International law firm claiming my domain name, but they are wrong

[Dondomainer]

It's been replaced the domain name and trademarks for XXX, AND XXXX.

This is the email from a international law firm.

VIA EMAIL AND FEDEX (DONDOAMINER AND [email protected])

Maikel Mendez 565 SW 62CT Miami, FL 33144
Re: Unauthorized Registration of XXX.gtld Domain Name

Dear Mr. Mendez:
We represent xxx, Inc. and its related entities, including xxxx, Inc., Enterprises, Ltd. and The Number UK Limited (together, "xxxx"). As you may know, xxxxx is the world's largest independent provider of directory assistance and enhanced information services in connection with xx, xxxxxx, xxxxxx, xxxxxx and other xxx formative trademarks, which have become synonymous with telecommunications, customer care, and information services around the world during their twenty year history. XXX is the owner of the XXX and XXX XXX trademarks in Europe and our client enjoys very strong international rights in, and recognition of, the XXX and XXX XXX trademarks. As a result of this use and widespread recognition, our client has developed substantial goodwill in the XXX and XXX XXX marks. In addition to these rights, our client owns CTM registrations for XXXXXX ASK US XX and XXXXXX XXX, all for a wide variety of goods and services (together, the "XXX® Marks").

We are writing to you because it has come to our client's attention that you have registered XXX.online as a domain name (the "Domain Name"). Your unauthorized use of our client's famous XXX® Marks in the Domain Name is unacceptable. This domain name registration is likely to cause confusion among Internet users because it suggests that our client is affiliated with you or has otherwise endorsed, sponsored
or approved your use of this domain name in connection with web sites.

Our client has also registered XXXXXX in the United States, Reg. No. XXXXX, which issued on September XX, XXXX. You may not be aware, but the federal Anticybersquatting Consumer Protection Act prohibits the registration, trafficking in, or use of a domain name that is identical or confusingly similar to another party's registered trademark or service mark, without regard to the goods or services of the parties.

The Internet Corporation for Assigned Names and Numbers ("ICANN") incorporates these principles of trademark law in its contract with registrants and in its dispute resolution proceeding rules. Consequently, the bad faith registration,trafficking in, or use of a domain name that is identical or confusingly similar to another party's trademark or service mark is prohibited under ICANN's rules.

END

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My response was :


Hello, I received your message, but I'm sorry, I can not help you for the following reasons.

1 ) You actually own a trademark for XXX is only for Europe, not for US. place where it has made the domain name registration.

2 ) You have a trademark in the United States for XXXXXX, which it is in no way similar to its trademark registered.

2.2 ) Please consider that XXX is composed for three numeric characters and you trademark is for XXXXXX, composed for six numeric characters.

3 ) You have no right to claim XXX, using a XXXXXX trademark as justification because, there is another mark registered for XXX (Trademark reg # XXXXX and XXXXX )

4 ) The registration of this domain has not been done under bad faith and is not a Cybersquatting, because the US trademark for XXX it is not active since 2009.


I hope this information can help you and your costumer, as you have seen, you have no legal basis for claiming our domain name. However, you are welcome to negotiate directly with me, the price and the purchase of this domain.

Sincerely, Maikel Mendez.

 

[mhdoc]

My understanding is that based on "Anything you say can and will be used against you." it would be better not to reply until you actually receive some kind of document from an authority with jurisdiction.

It seems like you just gave them a lot of information such as email address verification that might be useful to them.

Not being a lawyer or have been involved in litigation on this subject I could be wrong

 

[SpareDomains]

I probably would have left this out...

"However, you are welcome to negotiate directly with me, the price and the purchase of this domain."

I'd probably respond like...

Thanks for your email. We disagree with your analysis and our attorneys the best IP lawyers money can buy also disagree and look forward to making an example out of you. I'd suggest researching bankruptcy attorneys as well as our plans are total annihilation. We'll save you a spot on http://hallofshame.com/ as well. Have a great day!

(Yes I'm kidding, or am I?)

 

[Hypersot]

imo, before you check any TMs or anything, there is a question that needs to be answered:
did you put ads on that domain?
if you did and , if it's the case that the ads advertised their product on *your* page, then -yes- they could be right since said ad could have been viewed easily by someone in europe

if you tried to monetize the domain via ads, affiliation, etc. then there is a good chance that they can go after you

again, we're not lawyers so any advice from us don't matter much.
You should really try to seek the advice of an expert in law.

