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

 

[andriegel]

I don't know if GoDaddy will "reverse" the registration or not-
I was using a different registrar.

Andrew

 

[Dave_Z]

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

You can try if the domain was registered within the first 3-5 days. But don't
push your luck, either.

 

[Jimmy Changa]

Sure is alot of warnings of pushing going on. :lol:

 

[DNQuest.com]

Please do..we are all facing similar issues

This is a completely untrue statement, not all of us register infringement domains

This statement only applies to the stereotypical cyber-squatter

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).
QUOTE]

Ummm, wouldn't all typo domains be considered registered in bad faith in one form or another? Like to capture someone elses traffic? lol

The best thing to do here is give them (not sell) the domain and chalk it up to a bad registration. It is much better than being branded a squatter and possibly lose $100,000.00.

 

[andriegel]

If you swim with the sharks, use them- don't fight them

The best thing to do here is give them (not sell) the domain and chalk it up to a bad registration. It is much better than being branded a squatter and possibly lose $100,000.00.

AGREED
It's a numbers game, baby! Remember, we are the little fish eating the plaque from the shark's gills. Why go up against the shark? Scurry away and find some other easy tidbits in this vast ocean of opportunity.

 

[Jimmy Changa]

I am beginning to feel the same. Just in that it's not really worth my energy. Seeing as I'm not going to win, so I might as well focus on something more constructive.

I have yet to hear back from the "affected party".

 

[barefoottech]

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

You have two outcomes possible in court case ,without Legal counsel
1/ You Lose & it costs you.
2/ They Win & it costs you.
It is that simple
Put the Domain name on the ground and run away from it.
The Lost cost of the Reg Fee. will be less than cost of the headache tablets while you go through the messy legal hassles.

 

[Jimmy Changa]

I could simply drop it, I suppose. Make them register it themselves if the want it so bad. *shrug*

 

[monaco]

What if the registration predates the trademark? Like if I register a domain with my last name in it, and some company establishes a trademark with my last name in it 2 months after I register it (let's assume I'm using it for commerce purposes, but have not trademarked the name) and comes wanting my domain name...does he have a case?

 

[Jimmy Changa]

At the risk of this thread being indexed, here is the full e-mail I received for the benefit and education of all you NamePro members. Just so you know, I've already cancelled my registration of the typo domain LibertyMutualCom.com

~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~

Dear Mr. "Changa ":

We have been notified that you recently registered the domain name
www.LibertyMutualcom.com with GoDaddy Software, by using our federally
registered "Liberty Mutual" trademark and that you have set-up an active
website which purports to offer Liberty Mutual insurance products.

The term "Liberty Mutual" is a federally registered and protected
trademark of Liberty Mutual Insurance Company, a Massachusetts domiciled
insurance company which conducts business operations in 19 countries and
the fifty United States. We have used the name "Liberty Mutual" in
connection with a variety of products and services in the insurance and
financial services industry in the United States since 1917 and
internationally since 1993. The name "Liberty Mutual" is a federally
registered trademark on the Principal Register of the United States
Patent and Trademark Office, Registration No. 1405249 (August 12, 1986)
and Registration No.2734195 under International Class Code 036 for
financial services. These federal trademark registrations provide
Liberty Mutual with nationwide protection of its trademark in the United
States as well a federal cause of action against infringers under the
Lanham Act (15 United States Code, Sections 1051 - 1127).

The term "Liberty Insurance" has been and is currently used by Liberty
Mutual and several of its subsidiaries as a trade and brand name for
products and services for several years including licensed insurance
subsidiaries in the U.S and internationally, including: Liberty
Insurance Corporation (since 1984), Liberty Insurance Compania de
Seguros (Spain), Liberty Insurance Company of America, Liberty
Insurance Underwriters Inc. (NY), and Liberty Insurance Holdings.

Your domain name and accompanying website infringe on our trademark and
are confusingly similar to our www.LibertyMutual.com website and several
other domain names and websites which we have owned and operated since
1996. Your website prominently uses and displays our federal trademark
in the domain names and text of the website and in the metatag
information and illegally uses our trademark to mislead consumers and
divert legitimate traffic from legitimate Liberty Mutual websites. You
are neither an appointed agent, broker, or partner of Liberty Mutual and
do not have any license or authority to use our trademark. There are
also no records at the Colorado Insurance Department to indicate that
you are licensed to solicit or sell insurance. Your registration of a
known trademark as a domain name and your use of it for a website are
violations of U.S. federal law and your Registration Agreement with
GoDaddy.

The Liberty Mutual trademark is widely known and virtually any trademark
or Internet search on the name "Liberty Mutual" leads to our main
company website, www.LibertyMutual.com. Your recent registration (July
17th, 2005) of the trademark means it is likely that you were aware, or
should have been aware, of the pre-existing Liberty Mutual trademark,
domain names and websites, and therefore your registration of a federal
trademark as a domain name constitutes a bad faith registration in
violation of the federal Anticybersquatting Consumer Protection Act of
1999 (15 U.S.C. 1125(d)(1)).

You are directed to immediately cease and desist from using the Liberty
Mutual registered trademark and the Liberty Insurance trade name, or any
misspellings, as your domain name. You are further requested to remove
any and all references to "Liberty Mutual" or "Liberty Insurance" or any
misspelling from any meta tags, HTML code, text, or content on your
website and to transfer ownership of the domain name to Liberty Mutual.

Your immediate attention is requested. Please contact me to confirm
that you are taking the steps necessary to comply with our requests.

Christopher Sloan
Assistant Vice President & Senior Corporate Counsel
Liberty Mutual Insurance Company
175 Berkeley Street
Boston, Massachusetts 02117 U.S.A.

