Just Got a huge Legal Email about Trademarked Name

[onewordonly]

I have a site I built and is online but apprently the name is a huge company and not been from the USA (Australia) I had not even known about this. I got an email with a lenthy PDF which out lines all this legal mumbo jumbo, the company history and lots more plus loads of other rubbish and accusations. They have accused me of some things I never done as well plus they said that they contacted registerfly as I used to have Protectfly on but I never herd from them. They said I have until March 8th to transfer the doamin to them. I'm happy to do that but I sent an email back like this:

Hello,

ok, I never received any notice from Registerfly.com and I have not known about the trade mark or have I tried to deceive my visitors like you have made out. A lot of what you have accused me of is a load of rubbish.

Besides all that I'm willing to transfer the domain name over to your company and stop using the name altogether but I would expect some sort of compensation for this. I have spent a lot of time on building the website and the promotion I have put into the website. Can you please tell me what you can offer to cover my costs.

{contact details here}

 

[navigator72]

Have you checked the company out online? I personally wouldn't respond to this email. The last time I checked it's very hard to prove that you got an email in court. Unless it's a certified letter, I would ignore it and consider it a scam. How do you know it's from a reputable source? If you feel that it is a real concern, Tell them you will only accept certified letters concerning this matter and all matter will be discussed with your lawyers. (if you don't have a lawyer, don't sweat it..... they don't know that)

 

[advaita]

Like navigator says I'd do a lot more checking before responding - any reason why you haven't says which huge company it is ? Is your site a .com ? Or have they got the .com and you've got the .oz or .net or something ?

 

[liquidcherry]

My 2 cents,

Never, ever reply to an email like that before seeking advice from experienced members in a forum like namepros.

But since you did that upfront(in a not professional manner like alot guys here would agree) let me ask you a couple of questions about the situation, it will help more experienced members here(hi dnquest), to see the facts about your issue:

1.Is your site related to their business?
2.Have you checked if they posess all other xtensions for their business?
3.How long have you posessed this domain(if longer than they have their TM, than you could have a better chance, if you really have different content/ business approach, but i am not that experienced )
4.Do you have a lot of founds to fight a legal battle? <----importante

I think you did a bad thing with answer their email, it was probably a scare tactic from them.....but what do i know?

Good luck, i pass on to anybody with more experience

Cheers,

Frank

 

[slipondajimmy]

Do research before you send a reply. I have to say you made a big mistake by doing this. Good luck .

 

[onewordonly]

ok, well it's too late now the email was sent and besides I don't want to make this into a big legal battle, I just want some $$ for the domain & I'm happy. it's really not such a big deal as I can easily change the website name to something else but it does have a small page rank and 2k pages indexed in google so I would like some compensation from them. I wouldn't lose any sleep over it put it that way if I give it to them which I intend to do before the 8th of march as they requested but as long as I get some compensation from them first.

I also see on Sedo where I have many of my domains listed for sale or parked. my domain was parked there and when I put the site online I never took it off sedo but Sedo have taken it off my account due to a copyright complaint as well.

I would be happy if they pay me for my costs to develop the website. I would also 301 the website shortly to another domain so I hope to have it all redirected and picked up by Google etc before I did change the domain over to them.

I do think the email is legit and I have no doubt about that.

As for these questions:

1.Is your site related to their business?
Yes I guess so
2.Have you checked if they posess all other xtensions for their business?
No
3.How long have you posessed this domain(if longer than they have their TM, than you could have a better chance, if you really have different content/ business approach, but i am not that experienced )
I'm sure they have been in business for a lot longer than the year or so I have had the domain
4.Do you have a lot of funds to fight a legal battle? <----importante
No

 

[matt_bodis]

Tell them to give you $1200. If they don't - don't worry. They have to spend more than $1200 to start a WIPO and definetely more for lawyers. So if they don't give you $1200 for this domain, then they won't start a legal suit against you either.

 

[onewordonly]

yeah, $1200 would be about what I would expect anyway - Well I was thinking of asking for 2-5 k but anything over 1k I would be happy with

 

[briman1970]

Choose a dollar-figure you'd be happy with, because not only is the domain a different term than the TM, but the term is generic enough to not worry about a dispute IMHO. There are several US trademarks for the term "24 Hour Fitness" and no trademarks for "24 Hr Fitness".

They will lose if a dispute is filed.

 

[vslevin]

They've been around for a long time, that's the gym that I go to.

Your domain is definitely infringing, even though not intentionally. You can try to get some money for it, but if I were in your situation, I would just give it up.

 

[Mike]

Choose a dollar-figure you'd be happy with, because not only is the domain a different term than the TM, but the term is generic enough to not worry about a dispute IMHO. There are several US trademarks for the term "24 Hour Fitness" and no trademarks for "24 Hr Fitness".

They will lose if a dispute is filed.

Still close enough to cause headache.
Like CFguru said, try to get out with an offer that's below their legal costs, roughly $1200-1500 should easily be on the safe side.

 

[onewordonly]

ok thanks for the advice, I will wait to hear back from them & will update here when i do....

 

[hollywood]

my only 2 cents is that I don't believe you are infringing unless you offer gym and/or workout facilities for a fee. I mean, that's the business they are in, isn't it?

