Hello,

Got this email because I created a domain with a company name in it... nothing too crazy or against the company.


We are writing to follow up on our previous email to you concerning your registration and use of the domain name XXXX.com, which contains our company’s trademark.

We remain highly concerned and disappointed by the fact that despite our good faith effort to advise you of our rights and seek to amicably resolve this situation, you have simply ignored our effort and continued your infringing activity with your registration and use of XXXX.com. Your registration and use of XXXX.com violates the Lanham Act (15 U.S.C. 1051 et seq.) because it infringes and dilutes the famous trademark. And now that you are operating an infringing site with full knowledge of our rights, you are considered a willful infringer and, as such, could be liable for greater damages.

While we would still prefer to resolve this matter amicably, if you continue to ignore our attempts to resolve this matter promptly, we will have no choice but to take whatever action we deem necessary to protect our rights. For these reasons, and to avoid consumer confusion, we must insist that you immediately stop using XXXX.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 considering escalating this further to protect our rights.


Can I actually get in trouble??

Thanks :)

This is new to me, I am surprised they are allowed to do this. Is it a fake email?

I don't belive this, I figure you can still use it. If anything they should hire a lawyer to have a legal email sent to you. If I where you I would speak to a personal lawyer and just ask him if this is a real thing.

It wouldn't be the first time a large company yanks away someones domain because their copyrighted name is in it.
AFAIK, the only way you can win is if you registered the domain [i]before they copyrighted their name.

I think you could still use it since you have registered it. The trademark protection on tradition business would not applied to the business online, IMO. They need to negotiate for buying the domain from you.

Have a nice day,

I would advise you consult a professional on this, but I believe if you have the company trademark in your domain they can pursue action.

This has indeed happened in the past, and Apple won the case seizing 16 domains!

Please view this: http://techcrunch.com/2010/01/07/apple-domain-names/

Also, is your site by any chance affiliated with eBay? [eBay Alerts]

Good luck though, you may have a chance!

If your domain name is not the same as their company name - ignore them.

I think you could still use it since you have registered it. The trademark protection on tradition business would not applied to the business online, IMO. They need to negotiate for buying the domain from you.

Have a nice day,

This is not quite correct, as a trademark covers all areas where the name is used online and offline. I would recommend, that you consult a Lawyer and check if they really have a Trademark and if yes what region (f.ex. Europe, Us, etc.) You can do this here: http://www.eurimark.com/
If they have a Trademark, they have the right to claim it back from you. But if they want to solve this on a friendly way you could ask them to make an offer.

This is very interesting as I am about to trademark a domain of mine

Please keep us updated

*bookmarked*

IAKAL so you should take what I, or any of us, say with a grain of salt, until you consult a lawyer, however, as long as you aren't using the domain in a way that would be likely confuse people, that you are in some way affiliated with the company in question, or doing something fraudulent with it, the worst they are going to do is take the domain name. I don't think you need to worry about them getting any monetary damages. If you are using the domain for a legitimate purpose, I don't think they will even win the domain name if you were to fight it. I think as long as they are only sending you emails, they aren't too serious (or don't know what they are doing). They can't prove an email ever got to you, so notifying you, in that manner, is only meant to be a scare tactic.

Consulting a lawyer is always best in these circumstances. Have you checked out their trademark at USPTO? How are you using the domain? Parking? do any of the ads feature their products or their competitors products? If so, you're liable. You should comply with their requests or change you parking keyword to something completely unrelated. Is it a 4 char domain? Very few trademarks are that short.

I'm pretty positive even if you hold a domain that might 'infringe' on any trademark, and if the trademark holder wishes to reclaim the domain, they still have to negotiate a 'fair market value' exchange for the domain, and if a fair market value cannot be met, they can persue legal alternatives to reclaim the domain. They cannot simply demand you "let it expire"

It isn't 4 characters, I just X'd it out. Yea, I read other places where people had this happen to them. They replied to the email and did not get a response at all. I replied to the email asking what I should do. Lets see if I get a reply.

I am thinking it is just an email they sent out to everyone to try to scare them. They do not actually handle the replies.

I would suggest you find a lawyer on this case. There is a plenty of fraud case.

It depends, and not being able to see the trademark or brand we cannot really say, but yes, if correct and it is branded to them (when they own copyrights), i would start crying before you go to court.

Well, I'm not a lawyer, and I don't play one on TV. However, from my experience, I can tell you that IF they have a legitimate trademark, they will get your domain name if they want it.

So, first check out whether it is a valid trademark at USPTO.gov. If it is, then you're basically screwed.

So, then, you have four options:

You can surrender the domain to them in exchange for them releasing you from any liability; or

You can fight them in court when they sue you (this can get expensive and possibly end badly); or

You can convince the company that your website is actually adding to their company's trademark strength (like maybe a fan website for a video game) and get their approval to use the trademark for this limited purpose; or

You can negotiate a "fair" settlement for the company to reimburse you for your what you have invested into the domain and site development and then transfer it over to them.


