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I got a "turn it over or else" kind of an Email. What to do?

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Allysin

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Hello everyone. I got my first ever threatening letter (please see below) and I was wondering if anyone would know what I should do? Any suggestions are greatly appreciated. I should mention that THEdomainIownDOTonline = ABCXYZ.online

THEdomainIown.ONLINE - Trademark infringement - AABBCCDDEE


Dear Sirs,

On behalf of our client XYZ International we ask your urgent attention to the following matter.

We have been informed that you have registered the domain name THEdomainIown.ONLINE.

ABCXYZ is the trademark of XYZ International. It has been in use for many years already as the name of their businesses in many countries worldwide.

XYZ is the world’s largest retail chain with over 12,000 stores in 42 countries namely Angola, Australia, Austria, Azerbaijan, Belgium, Botswana, Cameroon, China, Croatia, Denmark, France, Germany, Georgia, Greece, Hungary, India, Indonesia, Ireland, Italy, Japan, Malawi, Mauritius, Mozambique, Namibia, Netherlands, Nigeria, Norway, Oman, Poland, Portugal, Qatar, Russian Federation, Seychelles, Slovenia, South Africa, Spain, Switzerland, UAE, Ukraine, United Kingdom, Zambia and Zimbabwe. In many of these countries there are ABCXYZ stores.

See for instance in:
.........

Some of the registrations of the ABCXYZ mark are enclosed for ready reference. Note that there are many more all over the world. All owners mentioned in the enclosed list are partners of and often shareholders in XYZ International.

So with the THEdomainIown.ONLINE domain name registration you are infringing the trademark and company name rights of our client.

You are therefore urgently requested to transfer this domain name to our client.

If you are not prepared to transfer the domain name voluntarily our client shall not hesitate to take all steps that are necessary to have this domain name cancelled and ask for compensation for damages and legal costs for which all rights are being reserved.

We look forward to receiving your confirmation as soon as possible but no later than May 4, 2017.

After having confirmed that you will cooperate with the transfer we will ask the domain name manager of XYZ to contact you for the transfer process.

Yours sincerely,

name of the Dutch person

name of the Dutch person

European Trademark & Design Attorney / Associate Partner

This e-mail message is from N.V. Nederlandsch Octrooibureau or NLO Shieldmark B.V. or NLO bvba and is intended only for use by the addressee. The information contained within this e-mail, including any attachments or previous e-mails, is confidential and may contain confidential or privileged information. Consequently, if you have received this e-mail unintentionally, it is of the utmost importance for your own legal protection to notify us immediately either by telephone (+31-70-3312500), facsimile (+31-70-3527528) or by return e-mail to the sender at the transmitting e-mail address and to delete or erase this e-mail. Warning: In rare cases e-mail messages may not be delivered adequately. Therefore, if your e-mail contains important instructions, please make sure that we acknowledge receipt of those instructions.

All offers from N.V. Nederlandsch Octrooibureau, any requests for an offer and all agreements concluded and to be concluded as well as any other legal relationship with N.V. Nederlandsch Octrooibureau are exclusively subject to the General Terms and Conditions of N.V. Nederlandsch Octrooibureau, see ...... N.V. Nederlandsch Octrooibureau is registered with the Dutch Chamber of Commerce under no. 27263335, their General Terms and Conditions are filed under 27263335.

All offers from NLO Shieldmark B.V., any requests for an offer and all agreements concluded and to be concluded as well as any other legal relationship with NLO Shieldmark B.V. are exclusively subject to the General Terms and Conditions of NLO Shieldmark B.V., see ..... NLO Shieldmark B.V. is registered with the Dutch Chamber of Commerce under no. 24176200, their General Terms and Conditions are filed under 24176200.

All offers from NLO bvba, any requests for an offer and all agreements concluded and to be concluded as well as any other legal relationship with NLO bvba are exclusively subject to the General Terms and Conditions of NLO bvba, see ..... NLO bvba is registered in RPR Gent – Gent department under BE 0633692486.

