trademark Trademark Infringement Notice (Help Required) NonTrademark name

[Yousaf Saeed]

Hi,

I registered a name few days ago after RUNNING Trademark search and found no record against "JournalImpactFactors.com' name and registered it.

Two days later, i received Trademark Infringement Notice as shown below from so called trademark owners.
Can anyone here please help me check if they are trademark owners of this name or not?

Copy of the email:

What should i do now? Shall i give up on this name? Or any other opinions

 

[xynames]

Just because a judge or lawmaker wrote something doesn’t mean he knows how to write. Nor do all lawyers know how to write. Judges are just lawyers too.

Following the lead of poor writers is why so many lawyers are themselves poor writers.

 

[jberryhill]

Ummm... that wasn't written by a judge. It's from a brief written by a certain lawyer on behalf of a client who pleaded guilty to Iranian sanctions violations, and who wanted early termination of supervised work release.

Ring a bell yet?

 

[xynames]

The way I’m writing today is what matters.

Plus that wasn’t written so badly, was it?

 

[jberryhill]

Dude, that was March of this year. After 29 years of practice, you just got the hang of writing in the last half of this one?

That gives me quite few years of learning to write goodly.

 

[xynames]

You’re comparing a typo is for it’s to a writing style. Not a valid comparison “methinks.”

 

[Recons.Com]

I am with John here. Removing the bolded text simplifies it, but simplifying text can create inaccuracies (as John showed with the removal of "broadly") and can create future disputes and ambiguities.

I have worked with contracts for multi-billion assets and I know from the first hand experience that every word mattered and had sometimes consequence of hundreds of millions of dollars for involved parties. And even with the "excessive" text we had to refer to minutes of meetings and negotiation paper trail to find out in what spirit the clauses were made and what they really mean.

 

[carob]

I am a scientist and this keyword is EXTREMELY IMPORTANT in the Scientific community.

The website, the contents, the domain name, and the keywords are all separate items.

You can use any domain you like and call your site what you like and target your site at particular keywords for SEO and people will find it, and if it is worthwhile they will link to it and then more people will find it. If it has worthwhile content. Isn't the content the important thing here and the domain just a distraction? Do you want to spend on content if it seems no one will look at it and it costs you money to run the website?

Defending a UDRP is free, it is an arbitration procedure not a court, and you could do it without paid legal advice. If you lose a UDPR you lose only the domain, there is no financial penalty but the judgement is published for all to see. If you lost the domain you could just use a different domain for the site and continue running it. BUT if - separate procedure - a company takes you to court, then you face unknown financial and legal consequences.

 

[maya-zir]

send them link to porn site with a lot of bouncing popups and forget about them..

 

[topdom]

Say.
...
Journal impact factor means, impact factor of journals, so it is a generic term. Impact factor term is widely used for rating journals, without reference to your trademark. I think it is generic enough, even if you have a TM.

Price is only 500, and I'm sure others would be interested in buying it at this price, and put it into a legitimate use, without infringement. If you file udrp, I may not defend it, because my time is too valuable.
But I'm not willing to transfer it without hearing a suffficiently convincing argument.

..
And they will say, we accept your 500 usd offer.

 

[Yousaf Saeed]

After a month i got their second reply as follows: (One thing: they said application number in table in image below not registration number for trademark in China and Russia, what does that mean?)

Dear Domain Owner,

This is our SECOND communication with you. Please be advised that Clarivate Analytics (“Clarivate Analytics”) is the owner of numerous federal trademark registrations for our Journal Impact Factor and Impact Factor family of marks. As you are no doubt aware, Journal Impact Factor is a trademark used to identify products, services, activities and events related to Clarivate Analytics.

In connection to Clarivate Analytics proprietary rights over its famous trademark we again bring to your attention the following:

1) You have registered, without Clarivate Analytics permission or authorization, the domain name 'journalimpactfactors.com' (the “Domain Name”). The Domain Name incorporates the famous Journal Impact Factor mark in its entirety and by its very composition, suggests Clarivate Analytics’ sponsorship or endorsement of your website and correspondingly, your activities.

2) Your use of a Domain Name that incorporates the famous Journal Impact Factor mark in its entirety constitutes trademark infringement and dilution of Clarivate Analytics trademark rights and unfair competition. Your use of our mark in the Domain Name is diluting use because it weakens the ability of the Journal Impact Factor mark and domain name to identify a single source, namely Clarivate Analytics. Further, your registration and use of the Domain Name misleads consumers into believing that some association exists between Clarivate Analytics and you, which tarnishes the goodwill and reputation of Clarivate Analytics products, services, and trademarks.