 

[SpareDomains]

" it would be better not to reply until you actually receive some kind of document from an authority with jurisdiction.

again, we're not lawyers so any advice from us don't matter much.
You should really try to seek the advice of an expert in law.

+1

 

[mad409]

I can't vote because I don't know the name to investigate. I've been in your shoes, many have so don't worry quite yet. I do think when one feels the need to respond it's best to simply say you're in fact not infringing on their trademark and there should be no concern on their clients behalf.

Never offer to sell a domain when receiving this type of letter IMO.

On a side note, anything good has a trademark, you just can't interfere with their mark. Don't display any ads etc on the page that would cause confusion therefore no confusion.

I recently sold a new gTLD to a large company that had a trademark if you put the word.extension together but the domain could have also been used for other purposes besides their trademark. They never once cried trademark but rather we'd like to purchase this name. They didn't tell me who they were but I knew all along who they were.

Addition: I'm not an attorney either but I spent some cash defending a domain over a year ago so I learned quite a bit during the process. BTY - I still have the domain and I received many letters worse than the one you received.

 

[cocaseco]

My understanding is that based on "Anything you say can and will be used against you." it would be better not to reply until you actually receive some kind of document from an authority with jurisdiction.

It seems like you just gave them a lot of information such as email address verification that might be useful to them.

Absolutely! And that last line may come back to haunt you. I always ignore the first contact. If they are serious and legitimate, they will reach out again. It's hard to know your case with all the generic information. The mere existence of a registration in another country doesn't grant you much protection as the internet is global and you can't exclude one area from seeing the site. However, it could make any financial settlement difficult for them to enforce from another country, should they go that way. This is one reason i always recommend using a global TM search service such as WIPO, and not relying solely on a US search such as TESS.

 

[gilescoley]

Never respond until you have sought legal advice

 

[Dondomainer]

eg :

i register 999.gTld...but they have a US trademark for 999999...

In US exists a trademark for 999, but not is not active and there is no relationship with the "claimant"

In short, there are two US trademarks.. one for 999 and 999999, That means that the patent office itself did not find any similarity between 999 and 999999.

I'm no lawyer, but I find that these are obvious reasons, against his claim.

 

[DU]

You are not right.
118 is related to 118 118 when it comes to phone numbers.
You shouldn't have responded.

If you have 118.directory you're really sh&t out of luck and should give up.

[Added after dislike to be clear]
If it is any other number that is part of a repeating set as above the same principles may apply. If not then it's still a case of without knowing the details we don't know the details

 

[mad409]

eg :

i register 999.gTld...but they have a US trademark for 999999...

In US exists a trademark for 999, but not is not active and there is no relationship with the "claimant"

In short, there are two US trademarks.. one for 999 and 999999, That means that the patent office itself did not find any similarity between 999 and 999999.

I'm no lawyer, but I find that these are obvious reasons, against his claim.

I see one for e-cigarettes etc., another for clothes hats etc., another for brushes just at a glance. Seems 999 is generic and anyone can trademark 999. Again just needs to be something other than whats been trademarked. If they have only 999999 they're just messing with you, ignore them..

 

[Dondomainer]

You are not right.

118 is related to 118 118 when it comes to phone numbers.

You shouldn't have responded.

If you have 118.directory you're really sh&t out of luck and should give up.

I see one for e-cigarettes etc., another for clothes hats etc., another for brushes just at a glance. Seems 999 is generic and anyone can trademark 999. Again just needs to be something other than whats been trademarked. If they have only 999999 they're just messing with you, ignore them..

Thanks.

 

[mad409]

One other thing that can been done for your own piece of mind. Launch a free web page, forward the domain to the page. Put on the page that xxx.whatever is coming soon but If you're interested in this domain before development starts feel free to contact us.

 

[Tytus]

I can't vote because I don't know the name to investigate. I've been in your shoes, many have so don't worry quite yet. I do think when one feels the need to respond it's best to simply say you're in fact not infringing on their trademark and there should be no concern on their clients behalf.

Never offer to sell a domain when receiving this type of letter IMO.

