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Thread: Lanham act

  1. #1

    Lanham act

    I have bought several web domains with the most popular web domain provider in the US. I do not have any web sites but just the web domains. Now I am getting a letter from a lawyer in New York City which is representing a certain company and he wants me to relinquish my domains to his client because the web domains have words of the company of his client. If I do not do that he will get a court injuction in New York State courts against the web domain provider in order to force them to register my domains into the name of his client. The lawyer is referencing to the Lanham Act and since the web domain company is registered in New York State the Courts in that state have jurisdiction to do that. I have offered to sell my domains but they have not answered Does anybody know how to get out of this? Can I transfer my domain registration outside the US with another company? Do the americans court have jurisdiction all over the world?

  2. #2
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    I would recommend contacting an attorney for advice.

    It's my understanding -- and I am not a lawyer, so this may be 100% wrong -- that having a trademark in a domain name does not automatically grant ownership rights of that domain to the trademark holder. For example, if you owned the trademark "example", then I could create a domain called "exampleisanawfulcompany.com".

    As I understand it, the key to winning a trademark domain name dispute in court is that the defendant must be using the domain name in bad faith. One obvious example of this is cybersquatting. Another would be extortion. So if, for example, Google.com expired (hah!) and you jumped on it, then offered to sell it back to Google for $1 trillion USD, you'd probably lose a court battle. On the other hand, if Google.com expired and you grabbed the domain and used it to devote a site to your family heritage (because your last name happens to be "Google"), a suit based on the Lanham Act would probably fail -- although Google would have plenty of other avenues to get the domain back.

    Look at the ongoing Nissan.com dispute. Clearly Nissan motor company has the trademark on the word "Nissan" -- but that doesn't automatically give them nissan.com, which is used for a computer business. Sadly Nissan Motors will probably eventually win this if for no other reason than attrition, but so far the courts have ruled for the little guy.

    So it's up to you. Nobody here can tell you what to do, but I can tell you that owning a trademark does not AUTOMATICALLY grant you rights to that domain name. I can also tell you that lawyers love to send threatening letters. It's their job. Usually -- BUT NOT ALWAYS -- if they believe they have a strong case, they'll forgo the threatening letter and simply sue. And I can also tell you that anybody can sue anybody for any reason. Sometimes the cost of defending yourself against a meritless suit outweighs the cost of not doing whatever the plaintiff wants -- and sometimes you can turn around and recover damages from the plaintiff for wasting everyone's time.

    Again, speak with an attorney on this one.
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  3. #3
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    It sounds as if you are infringing copyright law, mainly because you are not even making a case you are not and you tried to get them to buy it from you.

    The best you can do is to give up the domains voluntarily and learn your lesson.

  4. #4
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    Quote Originally Posted by malcarada View Post
    It sounds as if you are infringing copyright law, mainly because you are not even making a case you are not. The best you can do is to give up the domains voluntarily and learn your lesson.
    Based on what?

    OP hasn't provided enough information to even take an educated guess either way.
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  5. #5
    The fact of the matter is that I am not a us citizen and I do not live in the States, I have a legitimate business in Mexico with its name duly registered in mexico. My business's name has 2 words that also the other company has. I am not breaking any law in mexico and why am I subjected to the laws of USA? Why am I forced to hire a lawyer in the US to defend myself from a US law which doesn't apply to Mexico? The last time I checked Mexico is a sovereign state or is a state of the US? The company that is doing this has its name also registered in Mexico but I also have my company name registered in Mexico but they are dragging me in to the US because I have my web domain registered with a web site provide that is in the US

  6. #6
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    How does the domain end? (What's the bit after the last "."?)
    James

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  7. #7
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    Quote Originally Posted by rogsen View Post
    I am not breaking any law in mexico and why am I subjected to the laws of USA?
    There may be a few factors at play here. Depending on the terms of the TLD you chose, you may have agreed to be subject to the laws of a given company. Even if you didn't, the fact that you're using a US-based registrar means that even though YOU may not be subject to US laws, your registrar is. One way around this would be to immediately transfer your domains to a Mexican registrar. However, if the TLD still establishes US law as the venue for your disputes, then you've already agreed to be bound by US law and a registrar change won't matter.
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  8. #8
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    I don't know if the other party has a legitimate complaint or not of if this is a scam. Few if any plaintiffs invoke the Lanham Act or go through local US courts. If they proceed it will likely be through the UDRP process which is cheaper for them. UDRP applies to all registrars regardless of location. A list of affected domains (.com. ,net...) is at the links below.

    http://en.wikipedia.org/wiki/Uniform...olution_Policy
    http://www.icann.org/en/help/dndr/udrp

    You may wish to look at past cases to see how these things go.
    In order to win at a UDRP proceeding the plaintiff must show all 3 of the below:
    1)The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
    2)The registrant does not have any rights or legitimate interests in the domain name; and
    3) The registrant registered the domain name and is using it in "bad faith".

