I got my first TM infringement e-mail!

[Jimmy Changa]

Yes, I feel happy now. I registered a domain typo of a very well known insurance agency just two days ago and already received an e-mail demanding...

"...You are directed to immediately cease and desist from using the XXXXXXXXX registered trademark and the XXXXXXXX trade name, or any
misspellings, as your domain name..."

This e-mail is probably just a form e-mail linked up with GoDaddy or something. It came from the Senior Corporate Counsel, after all.

Any tips on how I should respond? BTW, the site is parked at Sedo and has gotten one hit so far...lol

 

[slaughterbeck]

I don’t believe you have much choice in the matter since you yourself believe it to be a typo. Don’t mention that to anyone and politely respond by letting them know you want to handle this matter in the appreciate fashion, whatever they might suggest that to be. Just my .02.

 

[dabb]

Wow, that's record time for getting "caught". They must monitor registrations from a list of predetermined typos on a daily basis. I'd just cancel the domain and kindly let them know you did.

 

[VisualArtistFrankBonilla]

I agree

Yup, tell them you will gladly had over the domain to them. If it is an actual TM infringement, it is not worth the $X-$XX you paid for it. By the way, I have received 2 actual letters in the mail before myself. I gladly gave them up, let them expire, said I was sorry, and yes sir yes sir!!!

Frank

 

[abdulmueid]

I dont understand, why dont people who keep moaning about TMs register the domains at the time of starting their businesses... Why give hassle to people who legally paid for the domain???

 

[HFear]

I dont understand, why dont people who keep moaning about TMs register the domains at the time of starting their businesses... Why give hassle to people who legally paid for the domain???

There are alot of different combinations of typos that can be registered, and it's just not worth the money to go through the list and register them all.

 

[dsforsaken]

well if the company really doesnt want people to use the typos,IMO they should register them all or leave people alone

 

[Jimmy Changa]

I figured most of you would suggest I tuck my tail and run. I'm not keen on that idea though. I'd much rather get shot while fightin'. If someone here has experience with working with a situation like this in order to work it to my advantage, please PM me. In other words, if anyone has successfully negotiated a sale in a case like this, let me know.

BTW, I see that several other tpos of this company are currently sitting on parked sites.

 

[Sohil]

I figured most of you would suggest I tuck my tail and run. I'm not keen on that idea though. I'd much rather get shot while fightin'. If someone here has experience with working with a situation like this in order to work it to my advantage, please PM me. In other words, if anyone has successfully negotiated a sale in a case like this, let me know.

I don't think you will be able to negotiate a sale with the company due to couple of reasons. First is that domain is an typo and second the company knew that this typo domain is avaliable for registration but they didn't bother to register it as they were probably not interested in it so I don't think you will be able to get anything more than the cost of registration. Good Luck!

 

[briman1970]

If you're inclined to be a pain in the ass... Tell them you'll sell it to them for $100. If they disagree, develop the domain into a parody site. Call them and tell them that parodies are protected by the First Amendment. Wait for the summons. If anyone who you don't recognize comes to your door then don't answer it (or let someone else get it). When they finally trick you into taking a summons, then call the company and tell them you'll cancel the domain if they dismiss the case. If they don't dismiss the case, then cancel the domain a few days before court. Tell the judge you canceled the domain and called them several times to let them know.

Be prepared to spend some money on court costs if you take this route. If it were me I'd just sell the domain on eBay (with reg. fee as the starting bid) and warn the buyer about the trademark infringement.

Bri

 

[RJ]

Wow, that's record time for getting "caught". They must monitor registrations from a list of predetermined typos on a daily basis.

Yep, there are several services that monitor daily registrations and notify TM holders when someone registers a domain containing their mark. This may be why this domain (which contains the trademark in full) was caught before some of the typical typo domains that have missing or reversed letters in them.

I figured most of you would suggest I tuck my tail and run. I'm not keen on that idea though. I'd much rather get shot while fightin'. If someone here has experience with working with a situation like this in order to work it to my advantage, please PM me.

What kind of deal do you hope to get out of the situation? Its not unheard of to settle before reaching a formal dispute, but you have two things working against you here.

First, its an obvious typo of their domain so it would be difficult to claim you had any legitimate reason for registering it, other than to capitalize on typos of their domain.

Second, you have it pointed at a "for sale" page which has automatically proved you registered the name in bad faith.

The only thing in your favor is that it costs $1500, plus legal fees, and takes a few months for them to go through the dispute process. You can tell them you would be willing to turn over the domain for a nominal price (maybe $10? $40? 100?) to avoid a dispute, but really you have no chance at scoring a big sale out of this.