 

[liquidcherry]

Hmmmm, that's interesting..... the OP is operating a website about fitness supplies, where you can order your weight lifting products, treadmills and everything related.....on the other site the complainant is a FITNESS CLUB!

Maybe it is just me, that sounds really intriging but there is one problem with onewordonly's answer about the time of the ownership ("I'm sure they have been in business for a lot longer than the year or so I have had the domain")

Could be used against u mate.....

On the other site...are they from aussie and u are from USA or viseversa?....could be also speaking in your favor.....

Let us know

Cheers,

Frank

 

[DNQuest.com]

First, before you reply to any correspondence, always research and verify the information given to you, separate the fiction from the non-fiction (you also need to do it in the legal section too because too many people don't have a clue. They think they are helping, but in reality, they can help make the situation worse).

Once you verify the information and have all the facts (and not opinions or personal beliefs), the you respond professionally and with a cause. Unfortunately, your response is basically a classic old cybersquatter response (and I believe you could have fought this one), "pay me money and it's yours". Maybe they bite, maybe they won't. It is the "maybe they don't" you need to worry about. Your email could be used against you and you could be labeled a cybersquatter. Now what is more costly, $1500.00 filing fee, or your reputation as a domainer.

Anyway, you need to use your head whenever you receive correspondence, and yes, email is a valid form of correspondence, and yes, emails can be tracked, and yes, they can be used in the court of law to prove the emails were read. I know this from first hand experience. As a refresher, a C+D is simply communication to let you of your wrong doing and they are asking you to stop it. It doesn't have to be certified, it doesn't have to be all official and lawyer like, heck, it doesn't even need to come from a lawyer.

Like I said, I think you can fight this one since it is descriptive in nature, but your response may hurt you. How strongly do you feel about the domain and what type of revenue does it bring in. You need to weigh these and decide your own risk/reward factor.

 

[Damion]

Tell them to give you $1200. If they don't - don't worry. They have to spend more than $1200 to start a WIPO and definetely more for lawyers. So if they don't give you $1200 for this domain, then they won't start a legal suit against you either.

Couldn't they just spend the $$$$ for a WIPO and their lawyers and should they WIN claim these financial amounts back from you?
Or can these amounts spend not be claimed from you in court?

I mean it's easy to say they have to spend more but if they feel they can win they can probably sue you for financial damages afterwards.
So there is nothing to lose for them in the end but there is for you?

Just wondering...

 

[Kate]

My 2 cents,

Never, ever reply to an email like that before seeking advice from experienced members in a forum like namepros.

I will go even further. Ask a lawyer.
Most of the advice you can get here is not qualified legal expertise (unless it's coming from dnquest, as usual he is one of the few who seems to know what he is talking about).
There is a lot of bad advice in this thread too.

Choose a dollar-figure you'd be happy with, because not only is the domain a different term than the TM, but the term is generic enough to not worry about a dispute IMHO. There are several US trademarks for the term "24 Hour Fitness" and no trademarks for "24 Hr Fitness".

They will lose if a dispute is filed.

Honestly I very much doubt so... Besides just because there is no TM filed with the USPTO does not mean they do not have any rights or TM protections. Also there are TMs at state/international level.
Suffice it to say, the name is confusingly similar. Issue #1.
What's more, the site is related to roughly the same industry. Issue #2.

Tell them to give you $1200. If they don't - don't worry. They have to spend more than $1200 to start a WIPO and definetely more for lawyers. So if they don't give you $1200 for this domain, then they won't start a legal suit against you either.

That is bad advice. Actually that's the kind of behaviour that gives us a bad press.
By doing so you fit the definition of cybersquatter. Basically this amounts to blackmail.

Actually there is a potential risk of WIPO being initiated by the complainant even if it's not the cheapest and most likely route.

I see 2 possible reasons:

• Some lawyers are hell-bent and will be happy to crush people that they deem to be arrogant...
• For a large company it is an opportunity to publicize their brand policy and make an example out of a poor guy... some large companies are used to WIPO, even for frivolous/abusive claims

WIPO is not the only option available to them.
They can also resort to the traditional court system.

Bottom line:
You have a TM issue.
You have more to lose than they.
I would shut down the site with a polite explanation and not seek any compensation of any kind (remember this could be used against you later to establish bad faith).
Good luck.

 

[onewordonly]

ok well I will have to think about all this, I will see if I get a response from them with my email I sent too. As for the question about the country, I live in Australia yes, the website is hosted in the USA though.

As for the money question, I have not made much .. I would have to check my records but roughly about 5 products sold and small adsense profits. I've never promoted it. It's just one of a number of sites I own that turn over a small revenue that all add up to be enough to give me an income.

 

[Kate]

Your problem is not that you are competing in the same industry, it's just that the domain is confusingly similar to theirs.
Your domain in itself is not worth a lot. It's a hyphenated .info. They do not really care about the domain, they are concerned about you taking advantage of their brand name (parasitism).

The value of your site stems from development. You can keep your site but I would suggest to quickly find another (stronger) domain with no TM issues and rebrand the site entirely. Keep the contents but remove any references or similarities with 24 Hr Fitness and you'll be fine.

 

[advaita]

Their name is 3 generic words - do they have worldwide rights on these words or anything similar ? Sounds a bit far-fetched to me. Also, surely they would have to prove bad faith ? This guy was attacked for registering pig.com but won - http://domains.adrforum.com/domains/decisions/843597.htm