advice I'm being Sued - Is This Nuts?

[john645]

Would like to hear some thoughts. I will not say the exact domain this refers to but will give a comparable example.

 

[Billy Wagner]

Why would you buy a TM typo without doing anything with it? Why would you buy ANY domain name without doing anything with it? whether it's parking or advertising or trying to sell it!

You have to have something to waste money on. :D lol

 

[WingShot]

Would like to hear some thoughts. I will not say the exact domain this refers to but will give a comparable example.

Domain I Own: SexyGub.com
Plaintiff suing me: SexyHub.com

Sexyhub.com was trademarked in 2011. I bought SexyGub.com in 2007 a year after it was registered. I have held the domain, parked it and never received a complaint from the owners of sexyhub.com for 8 years. Today I was notified that I am being sued for $100,000 and court fees for trademark infringement.

How can they sue me when I owned the domain 4 years prior to them trademarking their version? Not to mention 'Gub' is a dictionary word meaning 'White male'.

Now I will at least have to spend money on an attorney. What are your thoughts. Do they possibly have a case?

You are really being sued? The process server showed up at your door and handed you a stack of papers? Or someone is threatening to sue you?

I looked up sexyhub, sexy hub, and sexyhub.com at the USPTO and found no trademark. Is this claimed to be a US trademark?

Even if they have a registered trademark, you are the senior user if your usage, in fact, predates theirs.

If they are merely claiming a common law trademark, again you prevail because you are the senior user.

The problem with most people in your situation: they don't have the money to defend the lawsuit. And the merits of the case don't matter if you can't defend the lawsuit. The reality is, anyone can sue anyone (in America) for a good reason, a bad reason, or no reason at all. It requires only a template lawsuit and the filing fee. What happens afterwards though, is a different story.

Josh

 

[Jasonn]

if the domain doesn't make enough money worth fighting for just contact their lawyer and tell them you'll give them domain.

 

[mhdoc]

As WingShot says "You are really being sued? The process server showed up at your door and handed you a stack of papers? Or someone is threatening to sue you?"

Its cheap to have a lawyer write a "Mad Dog" letter with intimidating language.

Since anyone can sue for anything, serious players have asset protection mechanisms in place. If the entity which holds the domain has no assets they might get the domain, but your personal net worth is protected. Think corporations, trusts, limited partnerships, etc.

 

[Dave_Z]

I just don't understand how someone can sue you for a trademark when you owned the domain 4 years prior to them filing for the trademark.

http://www.wipo.int/amc/en/domains/search/overview2.0/#31

In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This has been found to occur: shortly before or after a publicized merger between companies, but before any new trademark rights in the combined entity have arisen; or when the respondent (e.g., as a former employee or business partner, or other informed source) seeks to take advantage of any rights that may arise from the complainant's enterprises; or where the potential mark in question is the subject of substantial media attention (e.g., in connection with a widely anticipated product or service launch) of which the respondent is aware, and before the complainant is able to obtain registration of an applied-for trademark, the respondent registers the domain name in order to take advantage of the complainant's likely rights in that mark. (In all such cases, in order to have a chance to succeed in any filed UDRP complaint, the complainant must actually demonstrate relevant trademark rights, as these are a precondition for satisfying the standing requirement under the first element of the UDRP for rights in a mark.)

Keyword there is " aware".

 

[slimjim270]

Domain was parked. I have played around with typos before. None that had trademarks, at least when i registered them.

I just don't understand how someone can sue you for a trademark when you owned the domain 4 years prior to them filing for the trademark. If they had a issue, in 2011 when they trademarked the name all they had to do was email me and request the domain. I would easily have turned it over. Is there any way they;d win a case like this? Wouldn't the court tell them they had 8 years to try and email me, call me, or send me snail mail regarding any issues?? Not to mention when I allegedly broke the law they didn't have a trademark.