The General Terms and Conditions can be downloaded or will be forwarded upon request. If applicable our services are regulated by IPReg (UK).
 
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The views expressed on this page by users and staff are their own, not those of NamePros.
Is the term you registered trademarked? Its easy enough to check. Is the name you registered the company name of the people that emailed you?
 
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Hi - Thank you for your reply. While I believe it may actually be trademarked in some European countries there is no record in the USPTO database (it says this: Sorry, no results found for 'abcxyz'. Try entering fewer or broader query terms.). The company who sent the Email claims they are representing them (NLO Shieldmark: office for trademarks, designs and domain names).

The bad part is that I have my company name listed in the Whois. The good part is the company has no assets and no income and I don't have any income whatsoever myself right now. But I think it makes them think they can sue my company for a lot of money. Would it make sense you think to remove the company name from the Whois now?
 
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I have similar issue. So watching this thread.

Doesn't tm usually boil down to the GOODS AND SERVICE by which the TM holder has registered?

Isn't this ultimately the flaw or Chink in the trademark armor?

As a trademark holder myself I "wanted" to register my company mark for Everything. To protect it from anyone who will try to use it for themselves.

But alas my TM lawyer explained how much that would cost per goods and services

And even then I would need to PROVE that I actually do sell those goods and provide the services of which I want to register my trade mark under.

Trust me the list of goods and services is extensive! You'd pay alot each year for regging all.

But that's not even the big issue.

The bigger issue is whether you CAN reg those goods and services under your mark.

Unless you are actively I repeat actively trying to benefit from their mark like selling or providing goods and services and pointing the offending domain to website containing these goods and services. I believe (and don't quote me on this) it would be very difficult to prove malicious intent in court for simply registering a domain.

Unless of course the domain is not generic. Like obvious tm where there is no possible other use than by the TM holder like

Microsoft
Facebook
Xbox
eBay
Instagram
Snapchat

And just check all the names over BrandBucket.

Of course despite all this I guess a company with unlimited resources could still come after your like a bully. Even if they think they might or can't win.

Then it becomes a case of who has more money to last.

In this scenario most domainers really can't win.

Also check wipo website and look up that domain of yours keywords

See if this company has won or lost any cases against offending domains.

GL!

Same boat here.
 
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Removing info isn't going to help you - they already have what they need.
USPTO is only for US trademarks.
If you have no assets, how are you planning to defend if they sue you?
If you can't pay a judgement against you, I believe it becomes debt.

While nobody can give you specific advice without the details:
  • If it's a well-known brand and you registered it in .online, chances are you're screwed.
  • If it's on a page with ads for the brand or their competitors, chances are you're screwed
Why did you register this in the first place?
 
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Unless you reveal what is the TMed name in question, I don't think anyone here can help you.
If you don't want G to index it, just paste a screenshot with the name.
 
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Removing the Whois will not change anything about the fact that you (your company) are the owner of the domain.

Please note that these Dutch and European IP agents search the Whois databases on a regular basis for copyright / model / IP / Trademark and other infringements.

And your "domainname" does not stop at the border of the US, so if there are infringements on European, African or other continents I would still suggest you to take your loss and get rid of the domain before you get multiple threatning letters.

If you want to do some more research maybe visit these IP / TM / Patent sites:

- espacenet .com
- register .epo .org
- webaccess .wipo .int

(Need to upgrade :xf.frown:)
 
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Removing info isn't going to help you - they already have what they need.
USPTO is only for US trademarks.
If you have no assets, how are you planning to defend if they sue you?
If you can't pay a judgement against you, I believe it becomes debt.

While nobody can give you specific advice without the details:
  • If it's a well-known brand and you registered it in .online, chances are you're screwed.
  • If it's on a page with ads for the brand or their competitors, chances are you're screwed
Why did you register this in the first place?


Quick question about this.

