I hade a trademark domainname without knowing it, they sent me a mail.. - how answer?

[competentdomains]

I looked for search data about tools earlier this year and saw a search term that I thought was a general term, partly because the verb is almost the same in swedish.

Then today I saw this mail. I changed a little with extra "x-" in the text;


"

Dear ...... ,

Snap-x-on Incorporated is the owner of the well-known trademark and trade name Snap-x-on. As you are no doubt aware, Snap-x-on is the trademark used to identify products, services, activities and events related to Snap-x-on Incorporated.


In connection to Snap-x-on Incorporated proprietary rights over its famous trademark we bring to your attention the following:

1) You have registered, without Snap-x-on Incorporated’s permission or authorization, the domain name '........ '. The Domain Name incorporates the famous Snap-x-on mark in its entirety, and, by its very composition, suggests Snap-x-on Incorporated’s sponsorship or endorsement of your website and correspondingly, your activities.


Your use of a Domain Name that incorporates the famous Snap-x-on mark in its entirety constitutes trademark infringement and dilution of Snap-x-on Incorporated’s trademark rights and unfair competition. Your use of our mark in the Domain Name is diluting use because it weakens the ability of the Snap-x-on mark and domain name to identify a single source, namely Snap-x-on Incorporated. Further, your registration and use of the Domain Name misleads consumers into believing that some association exists between Snap-x-on Incorporated and you, which tarnishes the goodwill and reputation of Snap-x-on Incorporated’s products, services, and trademarks.

In view of your infringement of our rights, we must demand that you provide written assurances within 7 days that you will:

1. Immediately discontinue any and all use of the Domain Name;
2. Take immediate steps to transfer the Domain Name Snap-x-on Incorporated;
3. Identify and agree to transfer Snap-x-on Incorporated any other domain names registered by you that contain Snap-x-on or are confusingly similar to the Snap-x-on mark;
4. Immediately and permanently refrain from any use of the term Snap-x-on or any variation thereof that is likely to cause confusion or dilution;

We look forward to hearing back from you within the above-mentioned time frame.

Sincerely,

...... "

What annoyed was "As you are no doubt aware, Snap-x-on is the trademark used to identify products, services, activities and events related to Snap-x-on Incorporated.".

I have not been aware about it being a trademark, but maybe that was written in order to push me to action. And, do I have to transfer it to them, why not only ending the registration, if possible.

I have not earned anything from the domain, absolutely nothing, zero. It has been parked but I saw the registrar had ads on it. But the domain is completely unknown and not shown anywhere. Now I tried to redirect it to nowhere instead.

Anyway, any comments about this how I should write back? I already wrote a part but did not send it, just kept it until later.

 

[bobdigital]

if you think its generic, you may be right.

 

[risoknop]

Well, make some research and find out whether some company like that exists. If you don't find anything, reply them with requesting them to prove that they own a trademark for the name. If they really do, they should be able to prove it.

Personally, I think it autogenerated spam email but you never know.

 

[evertonian7uk]

Snap on are HUGE!

there world wide and very very well known, my advice to you is transfer it to them and chalk it down to experience,

without knowing the full domain name its still the same ending snap on will get the domain.

parking it doesnt help you either, its a reg fee, send it to them right away and forget about it, failure to do so in this case will most likely be costly for you,

do a google for snap on, im sure you'll be surprised by the results, but the rest of us wont be,

i struggle to believe you've not heard of them, there like fridges, everyone has one, some where you more than likely have one of there tools lol.

give it to them, without delay, save yourself future troubles.


edit: http://www.google.com/search?hl=en&q=snap+on

over 10 million results! there real, harldy spam

 

[Dave_Z]

if you think its generic, you may be right.

Some people thought that, only to find out the hard way they were wrong.

 

[ddzc]

Interesting..how does everyone get away with miss spelt parked domains though?..theres millions out there...

 

[evertonian7uk]

just ebcause they havent been caught yet doesnt mean they wont in the future, its best to aviod the risk imo, just think, you reg a domain, its a tm, the company come after you and you lose the case, then you reg another domain, with possible tm, the company comes after you again, but this time you have a good fight on your hands, your already labbled a squatter, so it goes against you.

 

[competentdomains]

In my country this brand is not known generally. Not at all. Here there are other brands that are standard, not this one.

The words sn.. op, snap it on etc, sound very generic to me, also with the word in swedish, snäppa, is used in a way that sounds generic.

If anyone would say no matter what you say, you certainly knew it was a brand, how could I ever prove no I did not. I just thought it was a generic pair of words. I used Keyworddiscovery.com to look for tool related searches, so I got it.

I will transfer it to them, but they must have an account to get it. I write to the registrar and tell about it, shouldn´t I.

"Further, your registration and use of the Domain Name", I have not used it at all. Why am I told I have used it when I have not. Why didn´t they register it before?

