Time to uncork the champaign...my first C&D!

[Domainate.com]

I figured it was only a matter of time. Looks like their email generator didn't recognize a particular character as it put question marks in some weird places. I wonder how the U.S. Government feels about them running a sportsbetting/poker/casino site in the U.S., but ANYWAYS...

"Dear Steve Jones:

We write on behalf of Bodog Entertainment Group S.A. ("Bodog"). Bodog owns the BODOG trademark (the ?BODOG Mark?), for which Bodog holds various trademark rights ? including U.S. trademark registration 2,930,682. The BODOG Mark is well-known and famous; it is used to provide online wagering & gaming services, gaming educational services, as well entertainment properties in various other fields. The BODOG Mark is used in (among others) the www.bodog.com and www.bodog.net Internet domain names, which are also well known.

It has come to our attention that you are currently operating a web site at http://www.bodogbonus.com/, a domain name that infringes the BODOG Mark (the "Infringing Domain Name"). You are using the Infringing Domain Name to redirect Bodog's existing and potential customers to the web site for your business purposes. More specifically, you are using the Infringing Domain Name to obtain Internet traffic intended for Bodog, by causing Internet users to mistakenly believe that your web site is associated with, sponsored or endorsed by, or otherwise related to Bodog.

Bodog did not authorize your use of the BODOG Mark in the Domain Name. Bodog is neither affiliated, connected, nor associated with you, and neither sponsors nor endorses your business. Thus, your unauthorized use of Bodog?s intellectual property may constitute, among other things, trademark infringement, trademark dilution, false designation of origin and cybersquatting ? in violation of various international and U.S. laws, including 15 U.S.C. ? 1125(a), 1125(c) and 1125(d).

Bodog would prefer to resolve this matter amicably, if such a resolution can be reached promptly. To avoid the necessity of Bodog taking additional action to protect its intellectual property, Bodog demands immediate written confirmation that you will comply with the following terms:

1. IMMEDIATELY AND PERMANENTLY CEASE USING THE http://www.bodogbonus.com/ DOMAIN NAME AND ANY OTHER DOMAIN NAME INCORPORATING BODOG?S TRADEMARKS OR ANY VARIANT THEREOF;

2. IMMEDIATELY TAKE ALL NECESSARY STEPS TO TRANSFER TO BODOG (OR ITS DESIGNEE) THE REGISTRATION OF THE http://www.bodogbonus.com/ DOMAIN NAME AND ANY OTHER DOMAIN NAMES WITHIN YOUR CONTROL THAT INCORPORATE THE ?BODOG? MARK OR ANY VARIANT THEREOF, INCLUDING (A) UNLOCKING THE DOMAIN NAME (B) PROVIDING US WITH THE AUTHORIZATION CODE FOR THE DOMAIN NAME; AND (C) SUBSEQUENTLY EXECUTING ANY EMAILS OR OTHER DOCUMENTS TO EFFECTUATE THE TRANSFER; AND

3. AGREE NOT TO USE ANY NAME, MARK, OR DOMAIN NAME WHICH INCORPORATES THE ?BODOG? MARK OR ANY VARIANT THEREOF, OR INFRINGES ANY OTHER TRADEMARK OR OTHER INTELLECTUAL PROPERTY OWNED BY BODOG.

You must provide us with written assurance that you will fully comply with Bodog?s demands within forty-eight (48) hours of the date of this email. Should you fail to comply, Bodog stands ready to pursue its available legal options.

The demands made herein are not made to the exclusion of other rights or remedies to which Bodog is entitled, and nothing in this letter, nor any act or omission by Bodog, shall be construed as a waiver of any right or remedy possessed by Bodog, all of which are expressly reserved.

Your prompt attention to this matter is appreciated.

Best Regards,

Legal Department
Bodog? Entertainment Group S.A."

 

[verbster]

You got lucky because the company didn't know better. By changing your site AFTER you were contacts, they should have view that as bad faith.

Hmmm...I'm not so sure of this. I would have to research it further, but could it be that a C&D is a multi-action request/demand, where one action may satisfy the C&D without having to comply with multiple demands?

To wit, a C&D is demanding that a domain name owner stop using the domain name in a way that infringes on a TM, and it usually also demands that the infringing domain name be relinquished to the TM holder...but what if both of these demands don't have to be fulfilled to alleviate the infringement...Then does the name still have to be turned over?

For example, if someone owned and parked mcdonaldsdrivethru.com (which would appear to be an infringement)..but they also were in the process of building a site using that name, which was for a drive-thru laundry service owned by a guy named mcdonald. Would it still be an infringement as soon as the site went live...and showed zero connection with the fast food franchise? Wouldn't using the site (domain) as a legitimate, unrelated type of business satisfy the demand to stop using the domain name in a fashion that infringed?

And if the domain is now used in a manner that is not an infringement, why would it have to be relinquished?

This is just off the top of my head, without any research, so I might be overlooking something very obvious...

 

[pixelbugnyc]

are there any lawyers on this site that would be interested in doing a live chat on namespros.com? i dont run the site, im just throwing it out there as an idea.

two part post:::

i also want someone's clear opinion on this. theres no way to best reference ebay without saying "ebay". so if i have a service that enhances the experience to bid online, and my domain is ebaydoctor.com am i violating any laws? the site wouldnt be an auction site or offer any opportunity to bid on anything, (just a fix it site . whatever that means) so in reality it has nothing to do with bidding - is that legal?

....

wheres the best place to get affordable trademarks?

 

[Ronald Regging]

Obviously you were in the wrong and I think you made the right decision, but this does lend to some interesting questions involving intellectual property rights in regards to illegal activities. If an activity is illegal in a specific country, should the TM holder be able to retain rights in that country? Do intellectual property rights trump the criminal laws? I guess given the Madrid Protocol (international nature of IP law) and the process WIPO uses (which isn't really according to law at all), one could conclude that they do. But it would definitely be an interesting UDRP case to follow if the Respondent made claims that a TM should not be held valid on the basis that their sole business is offering illegal material.

Actually, that isn't the case here though, because Bodog does provide "Play Poker", which is legal in the US, so technically, they have every right to their TM and to protect it. Congrats on the C&D though, hehe, I wouldn't mind getting one myself

Online gambling in the US is not illegal. It's actually a very very grey area that can be argued from both sides, based on a law many years back that did a horrible job of clarifying anything. And to date, there haven't been any definitive rulings either way. So for all intents and purposes, from an end-user standpoint, it's not illegal. The new law only makes it illegal for banks and other financial institutes to allow people to fund their online gambling accounts, it does not make it illegal for people to gamble. In all of the cases where people have been arrested, I've heard of Neteller and an offshore poker site (can't remember which), it was because the owners of the site CAME to the US. It's not like the government has the power to extradite someone from a country where what they are doing is legal in order to prosecute them in the US. These people, for whatever stupid reason, knowing full well the legal implications of operating their enterprises, decided to tempt fate and come to the US. Once they stepped on US ground, they were then held accountable for their illegal activities, which are now enforcable under US law...