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.

 

[evertonian7uk]

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

yeah, dont do this, althought its "constantly at sea" you are the responsable party, anyone you transfer it to can COME AFTER YOU! as well as snap on getting you.

doing the quoted above, will serverly hurt you.

you know what you need to do

 

[Domagon]

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.

Glad to help.

The domain will probably stay in your account until it expires (be sure to off auto-renew). There's a good chance they won't request a registrar transfer for it.

Often TM holders, unless the offending domain gets much traffic / and or presents a high-risk of causing much lost business (ie. common typo names), will not want the domain; prefer to just let it expire and disappear.

...If I am just silent I thought it could be viewed wrongly as a silent confess.

"Silence" in and of itself is not an admission of guilt. I understand your sentiments, but when it comes to legal matters, less is often better.

The company already has formed an opinion of your actions - you're not going to change their mind...

Replying back with lots of detail will likely make no difference, and worse could lead to them to scrutinize your activities more closely; it's better they don't "remember" you.

Ron

 

[Corey103]

I would change the web sites name.

 

[DNQuest.com]

I cannot see the point in your accusing comments.

Actually, just pointing out the reality of the situation. As a domainer, that is part of the "job". You have to make sure you don't infringe on TMs. Then you have to make sure the usage doesn't create bad faith. So if you park a domain, you have to be mindful of what comes up since you are the one that parked it.

It is practically impossible to check 100% if anything can be a trademark.

A simple search in Google or Yahoo would have easilty shown you thier presence... total time 10 seconds.

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?

You are driving in a new area and did not see any speed limit signs, so you do 55mph and a cop pulls you over and he says you were speeding because the limit was 40mph. You explain that you did not know the speed limit. Now, did you willfully break the law? No.. did you actually break the law? yes. Should have have done better to know the speed limit? yes.

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.

Due dilligence before you register the domain (IE- research, then proceed appropriately). You are th domain owner, you are responsible on how it is used.

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.

They do it to make money, it is not thier job to research the domain, it is yours (a theme is forming). Someone is earning money, and the domain owner takes the blame.

Your reply sounded very accusing and did not help at all

??? I don't understand this comment, lets take a look...

I pointed out the registrars terms of service and the responsibility of one takes when registereing a domain. I think that is helpful.

I pointed out what happens when you park a domain. That is usefull knowledge for future dealings with domains.


I showed how you used the domain, parking IS usage. I even showed the responsibility the parking company has. So I show the rights of you and the parking company.

I then researched and found there is a Swedish resence of the TM in question. This helps with any questions about this particular domain. I think that should help too.

Funny thing is, all I did was point out reality and help clear up any minconceptions you may have. I think that helps a lot (and otehrs too who are new to this game). I hope at this point, you reread what I wrote and laugh to yourself and realize I helped a ton and say "Sorry, I was just being defensive because I thought you were being personal to me. I guess you have valid points that I did not realize. thanx for the help"

seems as if you think I deserve to be punished.

Ummmm.. no, just showing where you went wrong in hopes that in the future you have a better understanding of how domaining works. You are just being defensive which is understandable. Trust me, I take nothing here personally, not do I mean it to be personal (I will admit, there are a couple exceptions.. is he still banned?? lol)

 

[competentdomains]

What I meant earlier, was that your earlier reply sounded as I had acted in bad faith. That was, what I meant the "accuse" though I already had declared, that I had not known about the thing.

For me, I could never, relating to my linguistic knowledges etc etc, imagine that it would be even possible to trademark two old simple words that are used in the language for so many different things. I thought it was a general term.

Not all trademarks are found through a simple google search, you have to look in a trademark data base, what all who use domains should do.

Again, that company is not actively present here though there is at least one little office somewhere. There might be a lot of other small brands who all have a little local distributor, active or not active, in different countries but people do not know about it. I have never seen their products here, they are not in any tool catalogues or anywhere where I have seen in the last time.

Anyway, I replied in a short way and there has not been any reply to it.

 

[steelcube]

So is the domain name TMed in your country? I'd ask an attorney to explain the laws in your country...