"Take immediate steps to transfer the Domain Name Snap-x-on Incorporated"

I don´t have the word "incorporated" in the domain name. Maybe they copied a text that was sent elsewhere.

So, of course I will answer that I did not know about it being a brand, because I didn´t. How would I know about a brand that is not at all
commonly known here, of course knot, though I know a lot else about usa, but americans don´t know close to anything about my country or even europe.

No. the page has not been indexed anywhere, not at all known and their standard text mail talks about misleading customers etc.

Should I include something like "As I transfer it to you, this matter is cleared out" etc? Has it happened that people who had, knowing or without knowing it was a tm-domain name they had, get into trouble even after immediately transfering the name?

The domain has not been written about, is not in any search engine index, not known anywhere, and was parked at the registrar (one of the biggest registrars.) itself, with the registrars ads like all domains become automatically unless the owner redirects it somewhere or nowhere.
Therefore I redirected it to nowhere so there is a blank page coming up.

Edit:

There are no sites with the brand/names in my country's domain extension.
However I found a domain with their two generic word trademark but used for something else.

When I made a search in my country's yellow directory for companies related to the brand, there was 4 different offices in all. There are thousands of places selling tools in my country, but I only found 4 having this brand, in the most used directory.

 

[evertonian7uk]

what are you using the domain for? whats the site content going to be? what are you development plans for it?

 

[navigator72]

Unless you have a vested interest in this domain and lots of money to protect it. I would cease and desist all activities with this domain. Since you had it parked with no website and thay could probably prove cybersquatting, you will lose and it's going to cost you a ton of $$$$.

Did they send it certified mail?

 

[Shane]

Snap On are very rich, my dad owns some of their tools and even a very small round thingy (hehe) was over £100!! So if this is real then give them what they want.

 

[xraider]

I wouldn't fight it either, it won't be worth the time and hassle.

 

[competentdomains]

Read better. I wrote earlier that I have not used the domain in any way. Just parked, now it leads to a blank page.

When I searched for "tools" on Keyworddiscovery.com it showed the very generic sounding search phrase snapXonXtools. I though that was a common term in english just like "power tools", that´s why I regged it. I thought well tools is what people may look for. I have never worked with tools sales or anything, just hobby thinking. I have no sites in that field. That company is practically unmarketed in this country, how would I know about it, never heard of.

Of course I don´t mind about this domain. Not at all. I´ll be more than happy to transfer it. I wonder though why they didn´t reg it themselves earlier.
I can see that some other domain extensions (like .org) are available in some forms, again I wonder why don´t they reg it themselves.

I saw a small company who uses the same two word term in a domain but in another area but I will contact them to inform.

 

[evertonian7uk]

they dont need to reg every extention to protect there TM

Read better. I wrote earlier that I have not used the domain in any way. Just parked, now it leads to a blank page.

play nice, hes offering you advice.

 

[Domagon]

...The words sn.. op, snap it on etc, sound very generic to me, also with the word in swedish, snäppa, is used in a way that sounds generic...

Searching on Google.SE showing only Swedish results still shows a lot of matches for Snap On tool products.

With that said, you may have a valid point based on some of the results I saw...

Ie. there's an established hairextension brand called SnapOn.

And also see some "snap on" references that appear totally unrelated to Snap On tool products; generic like in usage.

If anyone would say no matter what you say, you certainly knew it was a brand, how could I ever prove no I did not. I just thought it was a generic pair of words. I used Keyworddiscovery.com to look for tool related searches, so I got it.

How much is the domain worth to you - that's what it comes down to - are you willing to potentially spend many thousands of dollars to defend your domain name? ...

IF yes, then the next thing you should do is consult with an experienced TM attorney immediately to determine your next move.

I will transfer it to them, but they must have an account to get it. I write to the registrar and tell about it, shouldn´t I.

Not necessarily. Simply change the Whois to their company information, and reply back to the Snap On folks that you've "transferred ownership" to them, while making clear to them (unlock the domain and send them the authcode) that they need to transfer it into their registrar or otherwise it will eventually expire.

"Further, your registration and use of the Domain Name", I have not used it at all. Why am I told I have used it when I have not. Why didn´t they register it before?

Because registering every TM variation would cost a fortune. The number of combinations one can come up with which includes their mark is astronomical.

"Take immediate steps to transfer the Domain Name Snap-x-on Incorporated"

I don´t have the word "incorporated" in the domain name. Maybe they copied a text that was sent elsewhere.

It appears they left a word out or something - they mean transfer it (change the registrant field) to Snap-on Incorporated

Should I include something like "As I transfer it to you, this matter is cleared out" etc? Has it happened that people who had, knowing or without knowing it was a tm-domain name they had, get into trouble even after immediately transfering the name?

Many TM holders use third-party services to scan domain name registrations, SE listings, etc for their TMs - much of this is done by computer programs with little to no human intervention.