  9. #9
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    Quote Originally Posted by rogsen View Post
    The fact of the matter is that I am not a us citizen and I do not live in the States, I have a legitimate business in Mexico with its name duly registered in mexico. My business's name has 2 words that also the other company has. I am not breaking any law in mexico and why am I subjected to the laws of USA?
    iCANN rules can get a bit confusing they also state the following and we really don't have complete details of you situation.

    http://www.icann.org/en/resources/co...s/ip/trademark

    Complaints regarding trademark infringement due to website content and domain names are outside of ICANN's scope and authority. For these types of complaints, please refer to one of the options listed below:

    You may want to retain legal counsel to determine what rights and remedies are available to you.
    You may want to file a formal complaint with consumer protection entities such as the International Consumer Protection and Enforcement Network or the US Federal Trade Commission.
    For cases involving "abusive registrations," you may be able to to begin an administrative proceeding under the Uniform Domain Name Dispute Resolution Policy.
    There are registrars out side the U.S. that are not subject to U.S. law, however most will have a dispute process in place. One factor may be how long you have actually owned the domain and been in business. At this point all you have done is received a letter from a lawyer you have not received any official court documents. There are so many details that are left out here. We have no idea how large the company is that is laying wants your domain, what there business is and what yours is. Depending on the size of the company there is a cost to them to try and bring you to court since your company and you are based outside the U.S. they have to decide if the wish to take that chance.
    Last edited by WebzPro; 02-06-2014 at 12:14 PM.
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  10. #10
    Quote Originally Posted by rogsen View Post
    My business's name has 2 words that also the other company has.
    Just curious: how unique or common (i.e. apple, delta) are those words without necessarily stating them here? Is your business similar in any way to that other company?

    As FRH Lisa said, though, it essentially depends how willing the other company (and/or their lawyer) is to dispute your registration. As also mentioned, only a lawyer experienced in these matters can tell you whether or not you or the other side has a possible case.

    From what you indicated, however, it seems the lawyer knows a lawsuit has more impact than an administrative action (i.e. Uniform Dispute Resolution Policy/UDRP).

  11. #11
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    If you're in Mexico ignore it.

  12. #12
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    I'll regrettably have to answer this as if I'm ignoring the fact that you're located in Mexico and the threatening party is in the U.S., as I'm not sure what this separation implies (if anything). The registrar is, after all, located in the States.

    That being said, a while ago, I did plenty of reading on cases pertaining to the Lanham Act and claims of cyber-squatting and trademark infringement. The plaintiff's burden to demonstrate violation of the Lanham Act is often extremely heavy. However, here are some of the repetitive themes I discovered in these cases that stuck with me:

    * If your site contains obvious and/or deliberate replicas of data, images, product displays, etc. that are identical to those belonging to the plaintiff, you're in trouble.

    * If you build or represent your website in which the content or design appears very similar and could easily confuse a visitor or purchaser about whether or not the site belongs to the plaintiff, you could also be in trouble.

    * If you've purchased the domain name and attempted to sell it to the plaintiff without any reasonable argument that you have your own specific purpose and use for it, then you're probably in trouble (especially if the plaintiff has records of you offering the sale of the domain for absolutely outrageous prices).

    That's not to say that you're completely off the hook if these instances (above) don't apply to your situation. However, the burden of proving that a defendant violated the Lanham Act isn't nearly as simple as some of these lawyers want you to believe. Most of them would rather attempt to scare you, collect, and be done with it.

    One final example -- ever wonder why many of the popular "(thiscompany)sucks.com" sites are allowed to remain online? Because the Lanham Act rarely protects the original organization in this type of situation. The domain name itself practically removes the possibility of visitors confusing the site with the actual organization, and the site/domain owner has a right to freely and publicly provide a negative opinion about a business or organization (this is much different than libel).


    FRH Lisa, you seem to know your stuff. Feel free to share your thoughts on any of this.
    Last edited by Ryan V; 02-06-2014 at 09:26 PM. Reason: typos

  13. #13
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    Quote Originally Posted by rogsen View Post
    If I do not do that he will get a court injuction in New York State courts against the web domain provider in order to force them to register my domains into the name of his client.
    Tip: Transfer the domains to DirectNIC, if you're not already there.
    If you use Godaddy, move ASAP!
    Not sure how Namecheap would respond to this scenario.

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  14. #14
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    Quote Originally Posted by FRH Lisa View Post
    OP hasn't provided enough information to even take an educated guess either way.
    OP has provided enough information to know that he registered the domain in bad faith. His first action was to try and sell it to the claimant when he was told he was infringing copyright.

    Normally people would not reply offering it for sale without any other argument.
    Last edited by zobe; 02-07-2014 at 02:23 AM.

