Weird C&D letter from enom.com (demand media)

[dotnom]

In 2005 i was searching for a short and memorable name (like we all do here in this forum)
I found the "kenom.com" which sounded like kenom and more like key for names to me
In fact i registered also in 2006 keynom.com too to avoid spelling errors
Never used for new domain registrations but for registered domain sales

Because from first glance someone and especially a domainer would think that this may remind you the "enom.com" i thought it will better to ask before i use it
So i did

I asked :
--- Your Original Message - 6/10/2005 3:24 PM ---
"3. The use of xenom.com ( where x can be any combination ) as an enom ETP website violates the copyright of your company or not ?"

enom :
--- Agent Reply: May Blatherwick - 6/12/2005 7:48 AM ---
"3. Again, please clarify your question?

I replied :
--- Your Reply - 6/12/2005 8:52 AM ---
"If i use a name such us xenom.com ( where x can be any english letter like benom.com for example ) , as the basic name of an enom ETP website to promote and sell domain name services
Do you consider the name ( because it contains the name of enom.com , in the example before benom.com ) violates the enom.com copyright or do you believe in general there is any problem to use it for this purpose and with this kind of services as an ETP reseller of enom ?"

enom :
--- Agent Reply: May Blatherwick - 6/13/2005 7:59 AM ---
"If the name you are looking to register is available, you would be able to use it for domain registration. I hope this answers your question. Let me know if you need anything else"

So i took the OK and proceed. As you may see i'm already few years to this forum and i display the domain name even at the signature
In 12-Feb-2008 few days ago i received a C&D letter from Demand Media the new owners of enom saying that :

It was recently brought to Demand Media’s attention that you have registered and are using the domain name <kenom.com>. Your use of a domain name that incorporates the whole of Demand Media’s trademark is an obvious attempt to divert Demand Media’s consumers to your website and is a potential violation of US trademark law and unfair competition laws as well as the federal Anticybersquatting Consumer Protection Act. Please note that the addition of an extra letter "k" does not itself distinguish this domain from the ENOM trademark. Furthermore, your current use of the domain directs users to a website that offers domain name services which are in direct competition with Demand Media. Your registration and use of this domain illustrates your obvious and willful intent to register a domain to divert Demand Media customers to your website. Willful trademark infringement may expose you to treble monetary damages and other penalties. Your attempt to sell the <kenom.com> domain is also evidence that you registered this domain in bad faith


I replied :
Dear Mrs. .....
i must say i was surprised from your email
My surprise was based on the fact that i had the same opinion like you before the registration of the name (that the domain may bump at your copyright fences)
Because i value enom.com enough many years now i thought it was proper to ask at the time of the registration time of the domain

"mentioned the details of my communication i put at the top of the post"

I have the receipts for all these contacts to prove the validly of the previous data

I don't feel threatened from your email but rather disappointed from enom
The idea of the name was not based on enom as an extension with a "K" but more like kenom.com (the key for names)
That's why i registered keynom.com too on 15-jul-2006 to avoid spelling typing errors and redirect it to kenom.com when i had the time to push kenom.com more

Ending i want to underline this, i don't make a living from kenom.com or noticed a great increase in sales so in other words is not so significant for me
However i find this issue serious enough to make it public starting from various domain name forums that i visit daily
If this was indeed a big site you could ruin his business and this type of irresponsible behavior is not what i had in mind for enom that i support all these years



She replied :
Dear Mr. ......,

I am happy to hear that you support the eNom domain registrar services. Certainly you can understand the importance of protecting the eNom trademark as well as protection customer's from being deceived or confused when they mistype the domain <kenom.com> and they are directed to a site that offers the identical and competitive services offered on ENOM.COM. As a trademark holder, Demand Media is required to protect its trademark rights as well as its consumers from confusion or deception, and it is believed that your registration of the domain <kenom.com> is a deliberate attempt to divert customers seeking eNom domain registrar services to your site.

I am not familiar with your conversation with May Blatherwick. No one by that name currently works at Demand Media, Inc. However, you even mention that you "had the same opinion" that your registration of the <kenom.com> domain "may bump into your copyright fences" which indicates that you knew customers might potentially become confused with your registration of this domain.