Is surrendering the offending domain to them thee ONLY option?

Couldn't you just delete prior to urdp?
I believe once a urdp is filed it's too late to delete right?

And are damages really always an option?

Do courts really allow this? When all the domainer has to do is hand over the domain?

I think registrar's are smart enough to point TM issue domains to content unrelated to the tms goods and services?
 
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Why would you delete it rather than surrendering it? You lose the domain either way, why not be an adult about it?
Depending on what the OP is doing with the domain, they might have a case to sue for damages. If you cant' afford to defend yourself, probably best not to go there.
Registrars can't monitor every trademark worldwide, even if they could there are nuances to every situation. Besides - for all they know, the registrant may be associated with the company in question.
 
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Unless you reveal what is the TMed name in question, I don't think anyone here can help you.
If you don't want G to index it, just paste a screenshot with the name.
Just do a google search for 12,000 stores in 42 countries to see which company is threatening to sue. Not sure which TM OP is possibly infringing on though. Doesn't appear to be their main brand.
 
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Why would you delete it rather than surrendering it? You lose the domain either way, why not be an adult about it?
Depending on what the OP is doing with the domain, they might have a case to sue for damages. If you cant' afford to defend yourself, probably best not to go there.
Registrars can't monitor every trademark worldwide, even if they could there are nuances to every situation. Besides - for all they know, the registrant may be associated with the company in question.

It's not about being adult about it. It's about having the right to delete or having not right to delete.

On the other hand a deleted domain goes back to registrar and then they can send it to auction where everyone can bid and get it? Perhaps other tm holders for that mark.

Is this why most tm holders lawyers resort to scare tactics to acquire the domain for free?

To avoid a free for all auction setting?

Or do tm holders have immediate rights to the delete domain and can prevent registrar's from sending a deleted domain to auction?

I've read this happening in wipo cases.

I figure threat for a threat.

Perhaps cheaper if they simply make an offer if you say to satisfy the cease and desist you will simply delete?
 
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If its the company / name that I am thinking and its that singular word.... it's a dictionary word.. with many generic uses.... Just figure out how important it is to you, before moving forward... but definitely seems like scare tactics... Did you have it parked? What were you using the name for?
 
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I registered the name on March 3rd so I didn't have time to develop it yet. I really like the name so I even registered it on a different TLD level before (I still have that). I wonder if I should put a private WHOIS on that now (I mean the other domain I own with the same letters before the dot?) I never wanted to infringe on somebody else's trademark. The fact is - this company is doing business in specific markets that are NOT interesting to me. And the service I want to offer through that name has nothing to do with the products they sell.

Another thing I find interesting is - while at this time - the following TLD's are registered:

ABCXYZ.at
ABCXYZ.cz
ABCXYZ.de
ABCXYZ.dk
ABCXYZ.in
ABCXYZ.pl
ABCXYZ.ro
ABCXYZ.ru
ABCXYZ.sk

ABCXYZ.com
ABCXYZ.net
ABCXYZ.org
ABCXYZ.info
ABCXYZ.biz
ABCXYZ.eu
ABCXYZ.store
ABCXYZ.shop

....one of these legacy TLD's have NOT been registered at all (it was registered previously but was deleted) - so I picked it up TODAY as well. Why would you send someone a threatening letter and NOT cover the other LEGACY TLD's before that? That makes NO sense to me!

Also - one of the websites has the following notice on there:

"Creating a project abcxyz.cctld suspended...
Ready to cooperate... "

What is your take on that?
 
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Unless you have been served some legal papers or udrp, you could just ignore it. As long as you are not damaging the brand, I don't see any liability. It is not a crime to sell domains for a profit.

If however, it is a trademarked name, and you knew this, it is clear that you should surrender the name. Imagine you had a business brand, and that you worked hard to build it. Would you like someone to just register your business name and possibly hurt or create confusion about your brand?