Most self-respecting companies would rather just go through the UDRP process, and sue if needed, than to gain a reputation for paying off squatters. You can search and read past UDRP cases to see if this company has a history of using UDRP.

Good luck,

RJ

 

[Jimmy Changa]

Thanks RJ, for your advice.

Well, I sent my response e-mail. I'll let you know how it goes.

 

[Venolus]

Please do..we are all facing similar issues

 

[CrazyTech]

Would like to hear how this proceeds as well. I don't deal with trademark names but I think its probably best that you either drop the domain or settle for a very small fee (ie: reg. fee)

 

[GeneCosta]

Yeah, at best try to come away with a few extra dollars haha. If you only got one hit from it especially. I could understand trying to seek more otherwise.

 

[dweeb]

well if the company really doesnt want people to use the typos,IMO they should register them all or leave people alone

i totally agree. won't they be wasting more time, effort and money by waiting for some one else to register it before asking them to give up the domain? its strange really.

 

[Zeeble]

I figured most of you would suggest I tuck my tail and run. I'm not keen on that idea though. I'd much rather get shot while fightin'. If someone here has experience with working with a situation like this in order to work it to my advantage, please PM me. In other words, if anyone has successfully negotiated a sale in a case like this, let me know.

BTW, I see that several other tpos of this company are currently sitting on parked sites.

If they contact you, and it really is a close typo, then you have NO case.

 

[Jimmy Changa]

In case you don't know. Whether or not I have a case doesn't matter a whole lot right now. That will only matter if we enter UDRP proceedings.

 

[Dave_Z]

In case you don't know. Whether or not I have a case doesn't matter a whole lot right now. That will only matter if we enter UDRP proceedings.

So you're actually willing to go thru with it for the experience, huh? :hehe:

 

[labrocca]

If they contact you, and it really is a close typo, then you have NO case.

Zeeble I see you attempting to offer advice here but realistically it's almost always poor advice.

There is almost always a way to win any case. It's just how good of a lawyer do you have most of the time.

 

[Jimmy Changa]

I have no lawyer and am not willing nor able to hire one. It is as Dan pointed out, for the experience.

 

[andriegel]

I have gotten a few:
In one case, it was a credit card online access typo- they contacted my registrar in just a couple of days post registering, and then my registrar contacted me. Since I knew it was some pretty big guns on the other side, I said "it was registered in error".
Whammo- two days later, it was "reversed" (breaking the 60 day rule)

On some others, who are pretty big guns, I have simply ignored the letter from counsel and have heard nothing more.

Question: If it costs $1500 to file a claim, does the claim itself ask for costs to be recaptured? (I doubt it) Otherwise, sometimes a TM'd name is worth the $6 gamble.
In most cases, I only try to profit off of the sale of their own products anyway, except in the case where I have "placeholder" sites up for names like "bigcompanylawsuit.com", "nameofdruglawsuit.com", etc.

And as we all know, there are quite a few very large companies that tolerate TM violations in domain names as long as you are not flaming them.

good luck to all you dark-siders! :lol:

Andrew

 

[RJ]

I have no lawyer and am not willing nor able to hire one. It is as Dan pointed out, for the experience.

That's fine. There's no substitute for real world experience when it comes to this stuff. Just a word of caution if you decide to go through with UDRP on this. UDRP cases are a permanent public record. If someday in the future you have a case where you might actually have legitimate use for a domain, this past UDRP can and probably will be used against you to prove a pattern of cybersquatting.

 

[jberryhill]

Let's say my company name is ten letters long.

Subbing in any of 26 letters for any single letter yields 260 typo permutations.
Deleting any single letter is 10 permutations.
A single deletion combined with a subbed letter is 2600 permutations.

And so on. The number of potential typos of even a simple name yields a geometric progression of an astronomical number of domain names.

To sit there and say "They should register them all" is profoundly unthoughtful. Even if I spend $5000 per year policing new registrations incorporating typos, it is orders of magnitude more efficient than thinking I can "register them all".

And when I get tired of that, I will eventually get around to suing someone for the statutory $100,000 for no reason other than to make an example out of that person, as a warning to others.

Are you that person? Who knows. Go ahead and push it to find out.

 

[Jimmy Changa]

Well, this is all very educational. Believe me, I will not "push it" too far. I'm not that much of a troublemaker (just a little bit). I haven't heard back from the "affected" party as I'm sure this situation ranks very low on their to-do list.

I did not get into domaining to cybersquat, and after this will be much more careful with my typo registrations (This "companynamecom.com" Firefox typo is pretty obvious).

Do I understand you right andrew? I can go to GoDaddy and say it was registered in error?