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

[Allysin]

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).

 

[Micklepickle]

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.

 

[enlytend]

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?

 

[MapleDots]

I had a similar situation where I got a warning letter. I considered most options in this topic but decided to try something completely different.

I responded back and said I disagree and the registered name does not infringe with my intended use. I also stated the domain was not in my immediate plans to develop and that I had other domains with higher development priority. I stated I could be convinced to release the domain for a token purchase fee of $1000.

I stated that the odds of them successfully fighting me are 50% at most and even then they have to prove I had intent to harm their company to collect any damages. I told them the most cost effective way for them to acquire the domain was to pay a token fee. I explained that this is the equivalent of a couple hours cost for the average corporate lawyer and that it would save the company a lot of money as opposed to litigation.

They sent me another legal letter I had to sign that stated I give up all claims to the domain name for a fee of $1000.

They emailed me back just over two months later and bought the .ca version for the same amount of money when they realized I owned it as well.

Sometimes it is cheaper to go with a small payout and cut your losses.

Worked for me, and quite honestly if they had emailed me I would have sold both anyways because I had them scheduled to drop. I loved playing the odds right to the bitter end.

 

[XYZdotCLUB]

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 )

 

[zurc.net]

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?

 

[Silentptnr]

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.

 

[gilescoley]

If I owned Oogle glasses and google threatened me you are damn right I would try it.
If I owned Goggles glasses I would also try it.

This is why us domainers get a bad name, we are already frowned upon by a lot of businesses out there, rather stay away from trademarked names or anything close to TMs. Its just ridiculous and stupid that people go and register Goofle.com or Mivrosoft.com and think its ok for them to do that. Squatters are also frowned upon here at NP, so its just not worth your reputation in this business. Fighting andselling a TMname for $1000 is just silly, you might win but its not the way to do business, you might want to sell a name to them one day, Im sure they will remember what happened.You reputation is everything in this game and because its online and no face to face contact is made, its even more crucial to act with integrity and professionalism in all your dealings

Its really and simple and just a bit of common sense is needed. If its a company name and they have it trademarked, don't register it, and dont register anything similar to it thinking the name will be worth something or you might get typo traffic, it wont be and you will end up dropping it anyway.

Good luck to the OP in whatever he decides

 

[Arca]

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.

 

[Hypersot]

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.

 

[enlytend]

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.

 

[WhoaDomain.com]

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?

 

[WhoaDomain.com]

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

 

[decades80]

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.

 

[enlytend]

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.

 

[MapleDots]

@Avtar629 Trick is to keep the amount very low to not make it worthwhile to pursue.
It was not blackmail, they contacted me and I simply stated I had no immediate plans to develop and they could acquire for a nominal fee.

@decades80 - it was a big corporate company

 

[Kate]

Possibly, if you run a dealership for example. Some TM holders allow affiliates to use their brand names in domain names, others disallow it. It's better to have prior permission though.

 

[gilescoley]

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?

 

[WhoaDomain.com]

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?

 

[decades80]

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.

 

[MapleDots]

mike rowe soft - traded for an x box

Trust me it can be done - each situation is unique

If I owned Oogle glasses and google threatened me you are damn right I would try it.
If I owned Goggles glasses I would also try it.

gog·gle
ˈɡäɡəl/
verb
3rd person present: goggles

1. 1.
   look with wide open eyes, typically in amazement or wonder.
   "“What in the world are you goggling at ?”"

noun
plural noun: goggles

1. 1.
   close-fitting eyeglasses with side shields, for protecting the eyes from glare, dust, water, etc.
2. 2.
   a stare with protruding eyes.

If I owned google glassware I would probably give it up.

 

[Micklepickle]

Actually its not so complex.

Hmmm...interesting perspective, but in actuality, it's not that simple. Anything to do with IPL is not that simple and many factors are typically in play.

There are so many elements to consider, that any action or counteraction taken on the part of proposed trademark infringement will require a lot of research and reference, meaning it's a very complex area of law. Off the top, you have the Lidham Act, UDTPA and of course the likelihood-of-confusion test (applied by the courts - commonwealth law), among the other treaties such as The Paris Convention, Mandrid Protocol and the Trademark Law Treaty (TLT), followed by example after example of case law.