Anyway, sounds innocent enough. I would probably turn it over. Doesn't sound like there's any payday ahead for the domain anyway. If your only motivation is that you "really liked" the domain, then it's just not worth a fight.

It would be different if it were a 3 letter .com that you had owned for years.
 
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....one of these legacy TLD's have NOT been registered at all (it was registered previously but was deleted) - so I picked it up TODAY as well. Why would you send someone a threatening letter and NOT cover the other LEGACY TLD's before that? That makes NO sense to me!

What is your take on that?

Are you serious? You registered 1 more in other extension? They are not interested in domains which are not registered, BUT are very interested in TM infringement domains which are.
 
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Someone please explain to me what is the worst thing that could happen? From what I understand - if someone hits you with a UDRP - it's not automatic that they are going to win. And even if they do win - where is it written, that I should be liable for paying the legal fees? I have a P.O. Box and a virtual phone number on the Whois listed in a country where I used to live (I don't physically live there anymore and I never plan to return there). So I ask again - what (other than the UDRP panel forcing the domain to move from my account to theirs) can actually happen? Thank you everyone for your opinions and ideas! ;) I appreciate you... PS: Decades80: There seems to be something wrong with the fact that they are "very interested in a Trademark infringement" rather than covering their basic legacy TLD's, wouldn't you agree? I have never done anything to hurt their brand in any way!
 
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You are not right, you just seek for trouble as I see it and now you have it double. The fact that domain is semi generic means nothing. Booking.com is generic name, but its heavily TMed. When domain is registered you could actually do something with it, fwd. the users to duplicate website to steal the passwords or put ads on which would violate the TM. When the domain is not registered such fear is non existing.

To have fake whois is not an option and I believe its against the ICANN rules. In worse case scenario if they bring successful UDRP decision to lawsuit, they could have legal right to recover your real personal information from the registrar (credit card you used or verified Paypal)
 
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I don't "seek for trouble" - none of the things you mentioned in your last message would actually happen even if the lawyers wouldn't send me the threatening Email! I have not profited 1 penny from any of those names! So it would be impossible to prove ill intent in a UDRP or court situation. While I understand companies need to protect themselves against bad publicity or someone misusing their name/using their name to make a profit - this is clearly NOT the case! What I'm trying to defend myself against is the big companies with large legal budgets thinking they can do anything and take everything! The name I registered was likely available for around 3 years....Why did they NOT register it if they are so interested in it??
 
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So explain them, that you didnt have any TM infringement ads on the domain, you were not aware of their TM, and you will develop the domain in different sector like you already told.
Maybe they will let it go than, if you had some other plans with it and there were at no point any Google ads on it. If they were, even from the registrar itself and they made a screenshot, your chances of winning this are close to 0.
 
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Don't waste your time asking TM issues here, 99% of these people have no clue what they babble with the respect to IP law, simply consult an IP lawyer...even if only for the initial 'free' consultation. You haven't received a UDRP so at this point I wouldn't put much stress on it, it's an idle threat.

judging by your previous posts, you plan on developing this domain for your own business, correct? Or have I misunderstood you and in fact you are planning to sell this domain name?

And if you choose to develop the business model, it's in areas which are not related to the active TM's of the threatening company, correct? In other words, completely unrelated to their active trademarks/servicemarks? If this is the case, but without knowing full details, IMO you haven't much to worry about at this point.

It's a much (MUCH) more complex issue with many (MANY) more aspects that will be put into consideration before a legal challenge would be granted.

Calm down, put some logical thought into it, consult an IP lawyer and build your strategy.
 
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Don't waste your time asking TM issues here, 99% of these people have no clue what they babble with the respect to IP law, simply consult an IP lawyer...even if only for the initial 'free' consultation. You haven't received a UDRP so at this point I wouldn't put much stress on it, it's an idle threat.

judging by your previous posts, you plan on developing this domain for your own business, correct? Or have I misunderstood you and in fact you are planning to sell this domain name?