 

[DNQuest.com]

Not all trademarks are found through a simple google search, you have to look in a trademark data base, what all who use domains should do.

Actually, you will find more TMs doing a Google search then you would in a TM database. They will only show the registered marks (or applicaitoin for registered marks). a TM does not have to be registered to be afforded protection under TM laws. Additionally, many countries will ackowledge other countries TMs and copyrights. Since the internet is world reaching, all a TM holder has to do is prove greater rights, regardless at times where the TM is established. The domain was parked and had ads on it, your chances of prevailing is very small.

 

[broddie]

My advice: consult a lawyer. Don't reply again. Sit down and formulate a response that puts the ball firmly back in the accuser's court.

You are not a US national and this congolmerate (of which I too have never heard) is not a meber of the Holy Roman Empire. Different laws to copyright 'theft' apply in differnt lands, fortunately.

Of course you didn't steal anyone's trademark you merely created your own out of the generic words available in your own language. (That's called sovereignty talent.)

Copyyright is not vested in a single idea, but the form and how that single idea is then expressed. VirginAirlines does not own the word "virgin" per say, just the form and meaning when applied to its product, or 'trademark'.

McDonalds tried the same thing on with a restaurant in Scotland, also with the same 'trademark'. It transpired that the McDonalds of Scotland were the real McKoy - and had every right to call themselves "McDonalds Restaurant".

Many years back Monopoly also tried to muscle its trademark to several new makers of the same (or similar) game. It transpired that the trademark was not even owned by the sellers of Monopoly (how embarrassing).

These are strong arm tactics meant to scare the cybersquatter (and to take advantage of the weak, or confused), of which you are neither.

Anyway, how about your registrant? They sold you the mark and should be jointly and severally liable. They took a cut, as did ICANN. Added to which, the persons currently threatening you could be said to be complacent in the extreme. (I cannot believe that it is difficult to register a name in which you feel you have a vested or trademark or copyright interest.) This is a reversal Cybersquatting, it's 'Cyberlording' - and they should at least for shame's sake offer to pay you the registration fee. (In addition to a letter thanking you for bringing its availabilty to their attention.).

 

[evertonian7uk]

im sorry, but ROFLMFAO!!

this is blantant infringment, just because he is in another country doesnt escape that, you really REALLY need to step back and re-think the advise you just offered.

Anyway, how about your registrant? They sold you the mark and should be jointly and severally liable. They took a cut, as did ICANN. Added to which, the persons currently threatening you could be said to be complacent in the extreme. (I cannot believe that it is difficult to register a name in which you feel you have a vested or trademark or copyright interest.) This is a reversal Cybersquatting, it's 'Cyberlording' - and they should at least for shame's sake offer to pay you the registration fee. (In addition to a letter thanking you for bringing its availabilty to their attention.).

ROFL!

These are strong arm tactics meant to scare the cybersquatter (and to take advantage of the weak, or confused), of which you are neither.

no, these are the rules which they can use to stop people infringing on there TM, your right, virgin dont own the word "virgin" as a description for someone who's never had sex, but you apply that word with ANY product, and there prolly going to come for you due to confusingly similar

 

[DomainsBankers]

Trade marks are only relevant to the particular industry in which the firm operates - so it is possible to have use of the name for an unrelated product - provided you do not pass off as being the other firm - and provided there is no confusion in the minds of the public.

 

[broddie]

Well, I'm not at all certain if "ROFLMFAO" and other terms are domains in your portfolio or an opinion. And you are welcome to it. [As indeed I am to mine...]

"Trademark owners do not acquire the exclusive ownership of words. They only obtain the right to use the mark in commerce and to prevent competitors in the same line of goods or services from using a confusingly similar mark. The same word can therefore be trademarked by different producers to label different kinds of goods. Examples are Delta Airlines and Delta Faucets."

And extra 'virgin' oil too for that matter. (No, not owned by Richard Branson but a seperate brand.)

However, that you state "this is blatant infringement" merely shows an immediate bias in favour of the claimant - and without he adducement of evidence. Naturally I am not condoning infringement of anyone's brand... merely suggesting to this gentleman - in Sweden! - that he should check 'their' facts.

