Need Opinions on Recent C&D Request

[verbster]

Just received a C&D from a famous fast food chain. I'm not disputing their demand that I turn over the domain, but I do have an issue with a further request included at the end of the C&D and need advice.

Has anyone been asked to do the following....and/or doesn't this seem a little out of line for a demand/request? (Specifics below.)

Here's the text from the letter describing what they want:

Please provide us with written confirmation of your agreement [to cease and desist] using the mark and transfer the Domain Name to <them> by having an authorized representative <of my company> sign the statement below and return it by 12/29/2006. Otherwise, we will be force to take such action as deemed necessary…..etc.

Here's what they want me to agree to:

<my company>, its officers, directors and agents, hereby agrees to assign its domain name registration for [the domain in question] to [Their Company], or to take such other or additional action as [my registrar] requires to secure registration of the domain name in the name of [Their Company]. [My Company] hereby further agrees not to seek registration of any domain which is similar or identical to any mark or name owned by [Their Company].

The bolded sentence (I did that) is what seems a little too much. I don't have any issue with not registering a domain identical to any mark or name owned by them, but how would I know about any similar names owned by them? For all I know, they could own anything...and I wouldn't know if I was registering something similar. For example, say they owned beans dot com (they don't), and I'm looking at registering chilibeans...how would I know to check for their ownership of anything similar to what I want to buy...and would that mean I really couldn't own chilibeans (or coffeebeans or beanstalk or whatever) even if the domain usage and intent is totally different? Who would decide what "similar" encompasses? It just seems very limiting on my part to agree to this when I don't know what all they own...what could be construed as 'similar'...or who decides what is similar...not to mention no time limits on this.

I'm thinking I should call them and try to work this out, but I'd appreciate your considered opinions and advice first.

Thanks.

 

[eclouds]

Are they even paying you for the domain?

 

[midnight251]

Hand the Domain over to them, but before doing that have them remove that statement from the contract. I have been dealing with contracts for many years, (but not dealing with this situation), and have had many things removed upon my request before singing. A lot of these are standard corporate contracts, (send them out and get them signed), but if you ask them (nicely) to remove a clause, they might just do that. It has happened to me many times dealing with Digital, which Compaq bought out, who then HP bought out, (I'm showing my age here), and standard (company) contracts they sent me for hardware, software support that had to be modified to my (companies/my) liking. Again, I'm not saying this is the same situation, but, strip out the wording that you don't like, and sate that you will hand over the Domain and see what they say.

Just a thought, C&D's, (I've never received one), but I know contracts can be modified, if both parties agree to the modifications, you just have to ask)

Midnight

 

[Matthew.]

That's a bit irrelevant brotherhewd.

verbster, don't talk this as qualified legal advice whatever you do but before you do anything like calling them or contacting them in anyway, seek exactly that. From my position, if they served me with that i would be straight to see a lawyer before doing anything as it sounds suspicious.

edit: There we go, better advice above

 

[gamehouse]

What they are asking is perfectly legal. What do you expect them? Not do their business and keep and sending C&D letters? You make a mistake again, they go agressive this time, big time.

You must have thought about all these legal jumbo mumbo before getting into the foray at all.

GH

 

[snoop]

I would say just transfer the domain to them. I agree with others comments, if they want any more than that they should be paying, once you start signing contracts etc it all becomes a huge time waster, lawyers love wasting time, it is how they make money.

 

[Matthew.]

What they are asking is perfectly legal. What do you expect them? Not do their business and keep and sending C&D letters? You make a mistake again, they go agressive this time, big time.

You must have thought about all these legal jumbo mumbo before getting into the foray at all.

GH

I don't think it's legality is the problem gamehouse. What they are actually asking is leaving verbster wide open to attack in affect. If he was to register a domain similar to one that the C&D issuer owns but he does not know that they own it, since he has already been served with the C&D and it includes that clause he really has no defense even if it was innocent.