 

[DNQuest.com]

What if the registration predates the trademark? Like if I register a domain with my last name in it, and some company establishes a trademark with my last name in it 2 months after I register it (let's assume I'm using it for commerce purposes, but have not trademarked the name) and comes wanting my domain name...does he have a case?

This has nothing to do with this thread. There is a search button you can use to find the many posts directly related to your generalized question. Do some research first. If you have specific questions, then start a new thread and ask.

 

[Joseph]

did they mention in the thread it was a federally recognised trademark.. Bah. They sound like bullies.

 

[jberryhill]

did they mention in the thread it was a federally recognised trademark.. Bah. They sound like bullies

They are one of the largest insurance companies in the United States, and there is no justifiable reason for registering that domain name. Domain names similar to financial institutions are regularly used for phishing and other financial scams, and they would have every right to turn this guy into roadkill.

 

[sunken]

Yeah, I wouldn't fight this at all. I would just take the loss and move on. Since you were using their name and selling their product through the site, they have every right to a cease and desist. The chance you take when you register a domain like that. Otherwise they could sue you and that would turn out much worse than <$10.

monaco:
If the name was registered before the trademark, while they could try perhaps to send you a cease and desist to scare you, they would lose in court and most likely the UDRP arbitration as well. Trademarks are very specific to the purpose. If you had a personal website with your last name and some company trademarked that last name for vacuum cleaners, they can't get you for using it for a personal site. Just as MS can't go around and start shutting down sites with Vista in the title that were created before their trademark took effect.

 

[monaco]

monaco:
If the name was registered before the trademark, while they could try perhaps to send you a cease and desist to scare you, they would lose in court and most likely the UDRP arbitration as well. Trademarks are very specific to the purpose. If you had a personal website with your last name and some company trademarked that last name for vacuum cleaners, they can't get you for using it for a personal site. Just as MS can't go around and start shutting down sites with Vista in the title that were created before their trademark took effect.

Thanks. I was searching for a solution on the boards, but I guess I wasn't formulating my question properly...

 

[EbookLover]

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

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'.

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

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 did not get into domaining to cybersquat

Tell that to the judge & see what happens.

Given all the quotes above, one could eaily conclude you are a cybersquatter for whatever reason (money, kicks, nothing better to do, ignorance, etc).

To say you are in this for the experience smacks of "newbie cybersquatter looking to get his feet wet".

In the future, realize that the man with the deepest pocket wins in a court of law, usually, given that man is not too cheap to higher a good lawyer.

Many of the responses you got here that were telling you to be a big shot and do this and do that but not to dereg the domain are coming from folks that are removed from the situation at hand. Therefore, it is easy for them to flex their muscles because no matter what happens in your situation, they will not suffer from it.ANd the most important thing you have to remember is that any one company can proceed as they wish. They do not have to send you a cease and desist letter first. They can file a lawsuit immediately. If they do, you will be out thousands and thousands of dollars. Then where will you be? All this over a $8.95 registration fee, nonetheless. Silly, to say the least.

 

[webmark]

monaco:
If the name was registered before the trademark, while they could try perhaps to send you a cease and desist to scare you, they would lose in court and most likely the UDRP arbitration as well. .

Thats not entirely true,

itunes.co.uk was registered before Apple started their download service however the owner lost it in a court case. I think he was using it to point to a music downloads site, not sure if he was using some affiliate code to point it towards itunes ( if they have an affiliate program ) or another similar service.

Thats a similar situation to what we would have here had this name been registered prior to the trademark registration.

I believe the former owner has appealed against the decision, not sure of the outcome of this....

 

[Jimmy Changa]

jberryhill: True. I got a bit carried away with the typo domain thing. Which is not really something I am keen on staying with. I am new to domaining and am learning. Hopefully I can learn without becoming roadkill.

zquest: I am not beyond admitting when I make a mistake. BTW, I made a mistake.

 

[limbo]

Question...

What if you registered that name outside the US? Could they come after you in a country like, say, Morocco?

If they were really mean to you it might be useful registering that name through a company in Iran (considering that Iran might have no real trade relations with the US).

Just wondering...

 

[Dave_Z]

What if you registered that name outside the US? Could they come after you in a country like, say, Morocco?

Well, if google got sued and eventually ruled against by a French court, what
you asked isn’t far behind.

To quote jberryhill from another forum:

That doesn't mean it's always easy to address those situations, but some Plaintiffs like a challenge.

When there’s a will, there’s a way…

(BTW, thanks for addressing that, jberryhill...)

 

[DNQuest.com]

monaco:
If the name was registered before the trademark, while they could try perhaps to send you a cease and desist to scare you, they would lose in court and most likely the UDRP arbitration as well. Trademarks are very specific to the purpose. If you had a personal website with your last name and some company trademarked that last name for vacuum cleaners, they can't get you for using it for a personal site. Just as MS can't go around and start shutting down sites with Vista in the title that were created before their trademark took effect.

While this is basically a true statement, use of a domain can come into question on its use. Using your example, A person registered a "vista" domain 5 years ago and used it as a personal site. After the release of Vista, they changed the site to sell Vista software without the consent of MS. did this person register the domain in bad faith? No, clearly he did not. Is he using the domain in bad fatih? He most certainly is. Can he be taken to court? Remember, anyone can take anyone to court no matter the circumstance. So the answer is always yes, he can be taken to court. Whether there is a case or not is another story.

In my example, the domain owner is using an unfair business practice, is that squatting? no, could he lose the domain is taken to court? possibly. It can be part of a damage award for illegally using the domain to make money off of a MS product.