3) Attached for your consideration is a list of our trademark registrations for both Impact Factor and Journal Impact Factor that further support Clarivate Analytics claims set forth above. See Appendix A.

Clarivate Analytics takes protection of its intellectual property very seriously. Failure to promptly abide by our request to cease your infringing behavior will result in this matter being turned over to our legal department. Clarivate Analytics reserves the right to pursue any and all legal rights and remedies available to it under federal and international law, including the Uniform Domain Name Dispute Resolution Procedure and Anticybersquatting Consumer Protection Act litigation proceedings.

In view of your infringement of our rights, we must demand that you provide written assurances that you will:


1. Immediately discontinue any and all use of the Domain Name;
2. Take immediate steps to transfer the Domain Name to Clarivate Analytics;
3. Immediately and permanently refrain from any use of the term Journal Impact Factor or any variation thereof that is likely to cause confusion or dilution.

Sincerely,


Clarivate Analytics Trademark Enforcement

 

[maya-zir]

After a month i got their second reply as follows: (One thing: they said application number in table in image below not registration number for trademark in China and Russia, what does that mean?)

Dear Domain Owner,

This is our SECOND communication with you. Please be advised that Clarivate Analytics (“Clarivate Analytics”) is the owner of numerous federal trademark registrations for our Journal Impact Factor and Impact Factor family of marks. As you are no doubt aware, Journal Impact Factor is a trademark used to identify products, services, activities and events related to Clarivate Analytics.

In connection to Clarivate Analytics proprietary rights over its famous trademark we again bring to your attention the following:

1) You have registered, without Clarivate Analytics permission or authorization, the domain name 'journalimpactfactors.com' (the “Domain Name”). The Domain Name incorporates the famous Journal Impact Factor mark in its entirety and by its very composition, suggests Clarivate Analytics’ sponsorship or endorsement of your website and correspondingly, your activities.

2) Your use of a Domain Name that incorporates the famous Journal Impact Factor mark in its entirety constitutes trademark infringement and dilution of Clarivate Analytics trademark rights and unfair competition. Your use of our mark in the Domain Name is diluting use because it weakens the ability of the Journal Impact Factor mark and domain name to identify a single source, namely Clarivate Analytics. Further, your registration and use of the Domain Name misleads consumers into believing that some association exists between Clarivate Analytics and you, which tarnishes the goodwill and reputation of Clarivate Analytics products, services, and trademarks.

3) Attached for your consideration is a list of our trademark registrations for both Impact Factor and Journal Impact Factor that further support Clarivate Analytics claims set forth above. See Appendix A.

Clarivate Analytics takes protection of its intellectual property very seriously. Failure to promptly abide by our request to cease your infringing behavior will result in this matter being turned over to our legal department. Clarivate Analytics reserves the right to pursue any and all legal rights and remedies available to it under federal and international law, including the Uniform Domain Name Dispute Resolution Procedure and Anticybersquatting Consumer Protection Act litigation proceedings.

In view of your infringement of our rights, we must demand that you provide written assurances that you will:


1. Immediately discontinue any and all use of the Domain Name;
2. Take immediate steps to transfer the Domain Name to Clarivate Analytics;
3. Immediately and permanently refrain from any use of the term Journal Impact Factor or any variation thereof that is likely to cause confusion or dilution.

Sincerely,


Clarivate Analytics Trademark Enforcement
Show attachment 107905

Tell them they better to worry about the word "analytics" in thier own name

 

[Yousaf Saeed]

Tell them they better to worry about the word "analytics" in their own name

This is the best REPLY I ever got in this thread!
Thanks, buddy!

 

[xynames]

Registration number is when TM is issued (approved). Application number means applied for.

But again keep in mind that trademarks are based on use not mere application. Although in the US must have the TM registered in order to enforce it. Maybe someone else with more time on his hands will come in with a more detailed explanation for you.

 

[carob]

But again keep in mind that trademarks are based on use not mere application. Although in the US must have the TM registered in order to enforce it. Maybe someone else with more time on his hands will come in with a more detailed explanation for you.

McDonalds just lost the TM on Big Mac in Europe because they were not actually using it:
http://fortune.com/2019/01/16/mcdonalds-big-mac-trademark/

 

[Yousaf Saeed]

Registration number is when TM is issued (approved). Application number means applied for.

But again keep in mind that trademarks are based on use not mere application. Although in the US must have the TM registered in order to enforce it. Maybe someone else with more time on his hands will come in with a more detailed explanation for you.

From where i can check the dates for application number being filed for approvals?