On a side note, anything good has a trademark, you just can't interfere with their mark. Don't display any ads etc on the page that would cause confusion therefore no confusion.

I recently sold a new gTLD to a large company that had a trademark if you put the word.extension together but the domain could have also been used for other purposes besides their trademark. They never once cried trademark but rather we'd like to purchase this name. They didn't tell me who they were but I knew all along who they were.

Addition: I'm not an attorney either but I spent some cash defending a domain over a year ago so I learned quite a bit during the process. BTY - I still have the domain and I received many letters worse than the one you received.

Thanks for the reply.
What are the steps you take when you receive a letter like this or "worse" than this one.

 

[Domain Lead Finder]

nissan.com is good example of how it really works.

 

[Theydon]

You have to plays these things with a cool head, if you are not asked for anything (legally) don't say anything, if you are asked for something legally get legal advice before any response. Offering to negotiate a sale has no place in this climate.

 

[Name Trader]

Firstly. You are a numb-nut for offering to sell the domain to them. If they have any claim to any rights to your name, they'll quote that in their UDRP... and your toast.

This is also very relevant...

On a side note, anything good has a trademark, you just can't interfere with their mark. Don't display any ads etc on the page that would cause confusion therefore no confusion.

If you have ever parked your domain, it is highly likely the parking company has shown competing ads for their services. This shows you intend to make money off their trademark. It's prima facie proof. Intentional or not.

I also think your analysis of their trademark situation is flawed. Although I will admit to being a tad confused.

However. If your website is about flowers in Vermont during springtime, and you have never parked your domain, you would have had a chance at the coming UDRP, if you hadn't offered to sell them the domain. But that's the easy part. If they take you to court under the Anti-Cybersquatting Act, it's a maximum fine of $100k per incident they can prove. Welcome to the bankruptcy court.

As others have said. You should never respond to lawyers letters/emails without getting the advice of a lawyer. You never want to give the opposing lawyers ANY information they might be able to use against you.

Notice: I am not a lawyer, and anything I might say should not be construed as legal advice. If you want legal advice. Seek out the services of a lawyer. Not the advice of us numb-nut domainers.

 

[DU]

The thing with this name is that there is a distinct number that is used for commercial directory services. Let's call that "118". Now someone paid money to get/lease 118 118 so that they were, or could be, the defacto 118 directory number - 118 118.

They own the 6N in the .com. They more or less own the rights to 118 as a directory service (but really it's 118118).

Do they have automatic rights to the name? No. As a 3 digit number it's very just, generic.

If there are ads? If it's used as a directory of any kind? Then yes, the name is in trouble (more than it's worth).
I don't believe UDRP will care whether it's US or not US if it's a well established mark (which it really is).

Bottom line is - you can't just assume that there's no issue when there is a potential issue. You don't want to stray into creating a potential issue. The best way to create a potential issue is to look for one. Getting belligerent and responding in "i know better than you" manner is creating a potential issue.

In reality the company has done what it probably wanted. It's put the OP on notice that the name is not as free of rights as maybe he believes. This reduces sale potential and increases liability potential. Domainers, in general, because they are so honest and full of integrity (so I'm told) will often say offer less than $1000 because it's cheaper than a UDRP.

Sometimes they don't want it that bad. The warning is as good / bad as it's going to get.
Sometimes they don't care about the price and you get your name splattered over WIPO for no reason (and you may lose but you're name is still listed). I notice now that it's a .online.

I would do what the OP appears to have done which is move on from the issue and leave the GoDaddy "not much happening here but I promise something awesome is coming page" is listed

 

[DU]

If they take you to court under the Anti-Cybersquatting Act, it's a maximum fine of $100k per incident they can prove. Welcome to the bankruptcy court..

Highly unlikely I guess the threat is there ... (they'd lose I think - more chance of winning UDRP which is inconsistent and more random and even that seems wishful thinking)

 

[Name Trader]

@DU - I agree. But the OP pushed back quite hard at the lawyers. They are a hard-nosed bunch of people at the best of times I agree also that the company probably would go the UDRP route if their case is good. But again. Some people just aren't reasonable and want to teach cybersquatters a lesson. Although I am not accusing the OP of being a cybersquatter based upon the facts we know.