I did not intend to come across in a threatening manner. My tone is only to convey the importance that Demand Media places on its valuable intellectual property rights and on the value of protecting Demand Media consumers from being mislead or confused.

I hope that you are willing to work together towards an amicable resolution in this matter.


I replied :
Mrs ......
first of all i'm happy with your fast reply
However i think you disregarded the content of my email and you lower the value of the data i provided

I don't find it very professional to say you don't know who is "May Blatherwick"
Sorry to say that i don't know your company too. From what you say you are the new owners of enom. I know enom from 2002 but didn't know Demand Media
If you notice the day of the conversation i provided and that the reply came straight from enom.com ([email protected]) i find hard to understand how you keep saying that "is a deliberate attempt to divert customers seeking eNom domain registrar services to your(my) site"
Further more i provide you with the support case number "Case XXXXXXX - Question about RegistryRocket and more"

Please notice again the replies i gave you before you reply and contact enom.com for verification
I took the green sign from you the days that kenom.com was registered (check the days)
I provided you with the prove for this. If this ruin your case i'm not the one you should blame

I understand your position to work and produce results for your company and i would agree right away with you if i didn't ask for this before 3 years
The importance to Demand Media and every legal or consulting company should be not only to protect the customers of your enom but also the reputation of enom that you clearly heart right now

I'm certainly willing to work with you to find a common acceptable solution even i don't find any from the options your provided until now
May i suggest to start with an apology from your side regarding the accusations and the outcome you extract from my email ?

 

[Ross]

CS reps will tell you anything just to get you off their back.

I remember when the SideKick 3 was coming out. I would call up the CS line and ask them when it was coming out and they would tell me that it would come out the next week or not even come out at all. I basically got a different response every time i called back. CS reps dont actually have any power or know any information especially in new products and legal matters.

As stated before the response that was given was quite vague. My initial thought when reading it was that you could register the domain, thats basically all i got out of it. You should have clarified with her the final response. If you would have gotten a clear reaponse from the lady you could take it court and use that as strong evidence to support the matter.

Also what holds you back is that you pretty much knew that it was going to infringe on the trademark. You also stated you knew what you were doing.

All in all get what you can out of it. If they threaten legal action just do what they say. Take it as a lesson learned. Ohh yeah when getting clarification on this type of matter in the future as to talk to a supervisor. They will be able to help you more than the average CS rep that is just there to read a computer screen and give vague responses.



Little story that is kind of funny and kind of contributes to what i am talking about:

The other day i was looking for a bag of "Flaming Hot Funions". I litterally drove around to every gas station looking for them and i couldnt seem to find them. I was getting frustrated so i asked the cashier at one of the gas stations if they carried them and i got this response "Whats a Funion?". This just goes to show that just because someone works at a place that sells funions and prolly sees them on a daily basis might not know what they are. LOL kind of ridiculous (sorry just had to tell it)

 

[dotnom]

I think smashfactory tried to be funny and not actually mean this

In any way Demand Media repr. is not so cooperative

Also let's don't forget that the investment of time is priceless
I didn't have to loose even 10 min from the creation of the animated avatar of my namepros profile if this name was not a main domain and not a typo of enom

I underline once more that for me the name means kenom (key for names)
Keynom.com is also registered and scheduled to redirect to kenom.com when i had time develop it more

 

[Ross]

eNom sees it as a typo and they have a trademark and legitiment argument. YOu pretty much have no agument in this case. I mean you are using it in pretty much the same manner as eNom itself. If i were you i would comply with eNom and just use Keynom.com as your site. Honestly its more unique and im pretty sure they would have anything to say about that.

 

[smashfactory]

yes it was meant light-hearted

 

[dotnom]

CS reps and any kind of reps are actually representatives of a company
If the company is not responsible for their representatives and accepts their mistakes at least to the point to say "sorry it was our mistake" then i think it's unacceptable to hear them say that it was registered in bad faith

We don't talk about verbal or phone communication
There is a specific support ticket with enom's email headers

If someone says OK and you invest time to make something based on that OK is not a lesson that i'm forced to learn but the company that used the CS person

Notice all the replies of DM repr.
1. "No one by that name currently works at Demand Media, Inc..."
2. "I do not have record of your conversation with Ms. May Blatherwick as she no longer is employed here at eNom, Inc. Your alleged conversation with this employee occurred over two years ago"