 

[ecomslice]

McDonalds just lost the TM on Big Mac in Europe because they were not actually using it:
http://fortune.com/2019/01/16/mcdonalds-big-mac-trademark/

you really just had me reg mybigmac lol .

 

[Yousaf Saeed]

I developed the website on this domain (JournalImpactFactors.com), and even sent them the email 4 months ago notifying them that if they don't reply my email in one months time then i will take it as no objection and the did not replied me! I sent two followups and no reply.

And yesterday, after four months, they sent me the perjury notice (Who is this perjury? - the email belongs to the party not the government legal department), which says they want me to put down my site!

I do not understand how come they can send me a notice like this when their own trademark can be under question because it is a generic name and was someoneelse research, and how come they can make a trademark on someoneelse's research and claims to be the owner of the generic term?


WHat should i do now?

 

[Yousaf Saeed]

Their Message:
-------------------
02-Jul-2019

Dear Sir/Madam,

This is to notify you that the website at the below listed URL(s) (“the Unauthorized Site”), infringes upon the intellectual property rights of Clarivate Analytics (“Clarivate Analytics”). We request that the page be immediately disabled and content removed.

https://journalimpactfactors.com/research/terms/
https://journalimpactfactors.com/

The Unauthorized Site infringes copyrights held by Clarivate Analytics in its site located at https://clarivate.com/products/journal-citation-reports/. The Unauthorized Site is not authorized by the copyright or intellectual property right owner, Clarivate Analytics, its agents, or the law.

Under penalty of perjury, I hereby declare that this Notice is accurate and that I am authorized to act on behalf of Clarivate Analytics.

Please contact me if you have any questions regarding this notice or need any additional information in order to remove the content.

Sincerely,

Clarivate Analytics Trademark Enforcement
--------------------------------------------------------

My Reply:
--------------------------------------------------------
04-Jul-2019

First of all, please refer to our first dispute on case number: [Case #640524]
There was a definite time given to clarivate to mutually initiate the UDRP case; to which i never heard back from you; that was considered as your give up, on that case.
Secondly, on a recent case #654192, we will be happy to mutually solve it (compensation based), or to take it in the court for further legal proceedings as we are clearly not infringing any content rights of clarivate. It is clearly mentioned in our terms of service that this website journalimpactfactors.com is a 'user' research-based social website that allows users to leave reviews on different scientific journals based on their personal manuscript submission experiences to various journals followed by the submission outcomes. The users then be able to leave their feedback score on journal-specific pages such as how long it took for a specific user to get his manuscript accepted or rejected by a certain journal and this review then be seen publically that helps other researchers to find a good journal.

--
It is also mentioned in our terms that the impact factors and other journal metrics are calculated by clarivateanalytics and the outbound link is also given. Whereas, clarivate does not hold the rights to stop us resharing the journal specific metrices which as also displayed on any journal specific website. For example, if we directly go to the journal website "cellulose', then their stats are available on their website that can be shared to promote that specific journal.

--
Before taking this in court, it must also be noted that the only aim of our website is to allow users to leave reviews on their manuscript submission experiences on journal pages of our website to help other researches to evaluate how fast or how slow the journal will handle their manuscript. Whereas, some journal specific data is also shown on the website that was taken from journal specific websites (not by clarivate analytics), to promote the journal among researchers, whereas, the outbound link was given to clarivateanalytics in our terms section.

--

We will be happy to mutually solve this case or to take it in the courts.

Thanks.

 

[Yousaf Saeed]

How do i move forward from here? Please advice.

 

[karmaco]

Why are you asking for advice? You didn’t take the advice previously offered to you and dug your heels in and developed.

 

[xynames]

You’ve already responded. I actually don’t like your response it makes it clear that you’re doing this on your own and don’t really know what you’re doing. However the gist of it is that you challenge their claim and are willing to go to court over it, which is fine.

If they take further action you need a hired lawyer not free forum advice.

Maybe the least expensive way for you to deal with it IF it goes further is to pay for advice but file the responses yourself.

 

[carob]

Their Message:
-------------------
02-Jul-2019

Dear Sir/Madam,

This is to notify you that the website at the below listed URL(s) (“the Unauthorized Site”), infringes upon the intellectual property rights of Clarivate Analytics (“Clarivate Analytics”). We request that the page be immediately disabled and content removed.

https://journalimpactfactors.com/research/terms/
https://journalimpactfactors.com/

They don't say what specific material is infringing copyright. Why not ask them to be specific?

If something infringes their copyright, they can specifically ask for that material to be removed, or they can ask the hosting company to act. But that is not the same as asking that "the page be immediately disabled" - really it should just need to be edited.

Interestingly they don't mention trademark.