question Got a cease and desist for a landing page

[rayman617]

The domain in question is Music123.net which seems generic enough but is actually trademarked by GuitarCenter which had over 2 billion dollars in sales in 2019. Their lawyer wants me to transfer and I am inclined to do so given then their long standing history and high rank in the market but I have a few points that I would like to put forth to see if anyone thinks they hold any defense:

1. Music123.net only resolves to a for sale landing page for which to make an offer on
2. There are no references to music in the pictures or words on the page
3. I had no knowledge of the brand or trademark before registration
4. I am a domain name investor and <Music> and <123> are generic terms

 

[falez]

I usually respond similar to this...

Although I do not think the domain infringes on your mark I would be willing to transfer it out for a small fee of $250 to cover my overhead expenses.

Now in most cases this is much cheaper than hiring a lawyer and if they want the domain they will pay the small fee. You can adjust the amount as you see fit but don't get greedy.

And whatever you do shut the heck up, say nothing to try and justify the domain or anything else, just respond with the one line and that is it. Anything you say can and will be used against you and this is too cheap for them to undertake a long legal matter.

thats how i responded to Instagram and i never heard another peep out of them again

 

[falez]

Thanks, I already agreed to transfer them the domain but haven't heard back yet. Definitely not worth it to fight it in my opinion given their stature in the industry and their long standing history. I mean the url itself "Music123.com" is trademarked in addition to the term "Music123".

The domain originally had a landing page hosted by SquadHelp with just "make an offer" on it. Should a lander not even have that? In the email from the lawyer, he said Guitar Center did not authorize the trademark for commercial use. Though again my original lander did not have any ads or mention music services or equipment.

at least in canada...

1. you cannot trademark generic terms for your own industry (e.g. you cannot trademark 'music' if youre a company in the music industry).

2. if youre not using it commercially, a trademark violation cannot take place because trademarks are to prevent commercial infringements.

i recently spent days reading legislation pertaining to trademarks in canada. i am sure there are more points to be made, but i cannot remember any more now.

 

[Mike Goodman]

@falez has nailed it for the way it works in the UK, and in most other countries I am aware of, in the two posts immediately above this one. I'm not going to copy them here, they're easy enough to read where they are.

My understanding is the USA prefers a system of case law, so things are not so clear until they are tried in court.

However, there is a consistency here. Countries cannot effectively trade with one another unless commercial law behaves similarly across borders. Large American corporations have a habit of bullying their way around by waving bits of legal paper threats at smaller concerns, who in turn prefer to avoid such engagements. That behaviour is now emulated elsewhere. They tend to be no more than that. Threats. Vacuous. Empty. Lacking substance. Merely testing for a reaction in their favour.

The USA legal system, on the other hand, is overall open and fair. The system and the people in it are honest and the law is seldom open to abuse. I don't believe the legal firm in question here would be prepared to waste money pursuing the matter if the OP simply waved two fingers at them.

Better still, it's an opportunity for a quick and easy sale just by following @falez' earlier suggestion.

Therein rests my case m'lud. The OP must do as he sees fit. I am not a lawyer so this cannot be construed as legal advice, just my twopenn'orth.

 

[rayman617]

So far there has been no response to my offer to transfer ownership of the domain to them.

 

[Goku]

Just sell it to them at whatever price they are ok with & move on.

Anything above $15 is your profit anyways :D

 

[Bob Hawkes]

While music is generic, Music + 123 was (somewhat surprising to me) seen by the trademark office as worthy of a trademark for various categories in music (see my earlier post with a quote from the TM). That seems to cover much of the possible use of this domain name. It is not a matter of rolling over because of size of the company, but rather they secured a TM well before this domain registration, even if we disagree whether they should have been able to, and therefore it seems to me unwise to try to fight that. Save your fights for cases where your case is really strong and the worth of the domain name is great, in my, nonlegal, opinion.
Bob