Screamingpcs TM has got me screaming

[opalxx]

Have just got a legal letter from the US (i'm in Oz) that a domain i have (screamingpc) is trademarked. Apparently screamingpcs (note the s) is trademarked. Never would have thought this name would have been trademarked. Bought it only because of the quirky name.

Apparently Mr Smith (the owner of screamingpcs.com, screamingpcs.net and screamingpc.com) has advised his legal eagles that i am using the name in connection with a website that has previously offered a search and is being used as a search engine for internet service. Huh??? This name is parked at parked. Then says my continued registration (i've only registered it once) and continued use is an infringement of the trademark.

I have been instructed to take down (whatever that means) and transfer the name to Mr Clyde Smith.

Cease use of all marks that contain screamingpc.

Cease any internet links, websites.

Provide an accounting of revenue (which is easy, it's 0).

Provide a reply from the date of the letter (just got it yesterday so its past the 15 day reply mark).

So, what do you think? Do i delete the name or transfer it to Mr Smith????
I know what i would like to do with it!!!

Your thoughts are appreciated.

 

[jberryhill]

most of jberryhills post got me all confused
...

There might come a day when I have a similar situation with one of my domains and I really wouldn't know where to turn

...and should that day ever come, I'll be happy to confuse the living shit out you.

 

[Michelle]

...and should that day ever come, I'll be happy to confuse the living shit out you.

I just lost my coffee

 

[Dave_Z]

Technicalities matter... when they matter.

You know what, that pretty much answers my question earlier. Just that I've
somewhat recalled discussions about this in another forum, but you're right it
depends on the context.

Amazing sometimes, no?

 

[RicoShay]

most of jberryhills post got me all confused
...

There might come a day when I have a similar situation with one of my domains and I really wouldn't know where to turn

...and should that day ever come, I'll be happy to confuse the living shit out you.

Lol, thanks... I hope that day doesn't come, but I'm glad to know you're here and willing to "confuse the living shit out" of me

 

[DN BROKER]

Lol, thanks... I hope that day doesn't come, but I'm glad to know you're here and willing to "confuse the living shit out" of me

I think your confused with yourself :lol:

 

[opalxx]

wow

Just wanted to say much thanks for all of your responses..it is 5.30am here in OZ so will read more closely when head clears and add more detail. The legal notice does say that Mr Smith has the ability through the Madrid Protocol to ensure his rights in the mark. I wonder why someone would go to such great expense through the legal system without first trying to obtain the name himself with a personal letter. Can't be worth that much, surely??

 

[Dave_Z]

Can't be worth that much, surely??

For some, it's the principle.

I'm probably missing something, but the Madrid Protocol only applies to those
who agree to it. And New Zealand doesn't appear to be one of them.

 

[opalxx]

For some, it's the principle.

I'm probably missing something, but the Madrid Protocol only applies to those
who agree to it. And New Zealand doesn't appear to be one of them.

We're in Australia..not sure if it applies here..and if it does not sure what it would mean!!!

Ok, before i send an email suggesting they sit on the rough end of a pineapple i want to make sure this doesn't boomerang back, so i quote:-

Trademark number 3,245,359 for the word mark 'Screaming PC"S' used in conjunction with computers in International Class 037.

The client owns other interests relating to common law trademark rights which grant the client protection in the literal scope of the trademark and use of the trademark in association with goods or services to prevent consumer confusion. Thus trademark rights in a mark used for computer services have a natural zone of expansion that includes inyternet services to prevent consumer confusion.

Further please note that because the mark is registered in the United States Mr Smith has the ability through the Madrid Protocol to ensure his rights in the mark SCREAMING PCS are wholly imposed to the fullest extent under Australian law.

It has come to our clients attention that you have registered and are using the domain www.screamingpc.com in connection with a web site that has previously offered a search engine for computers and computer services and is presently being used as a search engine for internet services. This appears to be a load of crap. The name has been at parked since i registered it.

We herby serve notice that that our client Mr Smith considers your registration and use of the domain www.scramingpc.com as used in connection with computers and Internet services an infringement of his rights for the registered trademark SCREAMINGPCS.

It is inevitable that consumers will be deceived into thinking that your services are in fact SCREAMING PCS services, or that SCREAMING PCs sponsors or is affiliated with your web site, all in contravention of trademark infringement, anticynersquatting, and unfair competition laws. Your continued registration and use of the domain is with authorization and is an infringement of the registered trademark. I don't have a website, or offer any services so i think they pulled this bit out of a hat!

In order to prevent further confusion Mr Smith herby demands that i take down and transfer screamingpc.com to Mr Smith.

Cease and desist use of all marks that contain SCREAMINGPC.

Cease and desist use of all internet links, web sites and directs that includes marks confusing similar to the clients trademark.