  15. #15
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    Actually, re-reading it, this will probably make you lose:
    I do not have any web sites but just the web domains.
    This is squatting. Just save everybody the trouble, and relinquish the domain. You won't win this one.
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  16. #16
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    Quote Originally Posted by rogsen View Post
    I have bought several web domains with the most popular web domain provider in the US. I do not have any web sites but just the web domains. Now I am getting a letter from a lawyer in New York City which is representing a certain company and he wants me to relinquish my domains to his client because the web domains have words of the company of his client. If I do not do that he will get a court injuction in New York State courts against the web domain provider in order to force them to register my domains into the name of his client. The lawyer is referencing to the Lanham Act and since the web domain company is registered in New York State the Courts in that state have jurisdiction to do that. I have offered to sell my domains but they have not answered Does anybody know how to get out of this? Can I transfer my domain registration outside the US with another company? Do the americans court have jurisdiction all over the world?
    Honestly, it sounds like the attorney is just trying to pressure you. Very few trademarks are issued for words alone (it's almost impossible for words to be completely unique). Trademarks are generally a combination of words, phrases, or images that are associated with a specific group of generic terms. If your sites aren't associated with the same group of generic terms and the site makes no attempt to impersonate the trademark owner, you should be ok.

    But like KP pointed out, not having active sites doesn't bode well for you, especially since you've offered to sell the domains.
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  17. #17
    Quote Originally Posted by rogsen View Post
    the web domains have words of the company of his client.
    If the company name is unique, you very well may lose this one. If the word is generic, then you may have a chance.

    Kind of reminds me of how Facebook tried to assert trademark rights to the word fragment "book" against domain name holders using the word in their domain names.

    http://arstechnica.com/tech-policy/2...ser-agreement/

    Also reminds me of how Go Daddy tried to pressure anyone using the word "daddy" in their domain names into surrendering them claiming trademark rights to "daddy". Then there is the case of someone who registered domains that could possibly be mistyped when someone attempts to type in "godaddy.com". The domain name holder lost that decision.

    http://www.wipo.int/amc/en/domains/d...2002-0568.html

    Bottom line is that some companies, such as Facebook, are using their might and money to rob others of the right to use generic words in domain names or, in the case of Facebook, in association with any electronic or internet service. Facebook has trademarked the words "face", "book", "like", "wall", and others and is attempting to prevent anyone from using those generic words in association with anything related to the internet. It's ridiculous and should not be allowed.

    Just because someone is granted a trademark to a generic word such as those granted to Facebook, that does not mean the trademark will be held up in court. But companies like Facebook know that few people have the time and money willing to fight a multibillion dollar behemoth like themselves and will surrender without fighting. This is wrong.

    It's all going to depend on what the domain names are and whether or not you are acting in bad faith. For example, if Facebook tries to assert trademarks to the word "face" against facerecognition.tld, odds are they are going to lose. But if you are doing something like faceb00k.com, you are going to lose.

    I would not worry about any threats from lawyers unless you are acting in bad faith. If you are acting in bad faith or are trademark squatting, you will lose. Otherwise, tell them to go to hell.

  18. #18
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    Quote Originally Posted by DWS2006 View Post
    Honestly, it sounds like the attorney is just trying to pressure you. Very few trademarks are issued for words alone (it's almost impossible for words to be completely unique). Trademarks are generally a combination of words, phrases, or images that are associated with a specific group of generic terms. If your sites aren't associated with the same group of generic terms and the site makes no attempt to impersonate the trademark owner, you should be ok.

    But like KP pointed out, not having active sites doesn't bode well for you, especially since you've offered to sell the domains.
    Offering to sell a domain to the owner of its trademark does not work in your favor. This act alone can be used by the complainant to file a UDRP complaint with ICANN, alleging that you're a cyber squatter.

    With that said, no one is going to sue you. The worst case scenario is that they file a UDRP and you lose the domain.

  19. #19
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    Quote Originally Posted by IRCCo Jeff View Post
    Offering to sell a domain to the owner of its trademark does not work in your favor. This act alone can be used by the complainant to file a UDRP complaint with ICANN, alleging that you're a cyber squatter.

    With that said, no one is going to sue you. The worst case scenario is that they file a UDRP and you lose the domain.
    Well said, the OP essentially defined himself as a cyber squatter in this instance.
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  20. #20
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    Quote Originally Posted by rogsen View Post
    I have bought several web domains with the most popular web domain provider in the US. I do not have any web sites but just the web domains.
    Quote Originally Posted by rogsen View Post
    The fact of the matter is that I am not a us citizen and I do not live in the States, I have a legitimate business in Mexico with its name duly registered in mexico. My business's name has 2 words that also the other company has.
    I think you're right, DWS2006, but this is where it gets tricky. If he truly has a business with a couple similar names (which specifically occupy the domain name, in this case), he could argue that he has a plan and purpose for the domain and therefore a right to own and use it.

    *But*.. if he's already tried to sell the domain to the organization claiming "Lanham Act violation" prior to their notice, that probably puts a rather large dent in any "I plan to build a website for my business and use this domain" defense.

  21. #21
    All they really need to do is go to the National Arbitration Forum and file a complaint. Why bother with lawyers and lawsuits when all they really want is the domain name.

  22. #22
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    You did nothing wrong up to this point...

    Quote Originally Posted by rogsen View Post
    I have offered to sell my domains but they have not answered
    Why did you do that?
    From what I understand your original plan was to build a website for your company, it was a bad idea to send that email.

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