She doesn't accept or as she says can't verify the data i provided
(I have complete records from 1995 but enom don't have the support tickets of 2005)

Also as a sidenote do you see any legal email form at the ETP control panel or generally ?
I tried to find something today, there was none and i remember correct that wasn't there in 2005 too

From what i read i think i should start a poll and let people vote about how vague my question and her reply was from the first place
This will help me understand if it was my mistake or enom's mistake before i proceed to anything else (however if you have a lead for enom's manager will be good too)
At least i accept my mistakes (even grammar mistakes) as i see enom can't

 

[tricolorro]

You know what, Jesse, I understood the words "use it for domain registration"
to mean registering the domain name. That goes to show some people might
treat certain words differently, and that's likely what caused this to occur.

Unfortunately what's done is done, namely the domain name and its content is
potentially infringing Demand Media's eNom trademark. While Demand Media's
executives may tell eNom's to "coach" the rep who replied to dotnom's query
(and maybe apologize for any possible confusion), that's not necessarily going
to change their position towards dotnom.

Well, folks, lesson here is don't register and use domain names that potentially
infringe registrars' trademarks.

:hi:

I'm with you on your interpretation.

Reading her response, I took it to mean "go ahead and register a domain
if it is available".

It was not permission to use it for a domain name business which a
customer rep could not grant anyway.

Patrick

 

[Lpspider]

From the response you originally, got, I think it's obvious that the rep was saying you could use it for domain registrations as you currently are.

If you're not going to hand over the domain, I would make your primary domain name keynom.com instead of kenom. And don't transfer them the domain name unless you're getting fair compensation - just redirect it somewhere else.

 

[dotnom]

:hi:
I'm with you on your interpretation.
Reading her response, I took it to mean "go ahead and register a domain
if it is available".
It was not permission to use it for a domain name business which a
customer rep could not grant anyway.
Patrick

Just a note
Dave posted this after his primary reply you quoted :
"I originally understood that reply to exactly mean it can be registered, but I've since re-read it and saw it rather differently"

 

[Pommy - The DN Doc]

There is a Chinese Chef on UK TV called Ken Hom. He would appear to have far more right (not much) to have a whinge about your DN than enom. They have presuambly TM'd the name enom wrt domain registration but not everything. IMHO Park it with a keyword that has nothing to with DN reg and chinese cookery and next time dont email companies for their opinions about tm infringements!

 

[tricolorro]

In 2005 i was searching for a short and memorable name...

I found the "kenom.com" which sounded like kenom and more like key for names to me

In fact i registered also... keynom.com too to avoid spelling errors


Never used for new domain registrations but for registered domain sales

...from first glance someone and especially a domainer would think that this may remind you the "enom.com" thought it will better to ask before i use it. So i did

Your intentions were good but unfortunately you asked the wrong person.

You should have contacted the Legal Department.

It's not reasonable to think a CS rep could provide a legal answer.

Beyond that, after reading the emails you posted it's quite clear you knew you were asking a legal question but the CS rep did not.
-------------------------------------------------------------------------------------

the example before benom.com ) violates the enom.com copyright or do you believe in general there is any problem to use it for this purpose and with this kind of services as an ETP reseller of enom ?"

[/B]

Good question.

Wrong person asked.
--------------------------------------------------------------------------------------

enom :
--- Agent Reply: May Blatherwick - 6/13/2005 7:59 AM ---
"If the name you are looking to register is available, you would be able to use it for domain registration. I hope this answers your question. Let me know if you need anything else"

As Dave Zan said elsewhere she's telling you if a domain is available you
can register it.

She was not green lighting your usage of the domain.
-----------------------------------------------------------------------------------

So i took the OK and proceed.

That was your mistake.

You asked the wrong person and misinterpreted her response.

Plus you knew you were dancing on hot coals.
------------------------------------------------------------------------------------

i received a C&D letter from Demand Media the new owners of enom:

It was recently brought to Demand Media’s attention that you have registered and are using the domain name <kenom.com>.

your current use of the domain directs users to a website that offers domain name services which are in direct competition with Demand Media.

This is not a legal opinion but after reading thru thousands of WIPO
decisions, I do not think you have any chance to keep this domain if
Demand Media files a UDRP.