This last one can be tricky, because if you ask for more than you have invested you could be accused of cyber squatting which carries a minimum fine of $1,000. On the other hand, it will realistically cost the company at least $2,000 to start any kind of lawsuit.

See www.tannedfeet.com/cybersquatting.htm for a reasonable explanation.

I had this situation with a domain that had a common word that in some way got trademarked by a big company and, although I can't legally talk about the specifics, I was able to get them to "reimburse" me several thousands of dollars instead of going forward with a court action. Quite frankly, if I had more time, I think I could have won that case.

But, in life, you have to choose your battles carefully.

Good Luck! :cool:

"4solutions" has come up with a few scenarios. If you do not hard any company's reputation or do not explore their trademark, they wouldn't do much besides getting an order from a court which allows them to take control over the domain name. If it is really a domain that is important for them (and I presume it is, otherwise they wouldn't write notices) you'd better surrender the domain name. It is not a good practice to explore someone else's trademarks.

Unfortunately, I have personal experience in this matter and it cost me some hard earned money to learn this lession.

Basically if you have a domain name that is not generic and includes a name of a trademarked corporation and the domain was registered after registration of said corporation you will lose it. Plain and simple. The only exception to this statement is if the site is a xyscorpsucks.com and used as a satire site.

I had the help of a lawyer that specializes in this arena, and I bought the domain as an xyzcorpsucks.com, but since I did not actually launch the site and get the forums active, I lost.

Save your time and money and give it back less the reg fees and save the 4 months and $4k to respond.

I'm pretty positive even if you hold a domain that might 'infringe' on any trademark, and if the trademark holder wishes to reclaim the domain, they still have to negotiate a 'fair market value' exchange for the domain, and if a fair market value cannot be met, they can persue legal alternatives to reclaim the domain. They cannot simply demand you "let it expire"

I'm afraid you (and others who have said similar things) are incorrect here.

Suggest you all do a Google search on something like "domain name dispute" or "UDRP" or "WIPO + domain".

For the OP - I would strongly recommend that you take proper legal advice here. From a professional, not from a bunch of well-meaning amateurs on a domain name forum.

Here is some light reading for those of you who think that one can get away with registering someone else's trademark:

http://www.wipo.int/amc/en/domains/casesx/index.html

Well, I guess my main point was that it costs a minimum of $1,300 to file a UDRP with the National Arbitration Forum ($1,500 with WIPO) plus whatever fees their lawyer will charge them. So they know that it will cost them several thousand dollars to go the legal route and get the domain turned over to them. And they also know that it will be difficult, if not impossible, to collect a judgement from you - although they might try.

That's why they will sometimes offer to settle with you because they can possibly save legal fees and then they have the assurance of absolutely getting the domain transferred to them.

But the company with the trademark certainly does NOT have to reimburse you even one cent for violating their trademark rights by registering the domain name. In fact, they have every right to sue you for the estimated harm that you have caused to their trademark.

That is why my first option above was to surrender the domain to them in exchange for them releasing you from any liability.

Some companies just want to punish you and won't enter into any negotiations to buy a domain, even for $1. They'd rather pay the $1500 + lawyers fees (at best) or file a lawsuit (at worst). In either case you will lose the domain if you were abusing their trademark. Much better to stay away from trademark domains altogether. The risk/reward is very high.

Check WIPO for more details about these issues

Again...you *can* register applecomputersucks.com which includes a trademarked company's name. However, once you register it you must launch the site and get the forums or the blog up and start complaining. However, don't even think about putting any ads on the site because if you're making one cent from the site, it's commercial.

It's a very tricky, narrow road to follow if you want a big company's name in your url, but it can be done. There is case history on satire and commentary sites so people can fall back on them, but the criteria for those sites are very rigid. For the OP, since you didn't have a site like this launched before you got the notice of their complaint, your opportunity to keep the domain by launching a satire or commentary site is blown. However, for others, if you tread very carefully and use this method, you can keep a trademarked name in your domain (but it'lll be a huge waste of your time & money without advertising or any other revenue).

Enjoy.

Digital Landscape are you sure about this apple domain and starting forum? Whats about opening trademark domains in bad faith, i have see many people lose they domain because they talk about trademark company in not so good manner.

I have my personal experience in this matter and during my case I spent over 5 weeks reading the guidelines and case history. In the cases where someone makes a commentary or satire site, and does so without making or soliciting money from anyone, that's repeatedly considered Bona Fide (reference wal-martsucks,.com, why-apple-sucks.com, homedepotsucks.com, verizonsucksass.com, etc in case history). Whenever someone has a famous mark from a company in their domain name and solicits money from anyone (including the company being criticized) that is repeatedly considered Mala Fide.

googling "wal-martsucks" site:wipo.int shows different WIPO decisions in some cases.

I got a reply:


Thank you for your response.

We appreciate that you may have registered the domain name with the best of intentions and without full knowledge of the law in this area.

At this point the best thing for you to do is to simply not renew the domain name and allow the registration to lapse. We would also again remind you that you should not sell, offer to sell or transfer the domain in the meantime.

We look forward to receiving confirmation that you will comply with our requests.