Fighting back against a Trademark bully!

[cyberken13]

www.floridaweekly.com

Hello everybody,

It has been a while since I’ve posted here. I wish this could have been under better circumstances but this is a moment where we are reaching out to everyone.

We are in a fight with a Trademark bully. This bully is a newspaper company which bought similar domain names to ours when they launched their publication this April; more than two years after we had launched the same idea. They also filed for a state Trademark this year on the merely descriptive name combination, which requires secondary meaning, and now they are trying to use that to bully us out of our legitimate rights and business.

It was a simple choice; back down and give in or take on the financial burden and fight back. We chose the latter and filed against them! We are asking everyone to visit Florida Weekly , read the article about the case, and download the case files we have posted there. They will provide you with a more in depth look at the case. The burden of proof is on our side and as this case unfolds it will shed light on Trademark bullies trying to pull the wool over the system that was meant to protect all of us.

Update 08/19/07:

Please, while you are there check out our support page. We will be posting some of our domains for sale there as well as offer advertising in an effort to give you an opportunity to help.

Thank you everyone.

Ken

 

[MichaelC]

Ken has a very compelling story. His attorney assures me that he has documents to support his claims. I have written a short article about his case on InternetCommerce.org. Please help him if you can.

 

[liquidcherry]

Heya,

contact jberryhill here, he is the best when it comes to domain legal issues.... (and i would love to hear what he is saying, make it public!......)

Cheers,

Frank

 

[Dave_Z]

It appears the OP has already retained counsel to handle it. So good luck.

 

[liquidcherry]

Yes Dave, you are right but an insight from a pro(we are here @ Namepros would be helpful i believe..... couldn't resist :hehe: )

Cheers,

Frank

 

[PowerUp]

If you have a strong case, then this whole episode is a blessing in disguise for you.

1. You will get lots of backlinks.
2. You will get lots of visitors.
3. Lots of advertising revenue.

What other charges could you file against them? Tarnishing your reputation? Mental stress / abuse? If you receive any threats, then also criminal intimidation?

 

[liquidcherry]

Sorry Power Up if i miss understood your post but.....what??

That is the most dumbest reply i have ever seen!!

I hope u will be in the same situation one day, then u will see how intimidating this can be (and then you will come crying" they wanna steal my domain", help)....I bet u never tried to have a business because you are not allowed to have one(how, because u are 14 years old)

Just grow up

Frank

 

[briman1970]

Wow Frank... I didn't see PowerUp's post as dumb, sarcastic or mean. You need to communicate via pm before you spout off like this on a thread. This actually kind of makes you look like the 14-year-old, IMHO.

 

[-NC-]

Sorry to be a cynic but:

- the website only has articles on it from July and August of this year
- the website is mostly comprised of a sob story and a donation form
- archive.org records show that the domain does not appear to have ever been used for a newspaper site
- the homepage promises "News, Classifieds, Real Estate, Personals", but everything links to the (2 month old) blog only.

This sets off my scamometer.

If this is a genuine case, then I apologize, but I do not think you are doing yourself any favours with your presentation of the case.

 

[PowerUp]

Sorry Power Up if i miss understood your post but.....what??

That is the most dumbest reply i have ever seen!!

I hope u will be in the same situation one day, then u will see how intimidating this can be (and then you will come crying" they wanna steal my domain", help)....I bet u never tried to have a business because you are not allowed to have one(how, because u are 14 years old)

Just grow up

Frank

I bet you must have misinterpreted my original post.

If you have a strong case = If you have a case you are confident you will win, or the other party is claiming your domain based on flimsy reasons, no reasons, or invalid reasons. Surely in this scenario you are expected to win and successfully defend your domain.

Blessing in disguise = Free publicity. surely your case will generate some interest, and people will talk about your case on their blogs and link to your blogs. You'll get lots of visitors, your website becomes more popular.