You should consider yourself lucky if they choose that route instead of filing
a court case.

I hope you will cut your losses while you can.

Maybe if you reason with them , you can get some concession under the circumstances.
----------------------------------------------------------------------------------

My surprise was based on the fact that i had the same opinion like you before the registration of the name (that the domain may bump at your copyright fences)

You said copyright but meant trademark.

Sorry too say but that admission was you putting a nail in your coffin.
------------------------------------------------------------------------------------

[/QUOTE]As a trademark holder,Demand Media is required to protect its trademark rights as well as its consumers from confusion or deception, and it is believed that your registration of the domain <kenom.com> is a deliberate attempt to divert customers seeking eNom domain registrar services to your site.[/QUOTE]


She's telling you the truth.

There's a new Sheriff in town.

Demand Media bought Enom.

They are required by law to protect their trademark...or risk losing it.

And this is NOT a case of trademark overreach or overzealousness.
-----------------------------------------------------------

I am not familiar with your conversation with May Blatherwick. No one by that name currently works at Demand Media, Inc.

I replied :

I don't find it very professional to say you don't know who is "May Blatherwick"

People come and go all the time in every business and including here on Name Pros.

It's not reasonable that you question this.
--------------------------------------------------------------------------------------

I hope that you are willing to work together towards an amicable resolution in this matter.

I'm certainly willing to work with you to find a common acceptable solution even i don't find any from the options your provided until now
May i suggest to start with an apology from your side regarding the accusations and the outcome you extract from my email ?

She held out an olive branch.

Reason with her (them).

Maybe you can get some consideration but don't push it.

:imho: they have the winning hand

I don't mean to seem harsh on you.

I think it's a series of unfortunate incidents.

Good intentions mixed with misinterpretation, misunderstanding,
language gap ,etc .

I hope you reach a satisfactory if not happy conclusion.

Good luck.
Patrick

 

[dotnom]

Thanks Patrick (tricolorro) for your time to quote and reply with such detail to these discussion points

and of course thanks everybody for their participation

 

[tricolorro]

I just did a search of USPTO, and the trademark ENOM is owned by eNom. Not by Demand Media. So I think they are possibly misrepresenting themselves. I also see nothing in that trademark covering the reselling of domains in the aftermarket.

Demand Media bought Enom.

That means they bought (own) the Trademark also- unless that was
excluded from the sale...which it was not.

--------------------------------------------------------------------------------------

I think you have received permission from eNom for use of the kenom, even for domain registrations.

:imho: You think wrong.

She only gave permission to register an unregistered domain.

She did not and was not in a position to give any legal permissions.

Patrick

Just a note
Dave posted this after his primary reply you quoted :
"I originally understood that reply to exactly mean it can be registered, but I've since re-read it and saw it rather differently"

:hi: dotnom,

Yes i saw that after I read thru all the postings.

I still believe she meant you could register an available domain.

You should realize who you were communicating with.

She was a CS rep and your question was not a typical one but you can see she tried her best to answer you.

After reading thru all your postings here and your responses, it's quite
clear to me that you intended no harm and tried to do the right thing by getting an okay.

It's unfortunate the way things have worked out.

You indicated in another posting here that you do have legal representation.

I suppose the best course of action would be to follow their advice.

I know you meant well and are not a typosquatter so all I can do is wish
you a very good outcome.

Patrick

Thanks Patrick (tricolorro) for your time to quote and reply with such detail to these discussion points

and of course thanks everybody for their participation

DotNom you are very welcome.

I must say I am very impressed with your attitude and composure.

I know you are going thru a difficult situation but yet you have taken the
high road and have been very cool, calm and collected in your responses
even if someone (like me) post something that may be at odds with your position.

You are a role model for proper decorum for all domain name forums.

Patrick

 

[Dave_Z]

Next step before anything legal is to find someone at enom/demand media that he can understand and reply to my questions
Anyone knows contact information for their sales/legal manager/ceo or anyone capable to understand this case ?

If you're communicating with Sarah Akhtar, she's eNom's general counsel and
Demand Media's senior vice president for legal and business affairs.

 

[labrocca]

It's not uncommon for companies to "hide" their legal departments. It's not unreasonable to assume asking a CS rep a legal question would simply respond "We will forward this to our legal department. Please wait for their response" and then forward it to the proper person.