 

[gamehouse]

Yes I understand. My reply was a bit harsh I guess.

I don't think it's legality is the problem gamehouse. What they are actually asking is leaving verbster wide open to attack in affect. If he was to register a domain similar to one that the C&D issuer owns but he does not know that they own it, since he has already been served with the C&D and it includes that clause he really has no defense even if it was innocent.

 

[RJ]

I've gotten a similar request before and have simply refused to sign a ridiculous contract when I'm more than willing to hand over the domain for free in a gesture of good faith. If they were paying for the name, I could understand it.

In my case, I just turned over the domain, refused to sign anything and they left me alone. I wasn't intentionally violating their trademark, but it was easier to hand over the domain than to fight it. Signing some additional document to me seemed like an admission of guilt.

 

[verbster]

Thanks all. I registered this domain a year ago: If I remember right, I was looking at vacant domains, and it was in a bulk buy that I didn't pay enough attention to. I have no use for it, have not used it for anything, and wouldn't think of trying to use it. No one has even looked at it till just recently.

It expires in about three weeks, and I had planned to just let it drop, so as I said, I don't plan to dispute turning the domain over to them. I've already sent them an e-mail asking them to submit a TFR request....or just let it expire, their choice. But that's as far as I've gone.

I'm guessing some marketing noodle finally had an epiphany that creating their own "card" would be a good idea for a promo, only to find the crucial domain was already taken. (Of course, I'm probably competely wrong...)

That said, I'm hoping they will be satisfied enough that I was cooperative in handing over the domain in a timely manner...and not pursue that final clause...because it really is unreasonable. That's what I was concerned about...that they might insist on me signing on the dotted line...so your opinions and advice about that are appreciated.

 

[Dave_Z]

Just a thought: could you ask them to provide you a list of trademarks they
hold?

 

[verbster]

Just a thought: could you ask them to provide you a list of trademarks they
hold?

Sure, but would also need a list of any present (and future!) domain names they hold. Even then, who decides what qualifies as a "similar" name?

 

[midnight251]

I agree with RJ, don't sign anything. Just agree to hand over the Domain, and be done with it. A lot of people here will say consult a lawyer, but you don't have to. (just a money grab for the lawyers if you ask me). I think in your case, just hand over the Domain, and state that you will not sign any contract to the contrary, other than relinquishing the Domain name to them. I think if you hand over the Domain to them, there will be nothing else said.

Just my opinion on the matter.

Midnight

 

[briman1970]

Sure, but would also need a list of any present (and future!) domain names they hold. Even then, who decides what qualifies as a "similar" name?

If you look at the sentence carefully, it is apparent that when they say "name" in the document, they do not mean "domain name". They indeed mean "name", as in the name of one of their service marks and/or trademarks. These people are not domainers. They are simply asking you not to register a domain that is similar to one of their marks in the future.

In any case, ignoring the request and transferring the name to them ASAP is your best move at this point. What can they really do to you once they receive possession of the name? If they want to push the issue after that, seek the advise of a lawyer.

Good luck.

 

[verbster]

If you look at the sentence carefully, it is apparent that when they say "name" in the document, they do not mean "domain name". They indeed mean "name", as in the name of one of their service marks and/or trademarks. These people are not domainers. They are simply asking you not to register a domain that is similar to one of their marks in the future.

I'm not so sure of this. If you read the quote below, you'll notice it's "any mark or name"..."or" being the operative word that differentiates "name" as something other than a "mark,' be it service or trade. While I"m not sure it means domain names, it's vague enough that it might (since they use "domain name"). Since it's not clarifiied, "name" has the potential to have a larger meaning than what you ascribe to it; for that reason alone, it's not a reasonable request. Before I sign a legally binding document, I don't think it's unreasonable to know exactly what the terms and definitions are. And there's still the problem of what they may own in the future, which, again, I would have no reasonable way of ascertaining if anything I reg is "simillar" (if not a registered mark of some sort).