Did you know that during the height of the hype of "The Da Vinci's Code", there were other authors who filed claims that Dan Brown stole their plot ot whatever from their books. Immediately these other authors' books that Dan Brown allegedly stole the plots from enjoyed good sales. Maybe the other authors were just seeking publicity for their books. My point is, this publicity on should be good for your website, that is if you don't lose the domain.

With more visitors, and if you sell advertising on your website, the increase in visitors will translate into increase in advertising revenue.


To Cyberken,
You said that "bully is a newspaper company which bought similar domain names to ours when they launched their publication this April; more than two years after we had launched the same idea."

Did you lauchned the same idea, or the actual product as well?


To domain and trademark experts,
If Cyberken has in existence before April a product or brand with the same name, could he file a claims with USPTO to cancel the bully's trademark? If can, that's what I would do, bite them back.

 

[labrocca]

Florida-Weekly seems to have started in April and your site in August...ugh..sorry but you lose.

I think -NC- is right and the bullshit meter is going off.

Which is the more legit site?

http://www.aboutus.org/Florida-Weekly.com
http://www.aboutus.org/FloridaWeekly.com

Also the legal notice says it will pay up to $1000 for your "expenses" which basically mean they want to negotiate. I think your best bet...to negotiate a sell price. You might get $5k-$10k instead of a headache.

Also...the legal notice only demands that the similar content be removed. They do not ask for directly for the domain.

Trademark Bullies? I think not.

 

[cyberken13]

Only the facts

Thanks for the replies everyone.

As this is an ongoing case I cannot reveal any details yet but I can say with 100% certainty that "this is not a scam". My lawyer and the ICA would not back it if it were. Read the complaint itself and you will have a good idea of the complete time line; not just what you see right now. Everything that has been stated in the complaint can be backed by the evidence we have. What has been revealed is only the tip of the iceberg. It is factual that we started more than two years before this newspaper company.

Trust that if we were not in the right then we wouldn't have taken the case to this level.

We are asking for two outcomes in this case:

1. That our first use of the mark does not infringe on the trademark rights (if any exist) by the newspaper.

2. The canceling of the recently and improperly registered trademark as granted due to both error and fraud.

We just wanted to be left alone to build our small business, and they wanted to take it away from us.

 

[DNQuest.com]

Just so we get the facts right, you received a C+D in July 2007 and by just "coincedence", you start actively using the site (On July 30, 2007) while it remained dorment for the previous years? In 2003 and 2004, it was a portal site with the site listed for sale. In 2005, you have a single page up with no content.

It could be viewed that you started using the site after you were contacted to become "good faith compliant", it could be viewed that the C&D may of had a point and changing to an active "good faith" site could be an admission of guilt. Then you started using the site in a "Competing" manner to a registered trademark.

First, it would have been impossible to prove bad faith registration since they seem to not have been in exsistance at the time of registration. The criterea is "registered and used in bad faith". But unfortunately, it has be interpreted as "registered and/or used in faith". With you starting a competing service "after" they did, depending on teh panelist, that could hurt.

One thing I don't like, is the misleading "oh whoa is me story". Your downfall may be reacting the way you did by putting a competing site up. And this is stuff that took me not even 5 minutes to research. I would bet their attorneys would be more thorough than I am right now. It would have seemed that you would have been better off leaving the domain dormat instead of competing with them.

MichaelC, I will admit i do not hold the ICA in high regard because of my previous dealings with the ICA and their slanted views. [I had a mini rant here about the ICA, but decided it was not proper for this thread]

 

[liquidcherry]

Heya Power Up,

Sorry, i didn't mean to be rude...i really missunderstood...(must have been the heat)....your second explaination was not dumb at all

To the view of NC and labrocca, it looks a bit odd i agree but my question now is, why would the OP go the long and expensive legal way if not realy having a startup and trying to defend his dreams?

Al what i know is that usage is the key....

Anyway, Let's see what the outcome here is...it sure is interesting...