This whole part made me laugh a bit.

Therefore, I respectfully ask that you cease use of the KENOM.COM domain name and transfer this domain to Demand Media at once.

Which is followed up with:

I do hope that we can reach an amicable resolution in this matter before it become necessary to take some form of legal action.

So in one breath it's a demand for transfer and the next it's an attempt to reach an amicable resolution...lol.

Call her on that Amicable Resolution crap and tell her that the DEMAND to transfer without compensation to you for this trouble is not acceptable.

I can almost guarantee you lose a UDRP. But I believe in a civil case they would lose because you didn't act in bad-faith (my opinion remember). Let's see if she is willing to spend the $2k for UDRP or work for that Amicable Resolution she speaks about. I would ask her about that. It's HER statement. See if they are willing to at least offer you some Enom credits. At LEAST they can do that.

 

[PowerUp]

If someday, renoma decides to sell domains as well, is there ground for enom to sue for infringement of trademark? I'd like to hear everybodies views.

Isn't there anybody who can give some input to the question above?

Here's another question.
Would the OP be able to keep his kenom.com domain if he registers his trademark for selling domain names bla bla bla.. I mean, enom has a trademark for a specific area. Then trademark kenom in the same specific area as enom. Now the OP would have a legitimate trademark kenom.

 

[Name Trader]

your current use of the domain directs users to a website that offers domain name services which are in direct competition with Demand Media.

Sorry. But I just don't get this claim. Did you take some links down? Now. Lets look at their Trademark..

ENOM
Goods and Services IC 042. US 100 101. G & S: Computer network address software management, maintenance and consulting services; computer services for registering, managing and tracking computer network domain names, numerical computer network addresses numbers and web addresses on a global computer network; computer web site hosting services for others; global computer network address management services; computer services, namely issuance and management of digital certificates and digital personae for authentication and encryption of digital transactions and communications; verification of digital identities for the purpose of permitting or denying access to confidential information and services. FIRST USE: 20021205. FIRST USE IN COMMERCE: 20021205

I don't see anything in there about selling second-hand domains in the aftermarket. Which is the sole purpose (afaict) of kenom.com.

 

[Dave_Z]

But I believe in a civil case they would lose because you didn't act in bad-faith (my opinion remember).

I'm not sure if ACPA strictly requires bad faith intent:

http://www4.law.cornell.edu/uscode/...tml/uscode15/usc_sec_15_00001125----000-.html

A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person--
(i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and
(ii) registers, traffics in, or uses a domain name that--
(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark; (II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or (III) is a trademark, word, or name protected by reason of section 706 of title 18, United States Code, or section 220506 of title 36, United States Code.

IIRC the eBay-Perfume Bay dispute didn't involve bad faith showing.

I don't see anything in there about selling second-hand domains in the aftermarket. Which is the sole purpose (afaict) of kenom.com.

One way to think of this is like the SwapNames-SnapNames thread. While the
latter doesn't have selling domain names listed in their registration, they might
be ready to show their trademark has acquired distinctiveness that confusion
might occur.

Likelihood of confusion is basically what domain-trademark disputes are about.
And that's one avenue eNom/Demand Media can explore, PowerUp.

Essentially, dotnom, you seem to think you can hold eNom "accountable" just
from what their rep said. I don't know how you can do that given that eNom
and Demand Media have no obligations to you to begin with.

While you don't necessarily have obligations to them either, unfortunately you
have given them grounds to hold you accountable for your actions.

 

[Name Trader]

One way to think of this is like the SwapNames-SnapNames thread

.

IMHO. SnapNames reverse hijacked SwapNames. They won only because they filed (or threaten to file) a lawsuit.

 

[DNQuest.com]

.

IMHO. SnapNames reverse hijacked SwapNames. They won only because they filed (or threaten to file) a lawsuit.

As I said in that thread, can it be concidered "confusingly similar"? Since they were in the same field, it can reasonably asssumed to be confusingly similar.

 

[Name Trader]

I think that could be debated. They'd also have to prove 2) No right or legitimate interest, and 3) Bad faith registration. I think Snap's decision to strong-arm them with a lawsuit, was possibly seen as a more reliable option than taking them to arbitration.