So if you choose to transfer it (in my view, it's likely the best option unless you're up for an expensive fight)...

At your registrar, based on the info you're provided, you should update the Whois registrant, Admin contact, etc fields to:

Snap-on Incorporated
c/o IT Business Services 2801 80th Street, PO Box 1410 Kenosha WI 53141-1410 US

Email:
[email protected]

Phone:
+1.2626565200
Fax:
+1.2626565127

DNS:
dns1.snapon.com
dns2.snapon.com

Then reply back to their email indicating you've transferred ownership (changed the Whois), as I explained earlier...

Don't admit anything, don't explain why you registered it, etc... likely the less you say the better.

All they care about is protecting their TM - once they see you've responded to their email and updated the Whois and DNS to their information, that will likely be the end of the matter.

Ron

 

[brwright]

I agree with Domagon. It is best not to fight it.

 

[competentdomains]

Many thanks Ron for the work you did, and telling me just to transfer it on my own, I didn´t think about that before. I checked it to be correct and I made the transfer per registrant, technical etc but it is still in my account so it has to be transferred into another account later.

Anyway, you wrote

...
Don't admit anything, don't explain why you registered it, etc... likely the less you say the better.
...

I have nothing to admit, the search term was provided by the mentioned keyword search tool and I didn´t know anything about it being trademarked, those two so generic/common words, not marketed at all in this country. Shouldn´t I even tell that, otherwise they will, no doubt think I knew what it was and acted in bad faith, which I indeed did not. And, that I have not used it in any way. I have heard the words snap on else where in english, and it surprises me that such two old words can be trademarked.
If I am just silent I thought it could be viewed wrongly as a silent confess.

No other last comments before I sent the reply?

 

[DNQuest.com]

I have not been aware about it being a trademark

Per the registrars TOS that you agree to with every registration, it is your responsibility to not register TMed domains. (that is the arguement)

It has been parked but I saw the registrar had ads on it.

And I bet those ads had tool related ads on them. It was your choice to park the domain, you should have been aware they would place ads on it. So no deflecting responsibility to the parking page company.

"Further, your registration and use of the Domain Name", I have not used it at all. Why am I told I have used it when I have not. Why didn´t they register it before?

You did use it, you had it parked, that is usage regardless (or irregardless??) of what you may think. And they don't have to register every single variation and typo to protect themselves.

There are no sites with the brand/names in my country's domain extension

There is a Swedish presence...

SWEDEN
Snap-on Tools
International, LLC.
European Division
Office - North
e-mail: European Division North

 

[competentdomains]

Per the registrars TOS that you agree to with every registration, it is your responsibility to not register TMed domains. (that is the arguement)

And I bet those ads had tool related ads on them. It was your choice to park the domain, you should have been aware they would place ads on it. So no deflecting responsibility to the parking page company.

You did use it, you had it parked, that is usage regardless (or irregardless??) of what you may think. And they don't have to register every single variation and typo to protect themselves.

There is a Swedish presence...

SWEDEN
Snap-on Tools
International, LLC.
European Division
Office - North
e-mail: European Division North

I cannot see the point in your accusing comments.

It is practically impossible to check 100% if anything can be a trademark. If any words can be a trademark, regging domains can not be possible at all.
If you have a domain that shows up to be a trademark, would you say that you have acted in bad faith?

Why mind ads on a parked page with so common words that I did not
know was a trademark? If I knew that I would never ever reg it.

So why do registrars put ads on pages that are parked on their behalf without checking themselves. No I did not use ads for any own purpose. They don´t pay anything to the domain owner, I have not received or earnt anything for it. The page was not known, it cannot have had any visitors, therefore, not used.

When saying "use it", it should refer to any active business, marketing etc to exploit someone's name and to actively cause confusion, I have not, nor has it been indexed or written about, what do you mean, that I should be punished??!!
Your reply sounded very accusing and did not help at all, it seems as if you think I deserve to be punished. If so you could say to all people to give upp all about domains since it is practically impossible to know 100% for sure whether anything is or can become a trademark.

Yes there is a small office you found in Sweden and far from here. How would I know about that office among all thousands of tool shops in this country?
I just know about those tool brands that are common here, I cannot know about a little office far away.

Added:
They have actually regged almost all domain extensions.

 

[DomainsBankers]

Tough luck about the trade mark. It does mean that you have no rights to the domain name. However you are not obliged to actually transfer the name to them. However You don't have to do a thing.
For them to get it they must either obtain a court order - or your agreement.
Yes you can just let it lapse.
But alternatively if you don't like their attitude then you can do something to create havoc for them.
You have heard of chain letters? Well maybe you just give it to someone else with instructions to pass it on. If it is constantly at sea then the ship may never come in. It would serve them right as there is no reason for there rudeness to you.
Best of luck