Hey everyone,

I got this email from Edith at eBay today about a domain name I have. Wondering what everyone things I should do. They seem to insist I disable the domain and let it expire. I paid for it up until 2008 though so naturally I don't really want to let it go. I wrote back saying I have no intention of shutting it down but if they want to acquire it from me they can. Not sure if this was the best move. Here is the letter:


We are writing concerning your registration and use of the domain name ********.com, which contains the famous eBay trademark.

As you undoubtedly know, eBay is the leading provider of online person-to-person trading services and related goods and services. eBay adopted the name and trademark eBay in September 1995 and, since that time, eBay has actively used the eBay name and trademark in connection with its online trading and related services, including maintaining the web site www.eBay.com. The coined term eBay is one of the most famous trademarks on the Internet. eBay owns exclusive trademark rights to the eBay name in the United States and internationally, including related common law rights. Accordingly, eBay enjoys broad trademark rights in its name.

eBay has made a substantial investment in developing and providing its services. As a result of eBay’s pioneering efforts and devoting substantial effort and resources to providing only high quality services, the eBay name and trademarks are widely known among the consuming public worldwide, and the name and trademarks embody substantial and valuable goodwill.

Accordingly, we were concerned when we learned of your registration and use of ********.com. As we hope you can appreciate, protection of its trademarks is very important to eBay. Your registration and use of ********.com violates the Lanham Act (15 U.S.C. 1051 et seq.) because it infringes and dilutes the famous eBay trademark.

Infringement occurs when a third party’s use of a company’s trademark (or a confusingly similar variation thereof) is likely to confuse consumers as to the affiliation, sponsorship or endorsement of the third party’s services. Trademark dilution occurs when a third party’s use of a variation of a company’s trademark is likely to lessen the distinctiveness of the company’s famous trademark.

We have filed several successful federal court actions in the United States against companies and individuals employing the famous eBay trademark in their domain names, as well as more than six proceedings before the United Nation's World Intellectual Property Organization's arbitration panel. eBay has prevailed in each case and the domain names at issue were all ordered to be transferred to eBay.

In addition to the above, the United States Patent and Trademark Office ("USPTO") has recently denied registration of the mark "ebaysecurities" by a third party. Like your domain name, "ebaysecurities" incorporated the entire eBay trademark, adding only a generic term to eBay's famous mark. The USPTO recognized that eBay is a famous trademark and therefore denied registration of ebaysecurities. eBay is concerned that your unauthorized use of the eBay name may cause confusion as to whether you or your company’s activities are authorized, endorsed or sponsored by eBay when, in fact, they are not.

We understand that you may have registered ********.com without full knowledge of the law in this area. However, eBay is concerned about your use of the eBay trademark in your domain name. As you may know, the Anticybersquatting Consumer Protection Act (http://www.submerged-ideas.com/litigation/anticybersquat.htm) provides for serious penalties (up to $100,000 per domain name) against persons who, without authorization, use, sell, or offer for sale a domain name that infringes another’s trademark.

While eBay respects your right of expression and your desire to conduct business on the Internet, eBay must enforce its own rights in order to protect its valuable and famous trademark. For these reasons, and to avoid consumer confusion, eBay must insist that you immediately stop using ********.com and disable any site available at that address. You should not sell, offer to sell, or transfer the domain name to a third party and should let the domain registration expire.

Please confirm in writing that you will agree to resolve this matter as requested. If we do not receive confirmation from you that you will comply with our request, we will have no choice but to pursue all available remedies against you.

Sincerely,

Edith
eBay Legal Department

It really depends on the domain name, registration date, whether it's in use, and the current content if it is in use. Without that info, it's difficult to offer non-legal advice. I've been in the same boat and I'll be the first to say that most people are mistaken regarding domain name copyright/trademark infringement. You don't necessarily have to give it up as many people would advise.

Depending on how you are using the domain and what it actually is.

If, for example, your site is "ebaycanada.com" or alike, and offer similar service, they can see it as a problem (you're trying to brand your own service under their name, for example), and then you must comply.

If, for example, your site is "ebaytutorials.com" or alike, and offers guidance to people about how to be wary of scammers and how the basics of ebay work, and not promote any third party kind of service of similar nature, then you may be able to get away with it.

Offering them to buy it may be a good move if they just want to get this done with quickly; but it can also be seen as cyber squatting, and so you can possibily get yourself into more trouble. It really depends on what kind of domain you have, what kind of service you're offering on it, how you phrased it, and how they want to deal with it...

if you are asking for advice, why not telling your domain name?

Moved to Domain Name Forum.

what's your name?
let's take a look :)

I would advise you to either do what they say, or if you feel you have a case, engage a lawyer to sort it out with Ebay.

if you are asking for advice, why not telling your domain name?

Because if the other side's attorneys are smart, they've scoured the 'net for every
entry they can find and possibly use it against you.

My question to xero9 is why did you register the domain name in the first place.
Ebay's a famous mark, and your domain name can clearly give users the impression
you're either them or possibly getting a free ride.