Cheers,

Frank


P.S: just because there is no record in archive.org means not much, i have a active website (2 years old) and nothing shows up, even archive.org is saying that it can take very long to be picked up.

 

[DNQuest.com]

LC, if you look at the site, the first content was posted on July 30, 2007 with Bonds hitting his 754 home run. 2 weeks after the C&D.

 

[ApeXX]

Sorry Power Up if i miss understood your post but.....what??

That is the most dumbest reply i have ever seen!!

I hope u will be in the same situation one day, then u will see how intimidating this can be (and then you will come crying" they wanna steal my domain", help)....I bet u never tried to have a business because you are not allowed to have one(how, because u are 14 years old)

Just grow up

Frank

Woah there... I thought PowerUp's post was insightful actually, I hadn't thought of the publicity it would give the OP.

 

[cyberken13]

Review

First, before I post this, I appreciate any dissenting views. I understand that this sort of thing can happen early in a case before all the proof is shown. I mean no ill will towards anyone here. I apologize that this is a bit long.



- The website only has articles on it from July and August of this year

The website in its current state is only part of the complete time line of facts.

- The website is mostly comprised of a sob story and a donation form

No sob stories here. This is a fight to keep our rights of use. This bullying happens everyday. We are one of the first to actually fight back. This will place a heavy financial strain on us. That is why most never fight back and the bullies know this. So, yes, we are asking for everyone’s help. There is nothing wrong in that.

- Archive.org records show that the domain does not appear to have ever been used for a newspaper site

Archive.org, is just one part of the complete evidence which will prove our first use.

- The homepage promises "News, Classifieds, Real Estate, Personals", but everything links to the (2 month old) blog only.

We've made no promises, only statements. This is a multi phase project for us and what you see there now is only part of it. Everything else had to be placed on hold because of the case.

- This sets off my scamometer.

Again, this is not a scam. Yet, it is ok to be cautious. I understand that.

- If this is a genuine case, then I apologize, but I do not think you are doing yourself any favours with your presentation of the case.

We are doing a lot by bringing this case to the public. You do not see the newspaper doing any reporting about this to their readers. You should ask yourself why.





- Florida-Weekly seems to have started in April and your site in August...ugh..sorry but you lose.

We do not lose by standing up for our rights. We started no later than 2004. The newspaper had ample opportunity to discover us well before they even started their company in 2007.


-Which is the more legit site?

The question is who had first use. The evidence will show as the case unfolds that we predated them by more than two years.


- Also the legal notice says it will pay up to $1000 for your "expenses" which basically mean they want to negotiate. I think your best bet...to negotiate a sell price. You might get $5k-$10k instead of a headache.

We attempted negotiations on two fronts. They hung up on us. There's not much else you can do when that happens.


- Also...the legal notice only demands that the similar content be removed. They do not ask for directly for the domain.

The legal ramifications of backing down when you had the rights first are huge. See their first domain registrations; Florida-Weekly.com, TheFloridaWeekly.com, MyFloridaWeekly.com, FloridaWeeklies.com. They offered to buy ours as well and they accused us of cybersquatting. They don't want our domain?


- Trademark Bullies? I think not.

Actually, you just described them perfectly.

 

[liquidcherry]

Hi DNQuest,

You are right, i saw that and for that i wrote "usage is the key"...the OP didn't use it before he received the C&D and putting up afterwards a similar page wasn't a good move either i think)...

But let me ask you.....who the heck is Bonds??? (just kidding!!!!!) :hehe:

Cheers,

Frank

 

[cyberken13]

Just so we get the facts right, you received a C+D in July 2007 and by just "coincedence", you start actively using the site (On July 30, 2007) while it remained dorment for the previous years? In 2003 and 2004, it was a portal site with the site listed for sale. In 2005, you have a single page up with no content.