In any case, I got the followup FedEx hardcopy of the C&D today. They have not responded to my request to begin a transfer of the domain.

Is there another way to "hand over the domain"?

Thanks.

[My Company] hereby further agrees not to seek registration of any domain which is similar or identical to any mark or name owned by [Their Company].

 

[labrocca]

What they sent you is standard enough from a good lawyer protecting their companies brand. However...you can do what RJ recommended as that's what I would do. Personally I don't see a big deal about signing that form. It's your responsibility not to infringe on their mark and be careful what you own.

 

[verbster]

you can do what RJ recommended as that's what I would do. Personally I don't see a big deal about signing that form. It's your responsibility not to infringe on their mark and be careful what you own.

I think I've already done what RJ suggested: I asked them to commence a TFR request. They have not responded. That's why I asked if there is another way I can hand over the domain.

I'm not worried about infringements on their marks; I'm concerned with the registering of anything "similar" to any "name" they own...which seems to include perpetuity...what they mean by "name" and how I would know what names they own.

In the end, I'm hoping the whole "name" thing is moot....but first I have to get them to take their name. If they don't hurry, it will expire, and I won't be able to transfer it.

How can I get them to take it?

 

[briman1970]

....but first I have to get them to take their name. If they don't hurry, it will expire, and I won't be able to transfer it.

How can I get them to take it?

This is what I would do...

1. Create a new account at your registrar using their company information - business name, corporate address, email and phone number.

2. Push the disputed domain into this account.

3. Renew it after the push. It's only $6-8 to cover your butt.

4. Copy the whois info from their main website domain into the whois info of the disputed domain.

5. Edit the nameservers to point to their site.

6. Send them an email explaining what you have done. State that you have placed the domain into their possession. In the email, provide them with the ID and password of the new account. Certify that you will destroy any digital evidence of the password on your computer and never access the account again, although they can change the password for their own security if they like.

7. Follow up with a printed version of the email. Mail it to the return address on the C&D letter you received from them. Don't alert them that it is coming to them. Make sure that your letter is trackable and that they have to sign for it. Send it next day if you can afford it.

8. Track the letter until you're sure they have received it and don't lose your tracking slip/receipt from the post office.

9. Hope and/or pray they don't contact you again.

 

[verbster]

Much appreciated. Thanks.

 

[*AllThings.tv*]

Give up the domain but there is nothing that obligates you to sign or agree to anything. Once they have the domain, their dispute with you terminates. I would not recommend binding yourself to something for no reason or compensation.

 

[RickM]

I've gotten a similar request before and have simply refused to sign a ridiculous contract when I'm more than willing to hand over the domain for free in a gesture of good faith. If they were paying for the name, I could understand it.

In my case, I just turned over the domain, refused to sign anything and they left me alone. I wasn't intentionally violating their trademark, but it was easier to hand over the domain than to fight it. Signing some additional document to me seemed like an admission of guilt.

Couldn't agree more...why should you sign something when you can quite easily just hand the name over.

Out of interest, is this company Mc D's -- It sounds very much like something they would do.

 

[verbster]

Out of interest, is this company Mc D's -- It sounds very much like something they would do.

No....it begins with an A...without mentioning any names. I think my theory about a promo dealing with cards may be correct, as I just saw an ad for another fast food place featuring their own card.

 

[IAmAllanShore]

If it's Arby's and you wouldn't mind sharing the letter (Or the names on the letter), I'd be interested in seeing it. No need to reply in thread.

Of course McDonald's "Arch" card has proven to be popular, and now Arby's is taking a page from the McD's playbook:
http://www.ceridian.com/corp/article/1,2868,12452-56750,00.html

-Allan

 

[verbster]

The domain was arbyscard.com. It's been transferred to them.

Overall, except for their IT guy, Arby's was not pleasant to work with...Despite immediate and complete cooperation,

 

[Dave_Z]

Thanks for updating everyone here. Could you perhaps explain how it went?

No prob if you prefer not to, though.