Hi John,

If you owned the domain 4 years prior to their filing the Trademark, you had the opportunity to file an "opposition" to their Trademark application during the Opposition Period of their filing. You simply would have needed to state during the Opposition Period to the USPTO that the Trademark should not be granted as you have been using the mark prior to their application (assuming your use was in a similar "international class" - aka "IC" - to theirs) and there is a likelihood of confusion.

If you failed to proactively protect your claim to the name... and they sent you a Cease & Desist request... and you failed to comply... and you economically benefited in a similar product or service line to them... and there is a likelihood or potential of buyer confusion... well... then my suggestion is pony up for an attorney.

It seems unusual that you would be sued, without 1st receiving a Cease & Desist request from the Trademark holder. Is your "being sued" a Cease & Desist request from the Trademark holder or court appearance request from a Federal Court? (if so, enlist an attorney to review your best course of action)

Also, you mention "them filing for the trademark". Have they merely filed for the Trademark or has the Trademark been registered? (huge difference - an application is not a registration)

Also, if they have only filed, is it a 1A or 1B filing? ("in use" or "intent to use")

I hope the suggestions are helpful...

-Jim

 

[slimjim270]

Okay. So even if there is a trademark, and you buy a typo domain, but do nothing with it (don't park it, advertise, ect), whether it be before or after the trademark, doesn't the company have a foot to stand on?

Good point.

But here's the issue... did you benefit economically?

For example: If there is a trademark, and you buy a typo domain, but do nothing with it (don't park it, advertise, etc)... you are likely safe... but the moment you sell the domain and receive payment, you have benefitted economically... and you open the safety hatch and are exposed...

Trading in domains that are "trademark slicing" carries risk... as does skinny dipping with piranhas...

-Jim

 

[Kenny]

New Members like slimjim270 are the best example of why I miss the Rep system.
Outstanding, helpful, well thought out.... and well explained posts.

Thank you, rep up'd (I wish)

Peace,
Cy

 

[slimjim270]

New Members like slimjim270 are the best example of why I miss the Rep system.
Outstanding, helpful, well thought out.... and well explained posts.

Thank you, rep up'd (I wish)

Peace,
Cy

Cy,

Thanks for the kind words.

I recently joined NamePros after submitting 200+ domains to BrandBucket & Brandroot. Making money and having fun. Life is good.

The community on NamePros is terrific. Candid, insightful and respectful.

Much appreciated.

-Jim

 

[sircc]

One question. Was this company in business before you registered the TM typo? Have you tried to hand-over the domain to them?

...I know, that's two questions.

 

[Name Trader]

Okay. So even if there is a trademark, and you buy a typo domain, but do nothing with it (don't park it, advertise, ect), whether it be before or after the trademark, doesn't the company have a foot to stand on?

Why would you want to buy a typo and do nothing with it? You cannot sell it either, since you already knew about the trademark when you bought the domain. Or if you do sell it, you open up the possibility of both the buyer and the trademark holder being able to sue you.

On a more general point, we don't know how the trademark owner in this case is suing the OP. If it's under the Langham Act, that a serious max of $100,000 per infringement. If they are just suing because they can. How much are they asking for? If you don't defend yourself, you'll lose. You definitely need to appoint a lawyer who can best put your case forward to the court.

 

[DomainVP]

There are a few things to be aware of.

As a domain owner you have a responsibility to make sure that your registration is not infringing on anyones mark both at the time of renewal and at the time of initial registration.

More and more lately I have seen cases that hinged on renewal dates AND the content of your site.

If you have renewed the domain annually, and you have had any content whatsoever that advertised any product similar to a product of the person suing you, there is some reason for you to be worried.

If you parked the domain, it's likely that this happened.

I spoke to a parking rep before and specifically inquired about a situation like this, and there wasn't much confidence in their response; that this could happen, and has happened in the past.

Look at the UDRP case of Big5.com. Big5.com respondent changed its non-bad faith initial use into what appears to have been a knowing infringing use. Although it was pretty egregious in this case, you don't want to be the next person that is made an example.

