Not sure if this is just a scare tactic to push me into transfering this domain. Person I spoke with at Moniker advised me that this is just a scare tactic and that I should reply with "make me an offer" if i don't care about keeping the domain, which I guess I really don't. But i don't want to be pushed around and forced into transferring it either.
Anyway, brief history behind this domain name. I bought it about 3 years ago, as an available name through GD. I ran an email business with it for about a year, and then when I desolved the business, I just left the name with the default nameservers of Moniker. Never have I contacted this company threatining me (not that I've been accused of that).
I don't mind losing the name if it comes to that, i just don't want to be sued or made to pay for legal fees. Here is the note that I recieved both through email and through registered mail. The Law firm is completely legit - that I do not question.
FYI my domain, and the domain of complaining party is exactly the same, and just differs by .com/.net.
Here is the letter. Please help:
July 11, 2007
Dear Mr. XXXX:
This firm represents XXXX, Inc. in connection with its intellectual property matters. As you may know, our client offers a patented gardening system under its trademark XXXXX , which is the subject of United States Trademark Registration Number XXXXX, and the pending U.S. Trademark Application Serial No. XXXXX, for the design Mark XXXX. Our client has used the trademark XXXXX for more than twelve years, specifically since at least as early as November 30, 1994. XXXXX, Inc. operates a web site located at http://www.XXXXXX.com/, in connection with its business.
During the past twelve years, our client has expended significant time, money, and effort to establish public recognition of its mark XXXXX in connection with its high quality, patented planters. Our client has used this trademark in advertising and promoting its sale of theses goods throughout the United States. As a result of these efforts, our client has established substantial consumer recognition of the XXXXX trademark and good will in connection therewith. This trademark has become one of our client’s valuable assets.
It has recently come to our attention that you have registered the mark XXXXX with Melbourne IT, Ltd. (dba Internet Names Worldwide) as part of the domain name XXXXX.NET. Because of the increasing commercial importance of the Internet and our client’s own site on the World Wide Web, XXXXX.COM, your use of the XXXXX.NET domain name will create confusion among internet browsers who will believe any site identified by this name is maintained, sponsored by, or affiliated with our client. We note that your site currently allows visitors to access a direct link to “XXXXX”, which results in links to sites selling our client’s and its competitors’ gardening systems. This renders consumer confusion and deception even more likely. Further, your site contains links related to gambling, dating services, and even criminal attorneys, all of which dilute our client’s mark XXXXX .
Your use and registration of the domain name XXXXX.NET therefore violates our client’s legal rights in its XXXXX , trademark and constitutes unfair competition and infringement of our client’s federally registered trademark, in violation of the Lanham Act, 15 U.S.C. 1051 et seq., including the federal Anticybersquatting Consumer Protections Act, 15 U.S.C 1125, as well as the common law. Such registration and/or use may subject you to all certainly not in any way limited to cancellation or transfer of the domain name XXXXX.NET, our client’s actual damages or statutory damages in the amount of not less than $1,000 and not more than $100,000, and the possible recovery of our client’s attorneys’ fees and costs associated with any litigation.
Based on the foregoing, and in order to foster fair competition and preserve XXXXX, Inc.’s intellectual property rights, we demand that you immediately:
(i) Cease and desist from all use of the XXXXX.NET domain name;
(ii) Transfer and assign all rights and interest in the domain name XXXXX.NET to XXXXX, Inc., and provide all documents related to this transfer to our client; and
(iii) Advise us in writing of your cessation of use of the XXXXX.NET domain name.
Please provide us with immediate written assurances of your intention to comply with the foregoing. Provide these requested assurances as soon as possible, but by no means later that close of business on Tuesday July 31, 2007. If we do not receive your assurances within this time, we will advise our client to take appropriate steps to prevent any continued infringement.
Nothing in this letter should be construed as an election of rights or remedies. This letter is written with our prejudice to any of our client’s rights or remedies. XXXXX, Inc. specifically reserves all of its rights and remedies under applicable federal and state law.
We hope we can resolve this matter amicably, and look forward to receiving your assurances promptly.