I understand. Since late 2004 we have maintained rights and usage and we have the evidence which will prove that. Our domain and content, which has had its nameservers (NS1.FLORIDAWEEKLY.COM) since 2004-2005, was moved on July 6th of this year to its new server with content and available email contact. We've never had them for sale. In early July we had offers emailed to us on the name which we turned down. On July 16th we received the C&D letter.

It could be viewed that you started using the site after you were contacted to become "good faith compliant", it could be viewed that the C&D may of had a point and changing to an active "good faith" site could be an admission of guilt. Then you started using the site in a "Competing" manner to a registered trademark.

The facts will show that we had first use predating the newspaper. We were already active and in good faith before the letter.

First, it would have been impossible to prove bad faith registration since they seem to not have been in exsistance at the time of registration. The criterea is "registered and used in bad faith". But unfortunately, it has be interpreted as "registered and/or used in faith". With you starting a competing service "after" they did, depending on teh panelist, that could hurt.

The evidence will prove the contrary but I cannot reveal it now here for obvious reasons.

One thing I don't like, is the misleading "oh whoa is me story". Your downfall may be reacting the way you did by putting a competing site up. And this is stuff that took me not even 5 minutes to research. I would bet their attorneys would be more thorough than I am right now. It would have seemed that you would have been better off leaving the domain dormat instead of competing with them.

We are not cowering in the corner and looking for a handout. We've already spent good money just getting this case off the ground and we're taking a stand to protect our rights which are the rights of everyone who has a business. That is how we have stated this all along. It is not misleading to state the case based on the facts and evidence we have.

I hope that they are thorough. I cannot wait for all discoveries of evidence and arguments to be released in the near future.

 

[DNQuest.com]

cyber, I hope you can appreciate both sides that have presented. I do understand you need to showing overwhelming "evidence" for your favor, and I even commented how you would have been better off and the possible mistakes made. Hopefully you try to take an objective view of what is being said. I know it is very hard to do when you are directly involved. I also do disaggree with some statements made from others here. I do not believe this is a slam dunk on either side. But one thing I will strongly point out, do not sit here and say the domain was never for sale. Someone mentioned going through the BS, which is normal for things like this, but this domain was for sale for several years. That would condrict you point of view as far as you "business plans". (hint hint).

Again, I do understand where you are coming from, sometimes it is good to take in what people and try to be objetive and not have the knee jerk reactions.

 

[labrocca]

You either have a bad lawyer or you yourself are just clueless.

And for us it's nothing personal either...we really don't care either way. Just consider us Devil's Advocates. Most of the stuff we say is likely to be brought up by opposing councel.

You say you have usage 2 years prior and you have evidence. I say poppycock otherwise you might have mentioned it. I see no harm in telling truth.

We attempted negotiations on two fronts. They hung up on us. There's not much else you can do when that happens.

Too telling imho. So you did try and sell off this domain to them but unsuccessfully.

The legal ramifications of backing down when you had the rights first are huge.

Ugh..and the legal costs of fighting this might be more. Taking the $1k might be the better choice. Defense could cost you $5k-$10k or more! If you spend $10k to defend this and end up keeping it you have to ask is the domain worth $10k. Bad news..it's not.

What really interests me is your claim of first use. Did you use it for a newspaper? Using it and what it's used for are two very different things. First use is all about what the use is. Certainly you did not. Whatever this first use evidence is...I don't believe it exists. Saying it all over the web doesn't make it true. They created a newspaper site...OBVIOUSLY before you. Plans do so something really don't mean jack if you don't execute.

It is not misleading to state the case based on the facts and evidence we have.

It's misleading to say there are facts and evidence that you do not have.

We are doing a lot by bringing this case to the public. You do not see the newspaper doing any reporting about this to their readers. You should ask yourself why.

Boring case which appears you to be in the wrong anyways. You haven't presented a single piece of evidence here. Actually the face-value evidence places you in the wrong.

