringed the claimed mark, but were based upon automated substring matching.

It's kind of ironic. We have companies being charged with TM infringement, because of their use of automated processes. Now we have companies trying to stop TM infringement through the use of automated processes...
Isn't technology a wonderful tool?

As for practicing law without a license... I've seen this same type of deal happening with copyright protection as well. Where companies will farm out the "dirty work" to non-law types to track down and enforce infringement.

I had never really considered if this would be construed as practicing law without a license, I just assumed that companies had the right to assign an agent to do these things on their behalf. Definitely interesting to hear your response.

 

[Dave_Z]

What they are doing is illegal in most states.

But not the one they're doing business "from", huh?

 

[bradocconor]

But not the one they're doing business "from", huh?

Ah yes but I have seen instances where when something crosses a state line it becomes that jurisdiction as well. (I am a former state trooper to clarify) Worked a case guy in California calls over and over someone in West Virginia saying he is going to kill him burn his house down etc. You get the point. we charged him in WV with teroristic threatning and a couple other charges under the prmise the act was also in West Virginia had him brought to WV for trial etc ended up going to the suprme court if WV had jurisdiction in this case and not California which at the time would have only had a misdemeanor charge and the verdict was upheld. Not sure if that would apply here or not but once that letter crosses into my state and I read it in my state my states laws would apply because they have then "brought there business" to my state IMHO

Would be a good question for Mr Berryhill to answer.

Like I said send a letter certified mail asking for proof they are representing them and ask if they are a law firm representing them etc so they have to send a written letter not a form letter and try to set the trap. That is what I would do. PM me the domain or comapny that is claiming the TM and I will reg one and we can see it all unfold right here

 

[jberryhill]

Well, I wouldn't dive off of the deep end over a domain name that is problematic in the first instance.

Clearly, independent of whatever Citizenhawk is up to, one should determine whether one is better off without the domain name in question - regardless of who has come knocking.

 

[bradocconor]

hey john would the state laws in the state where the letter is recieved also be in effect?