Yes, there is also a period where you can refute a TM with the USPTO, but what reasonable person checks TESS frequently within the timeframe that they allow other interested parties to respond. Furthermore, if you don't have a TM, you will not receive notice about a TM application from the USPTO. Having a common law TM through business use does not make the USPTO system aware of your existence.

Bottom line... if you know that you are in the wrong just turn it over and save yourself some trouble. However, if you are in the right then try to scare off the lawyers that are issuing you a C&D.

I fought off Disney back in 2009 when they had their head of legal scream at me on the phone about a website I ran. After 15 minutes of discussing DCMA law and challenging his prima facie case, they then sent a lengthly C&D over, but as it turns out I made the lawyer so mad that he messed up and violated some of my rights. My final ultimatum was that I would counter sue for 10x more than what they would sue me for; they left me alone.

Was it unnerving... sure it was. However if you do the right things and know your rights then you will be okay.

Good luck.

 

[Paul]

When a trademark is filed doesn't really matter; what matters is when a trademark is first used. Having a registered trademark helps, especially if you're short on lawyers, but it's certainly not required. Similarly, registering a trademark doesn't mean you own the trademark: you have to actually use it.

Did you register this domain after they started doing business with that trademark, even before it was registered? If so, they probably have a strong case and you should seek proper legal guidance to minimize your losses.

It's worth noting that most lawsuit threats never actually come to fruition. When I receive a lawsuit notice that isn't directly from a court, I usually just ignore it. I suppose it's rather risky, but I've been lucky so far. Just because someone has the means to sue you doesn't mean they're interested in spending the money; it could be that they just want to scare you and essentially hijack the domain. That's not to say they couldn't sue you if they don't get their way, so tread carefully.

 

[DU]

I would suggest you to stop posting here (lot of douches here) and hire an attorney.

Question is, does it take one to know one?

The issue of suing is far more complicated than just sending an email to someone. Just sorting out jurisdiction is a pita so it takes a fair amount of money to get things moving - this why the UDRP exists and why it is more often used as a the method of resolution.

Most often the email is an up front attempt to get the name with little hassle or issue . Occasionally, it's usually a scare tactic but it's a scare tactic usually reserved for when someone is in the wrong and the likelihood of them standing up and taking issue is small. Joe Public is hardly likely to risk his livelihood on a meaningless domain against a well legally represented corporation.

If you haven't been served it's unlikely it's anything. Just quit using the domain in bad faith.

 

[OTF]

I have been sued on several occasions. Most of those were at the early internet days (late 90's and early 2000's) when user reviews become popular and many of the business owners didnt like negative posts from our users.

The best one was when a business filed for Chapter 11, screwed many vendors and re-open under almost identical name in another location. We got then sued for having the original location listed with the chapter 11 info. They wanted to keep that secret from their customers so they sued us for libel etc and that was the only time we made it to the actual court room.

Lesson learned: we won all cases filed against us, but the bottom line is, that in most cases it is not worth the time and money to defend yourself even if you may win the case.

I would suggest give up on that domain and move on unless you have too much time and money to spend because the only real winners in every case are the law firms on both sides.

 

[Kenny]

Lets hear back from the OP on the actual status of the suit.
Was it a threatening email, a C&D, UDRP, or a court summons?
Was it mentioned and I missed it?

Great thread with many valid points and varied opinions, some on point, some not so much.

Overall,some outstanding posts by knowledgeable members. with lots of good info. Thanks!

Peace,
Cy

 

[900Worldwide]

Well I had a similar issues with a trending domain I purchased about a month ago..... When I contacted the lawyer they said if I earned a profit in any way they would hit me with a big lawsuit and this was from the NYPD.. The lawyer also stated they watch Trademark names from when they're first hand reg so if you had ads on there your screwed, if you parked the domain and it earned your screwed, if you point the domain to another to drive traffic drives up traffic your screwed, but if you just use it for an email or personal use your good... Does not make sense not list the domain here for everyone to see, because if you sale the domain to someone with out them knowing they can sue you as well... Hope this helped someone out...