I hate to say this, but give it to them. At least they're kind enough to let it expire
yet not pull up any active site, rather than transfer it to them.

And no, they don't have to pay you anything. In fact, they don't have to be nice at
all.

It's up to you to decide whether you should defend your rights to it or not. But it's
too late to retract anything at this point, they got you dead to rights.

It depends man. But lets just say these big companies dont care about you at all. Nor sure how many of you are familiar with Paul Dell? Well paul dell, started his own website dellwebsites.com and to me that seems absolutley fine BUT dell company sued him for somwhere in the ballpark of like a half of a million for paratism. So i would be extremley cautious in your endevours.

If xero9's name is Edward Bay. He might stand a chance. Other than that, I'd advise him to give it up. It's reasonable for you to ask them to reimburse you your expenses.

Interesting advice from everyone saying he has no chance when none of you even know the domain name. For all you know it may not be a copyright/trademark violation, which don't even apply to domain names in the first place unless it's abused.

My question to xero9 is why did you register the domain name in the first place. Ebay's a famous mark, and your domain name can clearly give users the impression you're either them or possibly getting a free ride.

How do you know the domain name in question?

Well. Amdac, if eBay's lawyers think it's a copyright and/or trademark issue, that's good enough for me. They'll need deep pockets to defend it in court. It's not worth the hassle. Reg another name and move on with their life. It's probably a bad faith registration anyway.

Oh... I forgot the disclaimer... I'm not a lawyer... get a lawyer well versed in domains and trademarks.

Wow, that's the most polite letter concerning that subject that I've ever heard of.

Offering to sell it definitely puts you in violation of the Lanham act.

Attempting to "profit in bad faith" from the trademark puts you in violation.

The best commentary I've seen on what is allowed comes from the 9th circuit court discussion of Bosley Medical: http://www.phillipsnizer.com/library/cases/lib_case369.cfm

Here's the actual 9th Circuit decision, which is quite readable: http://www.ca9.uscourts.gov/ca9/newopinions.nsf/3B0C93358B88F28D88256FD90056994B/$file/0455962.pdf?openelement

Odds are that if you asked for money, or are making money from the site, you will lose the UDRP.

It's an impossible question to answer, unless we know what is the domain name and what are/were your motives for registration in the first place.

If the name contains "ebay" or any of ebay's tradmarked terms, etc... then one would have to question WHY you registered the domain name.

If it is nothing less then a coincidence that your domain contains the term "ebay" (like "ebaysianfiltering.com") then you might be able to get away with it... but if you are "using" their trademarked term or mark for ANYTHING then you will surely die a slow painful death at the hands of a thousand lawyer's fingers.

I had a domain rejected at Fabulous parking... thebayxxxx.com. Now that's taking things a bit too far. imho.

Yes, it would be helpful to know the mystery domain name. Something like "knifebayonet.org" has the text string "ebay" in it. The word even has something to do with eBay, as at any one time a large number of knife bayonets are listed on eBay. But I can't see eBay being able to get it through arbitration or court decision. Something like "ebaysales" or "ebaytips" or "buyebay", though, would be nearly impossible to keep.

Well. Amdac, if eBay's lawyers think it's a copyright and/or trademark issue, that's good enough for me.

90% of the time it's a scare tactic. I've been in the same boat. I have a 4 page letter from one of the largest law firms representing some of the top US corporations regarding one of my domain names. It's the exact name of a recent high budget movie. They accused me of cybersquatting and trademark infringement. After I responded saying I refuse to 'hand over' my name because it's an existing site which is not related to their movie, they offered to buy it from me.

Your best bet is to contact your own lawyer for advice. Don't simply give in unless you know for a fact you have no hope.

I think in the OP's case it was already a bad faith registration. They haven't yet come back to refute that. In your case you obviously regged the domain and were using it with unrelated content before the movie. That is not a bad faith registration. These are 2 completely different kettles of fish. We both agree, that if they wish to dispute the allegations, they should consult a domain/trademark lawyer. They could also just ignore the letter and wait for the WIPO action. But that isn't really a problem and doesn't need to cost any money. It's the courts where the funds get gobbled up. There's no predicting how the aggrieved party is going to respond. If the cost of a lawyer is more than the domain is worth to you, give it up, and move on.

I agree that we don't know the domain but if we're basing it on the letter, we have a strong hint.

In addition to the above, the United States Patent and Trademark Office ("USPTO") has recently denied registration of the mark "ebaysecurities" by a third party. Like your domain name, "ebaysecurities" incorporated the entire eBay trademark, adding only a generic term to eBay's famous mark. The USPTO recognized that eBay is a famous trademark and therefore denied registration of ebaysecurities. eBay is concerned that your unauthorized use of the eBay name may cause confusion as to whether you or your company’s activities are authorized, endorsed or sponsored by eBay when, in fact, they are not.

So I think it is ebay[4-letter word].com