In my country one is usually asked to adduce evidence in relation to outrageous claim, but this right is under threat.

As for the domain registrars being jointly and severely liable this met with a "ROFL". Perhapsa four-letter domain this time. But whether it's .com or .net you do not say and I cannot comment. Save to say that there are provisions (thankfully) in various Copyright and Trademark acts that makes 'passing on' an offence too. A person selling a dodgy CD is every bit as liable as the person buying it.

"no, these are the rules which they can use to stop people infringing on there TM..."

Back to strong arm tactics, which are quite the norm amongst the legal profession in these matters. For instance an owner of a trademark (for want of a better word) is naturally concerned about 'dilution'. The use of the term "Virgin" when applied to similar products for instance may dilute. However, Mr Branson could not put forward such a claim. ExtraVirginOil.com does not infringe - because Branso doesn not (to my knowledge) hawk a similar produce and its usage is in advance of Virgin Airlines etc. (This actually happned in the Monopoly game case, where it was displayed that, the gamD (or a version of it) and the actual name predated the game manufacturer's trademark.

Lesson One: JUST BECAUSE THEY SAY IT DOESN'T MAKE IT SO.

 

[evertonian7uk]

your missing the point, snap on is a TM - the OP had the site PARKED - no developement, so what has he got to defend? no usage at all.

you can argue all you like about virgin, were not saying he cant have the domain if he makes it none tool related,

whats happened here is the OP parked the domain, more than likely had SNAP ON tools ads there (or confusingly similar) he got the letter, if he took this all the way, my opinion is he would lose

an immediate bias in favour of the claimant - and without he adducement of evidence

the proof is in the above posts, so yeah there is evidence, dont advise someone to defend a name just because you think there using strong arm tatics, this is pretty simple, no development, no plan to develop and the page parked, if you were the panelist, what conclusion would you draw?

 

[Meongtae]

Depends on how bad you want it. they are counting on you getting scared and giving it up without a fight. i had a similiar letter froma comapany larger than that one, and i fought it and won. consult an attourney if you really want it. its not that hard to defend.

and DONT you reply at all....you will put yourself in a hole...the wording of that letter is paramount, and MUST be done by a person versed in the law..

 

[broddie]

Now that's sound advice.

evertonian7uk, I owe you a huge apology. And this is reason why:

http://vlex.com/vid/36665636

 

[DNQuest.com]

What about the rest of us?? we out the time in too lol

 

[broddie]

And the rest of you too. Ironically, and coincidentally, Snap-on also produced Monopoly. Coincidence or what?

 

[evertonian7uk]

no need for opoligies, this is a forum and these are just our opinions, in this instance the op was infringing imo, thats all i tried to get across, it wasnt imo sound advice to fight it.

 

[broddie]

Interesting territory. How can anyone be sure that they are not infringing a trademark if they don't have to be registered?
And more...
What's to stop someone with a trademark deciding to not buy domains with their 'mark' because they want saps like us to buy 'em in order that they can then sieze them - for free?
This may be laughable for a major corporation/conglomerate but there must now be an industry in someone claiming ownership for something they have not purchased, the domain name, that they then get buckshee!
There is more of course...
How much does it cost to register a Trademark, say loanaiduk, then argue that any similar mark is infringing yours? Surely it would be better to register or grow a trademark? (In fact, the best way to do this may be by a one-page website that acts as a copyright or trademark date.)
A lot of these companies who are in a position to enforce their 'rights' are most fortunate, which leaves the rest of us hung out to "dry.com".
What do you think?

 

[dezinerite]

Just for the record, I've never heard of that company. So it's probably "huge" is some countries, and not known in others.

I personally believe "snap on" is relatively generic (just because this company's SEO is pretty efficient, doesn't mean "snap on" isn't used in the English language).

I guess where competentdomains went wrong is leaving the page parked (probably showing tools-related ads).

 

[DNQuest.com]

Interesting territory. How can anyone be sure that they are not infringing a trademark if they don't have to be registered?

Research before you registrer, like it says in the TOS.