A simple aspect such as geography has the potential to have massive impact: does the mark have significance in their region, are they a “first to file” country (ref: Toyota vs Prius.), the foundation of the trademark in question (registered products/services: wares), timelines of registrations/filings, and so on.

The point is that it's not as simple as you claim, but maybe that's just from the perspective of someone who actually studied this discipline (IPL). I found it much more complex than you suggest.

Anyway...it's not a topic I enjoy discussing in a forum, and I always say the same thing...unless people have studied it in a formal academic setting, its a topic best left for the professionals who have. Interpreting law isn't as simple as one might think.

If anyone is having an issue with a potential infringement action, do the right thing and contact an IPL expert. It's the cost of dong business.

In fact, I believe it's prudent that all 'professional domainers' either have a firm on retainer or at the very least signup for a CyberLaw course at your local college or night school. I personally believe that it's just good common sense to have a familiarity with all business law, but at the very least, if you can't afford the time or financial costs to take business law courses, at the very least take an introduction to interpreting cyberlaw and the basics of IPL.

And for you budget minded domainers, North American based, go find a service like PrePaid Legal Services. You can find them with limited monthly budgets (sometimes as low as $25/mo), they provide document review services (so many documents per month), in-person/phone consultations (so many hours per month) and then discounts on their services should you need to escalate matters further. Many larger firms are part of these umbrella services. Prepaid legal are ideal for those of you who can't afford to place a retainer and you don't have a couple of thousand or an extra 5 to 10 hours/week to study IPL. A prepaid legal service would be perfect for you. Due diligence. Be smart. Be prepared.

But what do I know, I'm just a simple chimp enjoying a smoke. It's past my bedtime.

@Avtar629 haha How are you? How's the health? The last we spoke you were in the hospital a few months ago. I hope everything is back to normal with your health and 2017 has started well.

 

[gilescoley]

@MapleDots

We are not talking about AppleKit or AppleSauce, that would be 100% fine provided there is no TM on the phrase, as it all about usage

I am not assuming anything, you posted the example not me, you already said if you owned "Oogle Glasses" you would fight them, that is the part where you would have any issue (

)

Anybody can see the intent here, so I am not referring to AppleSong, AppleKit, AppleSauce etc etc, they If you have a look, I made it clear in my first post where you would be infringing on a TM. Post it in the legal section and ask the question and there are some highly regarded domain legal experts that make some comments.

Either way you are on a domaining forum and the last thing you want to do is to accuse members of being squatters.

I say it as I see it on here and most members will, if people say they will fight a UDRP when you can obviously see their intent and bad faith, then that how it is. Its just advisable to stay away form names that might be infringing, rather than getting something close to a TM and trying to sell it to the TM holder.

 

[gilescoley]

Ok, good luck with that, but we see this all the time on here, anybody can see the intent and I can assure you that using the example I mentioned, you wouldnt win.

 

[MapleDots]

Mine were direct hits on a business name but I was using them for different purposes, that is allowed under the law.

Example

Prestige Auto Service

Prestige Auto Service 1994

Both are legal and Prestige one lost the case against Prestige #2 even though prestige #2 only uses the 1994 on official legal documents.

Factual in Canada

It all depends, each case is unique. I would bet bottom dollar that a swimwear company that registers a name like OogleGlass and says it is a fog free set of goggles would be in no danger of losing against the google glass trademark. So if I said I was developing a use for OogleGlass I would certainly not mention it to Google. If asked I would say it is under development for a different purpose than what Google is using it for. Only at the very end, when I was presenting my case, would I divulge my information. Anytime you deal with a UDRP the less you tell the claimant the better off you are. Divulge what you need to when the time arrives. Google must build a case against you, if you give them no ammunition they will have a hard time making a case.

So you see, still not cut and dry.

PS. Of course all bets are off when some newbie registers GoogleGlassWear.com

 

[gilescoley]

I would bet bottom dollar that a swimwear company that registers a name like OogleGlass and says it is a fog free set of goggles would be in no danger of losing against the google glass trademark.

As I said from my first post, its about usage, intent and bad faith