And if you choose to develop the business model, it's in areas which are not related to the active TM's of the threatening company, correct? In other words, completely unrelated to their active trademarks/servicemarks? If this is the case, but without knowing full details, IMO you haven't much to worry about at this point.

It's a much (MUCH) more complex issue with many (MANY) more aspects that will be put into consideration before a legal challenge would be granted.

Calm down, put some logical thought into it, consult an IP lawyer and build your strategy.

hey there Chimp! Good to see you again! lol So everything you've said seems contingent on where the OP has "Actual" plans to develop.

but let's be honest. most of us on here are..for lack of a better word Cybersquatters.

does that fact that we can't prove concretely that we have an "Actual" plan to develop our domains be grounds to losing a Cease and Desist if it happens or before a C and D is started?

inquiring minds wanna know.

because....what do I know? I'm just a chimp!

no! Wait! that's your line! lol
 
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Don't waste your time asking TM issues here, 99% of these people have no clue what they babble with the respect to IP law, simply consult an IP lawyer...even if only for the initial 'free' consultation. You haven't received a UDRP so at this point I wouldn't put much stress on it, it's an idle threat.

judging by your previous posts, you plan on developing this domain for your own business, correct? Or have I misunderstood you and in fact you are planning to sell this domain name?

And if you choose to develop the business model, it's in areas which are not related to the active TM's of the threatening company, correct? In other words, completely unrelated to their active trademarks/servicemarks? If this is the case, but without knowing full details, IMO you haven't much to worry about at this point.

It's a much (MUCH) more complex issue with many (MANY) more aspects that will be put into consideration before a legal challenge would be granted.

Calm down, put some logical thought into it, consult an IP lawyer and build your strategy.

Actually its not so complex. UDRP decision are in 98% quite simple. In order to prove bad faith, normally the following equation takes place. Similar domain name to TM holder + TM infringement ads = BAD FAITH.
But I agree that consulting an IP lawyer would be the best choice. At least you can reveal the domain name in question to him.
 
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Actually its not so complex. UDRP decision are in 98% quite simple. In order to prove bad faith, normally the following equation takes place. Similar domain name to TM holder + TM infringement ads = BAD FAITH.
But I agree that consulting an IP lawyer would be the best choice. At least you can reveal the domain name in question to him.

so to prove bad faith those TWO must be happening together?

and not just "registering the Name of TM Holder"?

if that's the case why do these lawyers still proceed with such things knowing they don't have both pieces?

I guess because it's no big deal to them. just a simple standard C and D email and maybe snail mail.


if a URDP does happen. what's the worse case scenario? if all it means is surrender your domain. I'm ok with that. but there are horror stories like surrender your domain plus Damages.

how are Damages decided? is it up to the court? or the complainant?

if the domain was never maliciously used by the owner just pointed to a parking page or blank page. how can there be damages?

or are the "damages" the lawyer fees of the TM holder?
 
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Allysin "The name I registered was likely available for around 3 years....Why did they NOT register it if they are so interested in it??:

I would not bring that up as it is irrelevant. trust me. I've said something like this before in the past and it means nothing and carries no weight.
 
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From what I understand - if someone hits you with a UDRP - it's not automatic that they are going to win. And even if they do win - where is it written, that I should be liable for paying the legal fees?

You aren't. A lawsuit would be a separate action.
However it's bad for your business reputation and could count against you in a future UDRP. Let's say you have a valuable generic domain 5 years from now and some company with a dubious claim tries to get it via UDRP - having a past history ofcybersquatting may influence the ruling.

What I'm trying to defend myself against is the big companies with large legal budgets thinking they can do anything and take everything! The name I registered was likely available for around 3 years....Why did they NOT register it if they are so interested in it??
A big company like that has no use for a .online and they aren't obligated to register every possible infringing domain.
They ARE expected to police their mark against anything that would cause confusion or jeopardize it's ability to uniquely identify them as provider of the g&s they offer.
 
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