Trademarkprotection AutoTrader.com

[moneymakerster]

I received an email from autotrader.com....please advice what should I do now? My domain is iautotrader.net and I register few years ago. BTW, I'm non-US.

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AutoTrader.com, Inc.
5775 Peachtree Dunwoody Rd., Suite A100
Atlanta, GA 30342


Dear xxxxxxx:

We write to you on behalf of TPI Holdings, Inc., Cox Auto Trader, Inc., and AutoTrader.com, Inc. (the “AutoTrader Companies”). TPI Holdings is the owner of the AUTO TRADER® mark, which has been in use since January 1, 1974. TPI has licensed this mark for exclusive use by Cox Auto Trader in connection with the automotive-related AUTO TRADER magazine. TPI Holdings is also the owner of the AUTO TRADER.COM® mark. Since August 25, 1999, AutoTrader.com has made extensive use nationally and internationally of the AUTOTRADER.COM® name and mark in connection with its services. AutoTrader.com is the exclusive licensee of the AUTOTRADER.COM® name and mark. All of these marks are federally registered. As a result of the extensive use and promotion of these marks, the AutoTrader Companies have developed substantial goodwill in the AUTOTRADER.COM ® and AUTO TRADER® marks.


It recently has come to our attention that you have registered the domain name iautotrader.net (the “Domain Name”), which incorporates the entire AUTO TRADER® mark/a mark that is confusingly similar to the AUTO TRADER® mark in an attempt to trade off the goodwill associated with the AutoTrader.com brand.

Although at the date of this letter, the Domain Name does not resolve to an active page, passively holding a domain name for which you could make no legitimate use is actionable. Your registration of the domain name iautotrader.net infringes and dilutes the trademark rights of the AutoTrader Companies, which are entitled to claim both monetary damages and injunctive relief against you. Your use and registration of the Domain Name also violates the Anti-Cybersquatting Consumer Protection Act (“ACPA”), which grants a civil right of action to a trademark owner against a person who (1) has a bad faith intent to profit from the use or registration of a domain name and (2) registers or uses a domain name that is identical or confusingly similar to a distinctive mark or dilutes a famous mark. In addition to these civil causes of action, the AutoTrader Companies can also compel the transfer of the Domain Name by filing a complaint with the World Intellectual Property Organization (WIPO) under the Uniform Dispute Resolution Policy (“UDRP”).

Accordingly, to protect the AutoTrader Companies, their customers, and the general public from consumer confusion, we request that you contact us within ten (10) days from the date of this letter and (1) arrange to transfer the infringing Domain Name to AutoTrader.com, and (2) provide written assurances that you will not register or use any domain name that is confusingly similar to the AUTOTRADER.COM® or AUTO TRADER® marks in the future. We appreciate your prompt attention to this matter. If you have any questions or need additional information, please do not hesitate to contact us.

Sincerely,

AUTOTRADER.COM, INC.
[email protected]

 

[Ms Domainer]

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Here's the U.S. trademark:

http://tess2.uspto.gov/bin/showfield?f=doc&state=4008:vn01ge.2.11

It's for the term "Autotrader."

Unfortunately, the domain is parked at Sedo, and so you are monetizing off the TM holder; the first ad is for Autotrader[.] com.

Although you didn't reg this domain in bad faith (it looks as though you have owned this domain since September 4, 2006, BEFORE their trademark, which is February 5, 2007), you are now using it in bad faith. If you weren't monetizing off their trademark, you'd have a better case.

You might as well transfer the domain because if this goes to UDRP, you are likely to lose.

HOWEVER, I'm not a lawyer, so if this domain is important to you, you might want to consult an attorney.

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[moneymakerster]

Thanks Ms Domainer for your advice. I put the Sedo parking page just 2 hours ago. Now I take it down. I didn't monetize as they mentioned too.

Anyway my domain name is "i" in front of autotrader but not like "autotrader.biz, .info, .mobi. I saw a lot of tld domain with the word "autotrader" which are not own by autotrader.com

If my domain is violate of trademark, a lot of domain names in the world will have problem.

 

[Ms Domainer]

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If a domain is "confusingly similar" (typo, "i" "e" in front of the word) to the trademark, it can still violate a trademark.

Did you put the parking page up AFTER you received the email or before? It could be that the autotrader people had your domain on their TM watch list, and the minute you put up that page, they pounced with that C&D letter.

Had you not put up that page, you'd be in a better legal position because you had regged the domain before the trademark and you weren't monetizing. The minute you put up that parking page, your domain's legal status changed, even if you didn't make anything because it shows intent to monetize.

Anyway, that's my interpretation. Maybe someone else better versed in trademark law could chime in.


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Thanks Ms Domainer for your advice. I put the Sedo parking page just 2 hours ago. Now I take it down. I didn't monetize as they mentioned too.

Anyway my domain name is "i" in front of autotrader but not like "autotrader.biz, .info, .mobi. I saw a lot of tld domain with the word "autotrader" which are not own by autotrader.com

If my domain is violate of trademark, a lot of domain names in the world will have problem.

 

[moneymakerster]

Hi
I put the parking page just for fun after received the letter from them.

Prove from their letter "Although at the date of this letter, the Domain Name does not resolve to an active page,..."

Anyway really appreciate your advice. Have a nice day.

 

[Tippy]

Is this name worth anything to you, you've owned it for a few years and havn't done anything with it?

Why are you holding onto it? Why renew it... doesnt seem worth while to me.

 

[Ms Domainer]

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And putting that $5,000 price on it doesn't help your case.

I hope you didn't try to sell it to the company that sent the C&D. That would really look bad.


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[labrocca]

Funny thread.

User wasn't actually cybersquatting until he gets this notice then he immediately parks it along with a huge asking price. If he did nothing he would have been better off. Now autotrader.com has proof of your bad faith intentions.

If you didn't do anything there isn't any proof of bad faith and imho you could have kept it. Now the question is why keep it to begin with? It's a poor domain and you never did a thing with it. Not worth keeping.

 

[moneymakerster]

OK I'll push the domain to them later. The price I set is when I register this domain few years ago for fun somewhere else, not recently set. BTW I got money to keep whatever I like. The question of the domain value is definately out of topic. Sorry no offence. Anyway thanks Ms Domainer for her advice.

Moderator, please close this thread. Thanks

 

[DubDubDubDot]

Shouldn't have registered this in the first place. They have a very well known site.

The parking ads alone aren't enough to say bad faith because domain owners have no control over the ads appearing there. WIPO does bring up parking in rulings, but only passively.

... Unless someone can point to a case where parking was the deciding factor, but I haven't bumped into one in all the random cases I've read though.

 

[Tippy]

All the money in the world wont help you keep this name, its obvious why you regged it in the first place...

 

[AdoptableDomains]

Although you didn't reg this domain in bad faith (it looks as though you have owned this domain since September 4, 2006, BEFORE their trademark, which is February 5, 2007), you are now using it in bad faith. If you weren't monetizing off their trademark, you'd have a better case.

They may have just recently registered the name autotrader as a trademark, but they have been using the TM for many years and therefore had it before this domain registration. In the US it is a very well known publication that has been merged with the internet in recent years.

Being non-US probably won't mean much to the OP if filed as a UDRP.

 

[sacofrome]

You are cybersquatting in the most obvious way. Makes no difference when Auto Trader registered any domains. They have the trademark. You copied their mark.

 

[joeyhavlock]

If my domain is violate of trademark, a lot of domain names in the world will have problem.

It does not matter what the rest of the world is doing in relation to you and your trademark infringement.