Sincerely yours,
STITES & HARBISON, PLLC
William E. Jackson
WEJ:cr
cc: Moniker Online Services, LLC
20 SW 27th Ave., Suite 201
Pompano Beach, Florida 33069
Anyway, brief history behind this domain name. I bought it about 3 years ago, as an available name through GD. I ran an email business with it for about a year, and then when I desolved the business, I just left the name with the default nameservers of Moniker. Never have I contacted this company threatining me (not that I've been accused of that).
I don't mind losing the name if it comes to that, i just don't want to be sued or made to pay for legal fees. Here is the note that I recieved both through email and through registered mail. The Law firm is completely legit - that I do not question.
FYI my domain, and the domain of complaining party is exactly the same, and just differs by .com/.net.
Here is the letter. Please help:
July 11, 2007
Dear Mr. XXXX:
This firm represents XXXX, Inc. in connection with its intellectual property matters. As you may know, our client offers a patented gardening system under its trademark XXXXX , which is the subject of United States Trademark Registration Number XXXXX, and the pending U.S. Trademark Application Serial No. XXXXX, for the design Mark XXXX. Our client has used the trademark XXXXX for more than twelve years, specifically since at least as early as November 30, 1994. XXXXX, Inc. operates a web site located at http://www.XXXXXX.com/, in connection with its business.
During the past twelve years, our client has expended significant time, money, and effort to establish public recognition of its mark XXXXX in connection with its high quality, patented planters. Our client has used this trademark in advertising and promoting its sale of theses goods throughout the United States. As a result of these efforts, our client has established substantial consumer recognition of the XXXXX trademark and good will in connection therewith. This trademark has become one of our client’s valuable assets.
It has recently come to our attention that you have registered the mark XXXXX with Melbourne IT, Ltd. (dba Internet Names Worldwide) as part of the domain name XXXXX.NET. Because of the increasing commercial importance of the Internet and our client’s own site on the World Wide Web, XXXXX.COM, your use of the XXXXX.NET domain name will create confusion among internet browsers who will believe any site identified by this name is maintained, sponsored by, or affiliated with our client. We note that your site currently allows visitors to access a direct link to “XXXXX”, which results in links to sites selling our client’s and its competitors’ gardening systems. This renders consumer confusion and deception even more likely. Further, your site contains links related to gambling, dating services, and even criminal attorneys, all of which dilute our client’s mark XXXXX .
Your use and registration of the domain name XXXXX.NET therefore violates our client’s legal rights in its XXXXX , trademark and constitutes unfair competition and infringement of our client’s federally registered trademark, in violation of the Lanham Act, 15 U.S.C. 1051 et seq., including the federal Anticybersquatting Consumer Protections Act, 15 U.S.C 1125, as well as the common law. Such registration and/or use may subject you to all certainly not in any way limited to cancellation or transfer of the domain name XXXXX.NET, our client’s actual damages or statutory damages in the amount of not less than $1,000 and not more than $100,000, and the possible recovery of our client’s attorneys’ fees and costs associated with any litigation.
Based on the foregoing, and in order to foster fair competition and preserve XXXXX, Inc.’s intellectual property rights, we demand that you immediately:
(i) Cease and desist from all use of the XXXXX.NET domain name;
(ii) Transfer and assign all rights and interest in the domain name XXXXX.NET to XXXXX, Inc., and provide all documents related to this transfer to our client; and
(iii) Advise us in writing of your cessation of use of the XXXXX.NET domain name.
Please provide us with immediate written assurances of your intention to comply with the foregoing. Provide these requested assurances as soon as possible, but by no means later that close of business on Tuesday July 31, 2007. If we do not receive your assurances within this time, we will advise our client to take appropriate steps to prevent any continued infringement.
Nothing in this letter should be construed as an election of rights or remedies. This letter is written with our prejudice to any of our client’s rights or remedies. XXXXX, Inc. specifically reserves all of its rights and remedies under applicable federal and state law.
We hope we can resolve this matter amicably, and look forward to receiving your assurances promptly.
Sincerely yours,
STITES & HARBISON, PLLC
William E. Jackson
WEJ:cr
cc: Moniker Online Services, LLC
20 SW 27th Ave., Suite 201
Pompano Beach, Florida 33069
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