We do not lose by standing up for our rights. We started no later than 2004. The newspaper had ample opportunity to discover us well before they even started their company in 2007.

What? Are you serious? Where? Exactly HOW would they discover you from your holding page? If you are NOT using the domain as a newspaper site they are certainly within their rights to do so themselves with a similar name. Again...your backend plans don't cut it. They would have no idea of what you are doing and it wouldn't be in their best interests to tip you off before they do.


They have done the right thing here. You have not. I see it this way and so do others. Would you be ok with revealing who your legal counsel is? It would help clarify how legit this case you have really is. One simple call is all it would take.

The evidence will prove the contrary but I cannot reveal it now here for obvious reasons.

No..not obvious reasons sir. Facts are facts...and in discovery you would need to reveal them anyways. Facts won't change if two years ago you have some first-use rights.

 

[cyberken13]

"Hopefully you try to take an objective view of what is being said. I know it is very hard to do when you are directly involved."

"Again, I do understand where you are coming from, sometimes it is good to take in what people and try to be objetive and not have the knee jerk reactions."

DNQuest, I appreciate these comments. Thank you.

As far as the name being for sale; I stated that we have never had the name for sale. We bought the .com off of someone selling it in late 2004.


------------------------------------------------------------------


labrocca,

I know how harsh you can be and you have my respect because of that.

"Would you be ok with revealing who your legal counsel is? It would help clarify how legit this case you have really is. One simple call is all it would take."

Absolutely, the law firm and lawyer are listed in the PDF complaint file we have posted on FloridaWeekly.com. You are more than welcome to give him a call.


I am under restrictions as far as how much I can say and reveal. We have a great lawyer and we've taken our time in developing our legal strategy. Most of our evidence is being held for discovery. It does not serve us well to put it all out there now as much as I'd absolutely love to do it. I'm a family man and we have a small legitimate business. If we felt for a second that we were in the wrong here we would have backed down.

As far as selling the domain name. We've never had this name for sale. We bought the .com off of a reseller back in late 2004. In July 2007 someone twice tried to contact us to sell the domain and we told them no. The newspaper's lawyer offered to settle for a price to avoid a fight and we tried to work with them on that but it fell through. Then we decided to file against them. That's it.

You are correct on the cost issue. Yet, it's never been about the money for us in deciding to fight back.

...... As far as the rest of your comments; we can go on all day about them. You want to see the cold hard evidence. At this point I am not permitted to show those pieces because doing so reveals our complete case to the other party. That only hurts us in preparing for court.

I do appreciate what you have to say Labrocca. If I can take it from you then I'm ready for just about anything.

 

[labrocca]

Well Mr Ken..that's cool. If you do have cousel telling you to keep quiet then of course you should respect his wishes. I really do wish you luck but at face value this doesn't look good for you.

btw...it's a great domain name and probably worth upwards of $3-5k.

Good luck I don't really have more to say based on what's already been told.

 

[cyberken13]

Thanks Labrocca. Again, you are welcome to give them a call. He may or may not be able to tell you more.

 

[WebTech]

From what i read, i thinnk the right term for your case is - "reverse domain hijacking" or
"reverse domain name hijacking", and it is defined:
======
"Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name."
======
this is from:
http://www.icann.org/dndr/udrp/uniform-rules.htm

There are some similar cases decided against "bullies".

Maybe you know about that, but if not, take a look at:

http://en.wikipedia.org/wiki/Reverse_domain_hijacking
http://www.dnjournal.com/columns/mess.htm
http://www.icann.org/dndr/udrp/uniform-rules.htm
http://www.dnjournal.com/legal/sl_reverse_hijacking.htm

or you can just search the web.
IMO (and by ICANN panel in some cases) the sole fact that you have not developed
web site is not proof of bad faith, but such actions by those who wants the domain
are bad faith.
=============
Rules for Uniform Domain Name Dispute Resolution Policy
from 15.(e)
If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
=============
Good luck.