Trademark question (cease &disest letter received)

[tophatter]

Hello, New to this board.Received a letter the other day from a intelectual property law firm regarding my registration of a famous person's name who is now deceased that I regisitered with a .mobi extension. They stated that my registered name was infringing on their clients trademarked name and it was confusingly similar and likely to create a false impression or affiliation with the trademarked name.I checked and the name is trademarked but they do not own the exact name with other extensions. I had it for sale on sedo but have since removed it.
They stated to immiadiatley cease and desist all activities related to the name(which I did) however they want me to initiate the process of transferring the name to the owner of the trademark(estate) by a certain date or they said they would be forced to consider more formal remedies to protect the trademark.
My question: Shoud I contact them and tell them the name is not for sale and in no way will be infringing on their trademarked name however I don't know why I shoud give them the name that I paid to register especially that I will not offer it for sale or direct any typeins from the name going foward.

Please Help.
Tophatter

 

[viciouscircle]

Did you have it parked at sedo as well?

Also, why did you register the name? Is there a meaning to it other than the famous person's name?

If you had it parked at sedo, they were probably displaying advertisements related to the deceased celebrity. Which, regardless of your actual intent, shows intent to profit from their trademark and therefore, trademark infringement. If this is the case, and they have a decent lawyer, they have probably already documented this fact and your best option would be to simply wash your hands of the situation and transfer the domain to them. Better to lose the domain, than to spend a lot of money on a court case you are all but guaranteed to lose, IMO.

 

[Ronald Regging]

Dead people have rights too! I agree with vicious. No competent lawyer would send a C&D without first taking screenshots of your site as evidence, because the first thing most people do when they recieve a C&D is try to erase the incriminating evidence and claim innocence... There are cases for celebrity names that have gone both ways, but considering you had it parked, its probably enough to show bad faith and for you to lose. Also, it's probably not worth you going to court over.

I'd tell them you're willing to transfer the domain if they reimburse you for the money you spent to register it. This is usually considered fair.

 

[Dave_Z]

If the domain name's site that time bore any hint of commercial use, then you
might as well transfer it to them.

And yes, dead people can have rights, too, especially when protected by the
living.

 

[ecigs.net]

I don't know why I shoud give them the name that I paid to register especially that I will not offer it for sale or direct any typeins from the name going foward.

Basically, by parking the name and cybersquatting it you are stealing the name. You r intention was to make money off of the famous person. Unless you have the same name, you will lose. You have no right to it at all. Zero. They don't even have to pay you for registering it. Your lucky if you don't have to pay damages (the lawyer costs the family have already have had to pay). Some of those guys make $350 an hour and would love to spend a month fighting with you. Transfer the domain immediately and beg for forgiveness.

 

[pluto459]

Its all in the intent. Unless there is someone else with the same name like your cousin which is why you bought it right (lol)

Put content on it about that person.

C & D letters are to SCARE you and from reading these replies these people scare easily. There not going to spend 4000.00 to file with WIPO and oh, why in the world would you but it with .mobi?? Did you feel a mad dash for someone to look them up as they drove down the street lol. Mobi is a scam!!

Just send a reply stating your case. It is the lack of a reply that will hurt you. I have gon at it with myspace and amex and a response from me and they were gone.

DOnt be scared! Offer then the name for sale as a good will gesture for a reasonable price and be done.

 

[NeeJam]

I'd tell them you're willing to transfer the domain if they reimburse you for the money you spent to register it. This is usually considered fair.

I agree, i think this is probably the best solution in tihs instance.

 

[Ronald Regging]

C & D letters are to SCARE you and from reading these replies these people scare easily. There not going to spend 4000.00 to file with WIPO and oh, why in the world would you but it with .mobi?? Did you feel a mad dash for someone to look them up as they drove down the street lol. Mobi is a scam!!

It costs more around $1000 to file with WIPO... While I do agree that often times C&D letters are a scare tactic, if you know you're in the wrong, why drag it out and risk being labeled a squatter and possibly paying fines?

 

[DNQuest.com]

Its all in the intent. Unless there is someone else with the same name like your cousin which is why you bought it right (lol)

Put content on it about that person.

C & D letters are to SCARE you and from reading these replies these people scare easily. There not going to spend 4000.00 to file with WIPO and oh, why in the world would you but it with .mobi?? Did you feel a mad dash for someone to look them up as they drove down the street lol. Mobi is a scam!!

Just send a reply stating your case. It is the lack of a reply that will hurt you. I have gon at it with myspace and amex and a response from me and they were gone.

DOnt be scared! Offer then the name for sale as a good will gesture for a reasonable price and be done.

This is such a newbie response with no research behind your response.

 

[labrocca]

To be blunt. You are in the wrong and should give up the name.

 

[DNQuest.com]

To be blunt. You are in the wrong and should give up the name.

You know how boring it is when we always agree???? We need something good to argue about.

 

[labrocca]

DNQ you can always join my political debate forums...incredible amount of stuff to debate there.

 

[johnny6]

How famous is this dead person?

Chances are pretty good they won't file against you - I'd be willing to bet (although I would love to hear the actual figures from someone who knows) that over 90% of C&D letters end up as nothing more than pieces of paper - because of the prohibitive costs of going to court...

Nonetheless. Weigh the pros and cons. Is the domain making you any money? How much? Is it worth the potential risk? Do you feel morally awkward owning it? Do you care?

If the answers to the first three questions aren't resounding, then why not just tell them you'll give them the domain as long as you are reimbursed for reg fees. If the frist three questions are answered in resounding and impressive fashion than you might keep it and see what happens.

If you're going to lose sleep over the domain, then get rid of it.

I've given up domains because of C&D letters many times.. but I've also ignored them when it seemed like they were blowing hot air. I've also transferred trademark violation domains because it made me feel uncomfortable owning them and once just to save trees by cutting out the daily C&D letters from one company.

Finally, don't drop the domain just because someone on here tells you you're in the wrong. It's not anyone's place to judge you when you ask for an opinion on what to do. The judging comes from yourself and the people writing you the C&D letters.

Cheers and good luck-

John