Provide accounting details of all revenue received from the use of SCREAMINGPC. That will be easy, it's a big fat 0)

Mr Smith woyuld like to reach a quick amicable decision of this matter, however unless you comply with the demands within 15 days of this letter you'll be up shit creek and Mr Smith will take appropiate steps to protect the public (not sure what from) and enforce his rights including the initiation of domain name dispute resolution proceedings against you through the Arbitration and Mediation Centre of the World Intellectual Property Organization (whoever they are).

The trademark document attached shows that:-

Transferred into a National Application: No
Madrid Protocol Information
(not available)

So, can i go and pick that pineapple ready for posting?

 

[flamewalker]

...and should that day ever come, I'll be happy to confuse the living shit out you.

You just made my day :D:D:D

Anyways, As others have said... look up the TM and find out exactly what it is for. Remove from parking ASAP. Develop it if you can in a non-infringing way. They still have the option to file for UDRP/WIPO if they want... if you can show good faith in registering it, it will only help your case.

HE has to pay a lot of money to file UDRP... or he can just go the lawsuit way but not sure what good that would do since you are in Australia...

Or take the easy route and give it to them and move on.

[Not legal advice, and I haven't researched the tm or the domain history etc, so take it with a grain of salt ]

and use of the domain is with authorization

Um... this definitely isn't from a lawyer. And, lawyers don't use terms like "you'll be up shit creek". At least no self respecting lawyer I've talked to/met. I've seen a typo or two, but those two are just funny imo.

Question: Did your parking display ads for pc's or internet services?

Installation and maintenance of custom computers built for high-speed, high-graphic games

As far as I can tell with a quick glance, that is your boundary for what you can use the name for legally. Rather, that is what you cannot use it for.

Edit 2: At a quick glance, it looks like it was a generic help forum before you registered it... That MAY be a safe bet for development. Also, your parking page is linking computers and hardware etc... IMO remove from parking and put a coming soon page up asap!

 

[jberryhill]

And, lawyers don't use terms like "you'll be up shit creek". At least no self respecting lawyer I've talked to/met.

Call me sometime, I dare you.

 

[flamewalker]

I have lol... anyways I meant in a legal document...

 

[uber]

...and should that day ever come, I'll be happy to confuse the living shit out you.

I can vouch for this! :p

 

[TheBulldog]

Mr Berryhill, you obviously know your extra "fact" is flawed.

The wife gets it all in the divorce and moves to Bermuda.

 

[opalxx]

appreciated

We now have a web page for www.screamingpc.com which will be upgraded later to advertise a genuine slot car business we have (the hire out of a mobile slot car track) for kids parties as shown in the pic. Screamingpc has now become screaming performance cars (slot cars do scream under speed).

So, whatdja reckon...has this put me in the clear?

Once again many thanks to you all for your great advice which i will be acting on, including encouraging my wife to take everything and move to Bermuda.

 

[flamewalker]

Once again many thanks to you all for your great advice which i will be acting on, including encouraging my wife to take everything and move to Bermuda.

:D

In the clear? Not necessarily... they can still pursue it if they want, and the fact that it was parked won't help. The fact that you are showing intent to develop will severely limit their ability to make a valid claim imo. I think you made the right decision to begin development though to limit the potential damage.

 

[tricolorro]

...and issued after the date of registration of the domain name by more than a year.

:hi:

But couldn't he claim (and have to prove) common law rights well before the official registration?

Note: I see jberryhill already addressed this issue in response to Dave zan's posting in this thread (page 1).

Patrick

We now have a web page for www.screamingpc.com which will be upgraded later to advertise a genuine slot car business we have (the hire out of a mobile slot car track) for kids parties as shown in the pic. Screamingpc has now become screaming performance cars (slot cars do scream under speed).

So, whatdja reckon...has this put me in the clear?

Once again many thanks to you all for your great advice which i will be acting on, including encouraging my wife to take everything and move to Bermuda.

:hi:

Making changes after the fact usually doesn't help...but don't give up.

Patrick

 

[flamewalker]

It really depends how long it was parked just how convinced a panelist would be of intended development...often people will just make a simple change and claim differing use, which is why it doesn't hold much water with some panelists... I think the op has shown significantly more intent to develop in a non-infringing way than many do when they change it.

And yeah, they could claim rights before registration, however they would more likely use the 'first in commerce' date of the TM. If they really wanted to grab the domain by filing for a TM, aka reverse hijack the domain, the first in commerce should have been pre domain registration. Then, a reasonable panelist would require proof that they had obtained common law rights before the domain was registered. Unfortunately not all panelists are reasonable.

 

[opalxx]

I guess the big question is, will this cost me zillions (i'm flat broke) to try and hang on to it if they start proceedings to obtain it back.

 

[ac1d1dty]

I would hold onto it. I think you have a strong case on a personal as well as legal front. It was registered before his business was established. As its been said "a business name is a name til registered".

Hold on, til he at least compensatese you for it (and dont squib out )

 

[jberryhill]

Making changes after the fact usually doesn't help..

...and it is usually interpreted as an admission that you were doing something wrong in the first place. Most often, it's a very bad idea.