Web Hosting Talk : Web Hosting Main Forums : Domain Names : Domain name legalities

[WildWayz]

Hi,

I just got a letter from DuPont saying our gaming clan's website is in violation of their trademark.

Here is what I sent some online gaming sites...

Dear Sir/Madam,

Since around July 1999, some friends of mine formed an online gaming 'clan' in the UK called [KK] or Kevlar Killers as it is known. I joined this clan in December 1999 then registered the domain name www.kevlar-killers.com in July 2000.

In November 2000, our clan took part in the Insomnia 6 (i6
www.multiplay.com) tournament in Newbury where we came 3rd. Up until now, we have played in many online gaming leagues such as the Wireplay League (No longer in operation), Barrysworld League(www.barrysworld.com), Jolt's League
(www.jolt.co.uk) and Blueyonder's League (gaming.blueyonder.co.uk). We have also appeared in PC Gamer too.

Today I got a letter from DuPont (Letter can be found here
http://www.insomnia-webhosting.com/files/Dscf0047.jpg) claiming that we are illegally using their products name called Kevlar and that we have three weeks to remove the site or face legal proceedings.

Our site only uses the name 'Kevlar' as it is part of our 'clan' name. We do not show pictures of their products or degrade their name in anyway.

The online game that we play is a free 'mod' for Half-Life called
Counter-Strike (www.counter-strike.net) which also uses the name 'Kevlar' as an item to buy ingame.

Do you have any advice for us, or are we forced to remove our entire clan's name, reputation and history?

Any help would be appreciated as I have not contacted DuPont about this
matter yet.

Regards,

James Kapher (WildWayz.KK)

Anyone know what my legal standing is? I mean, if we put a disclaimer and (R) behind Kevlar, would it then protect us?

--James

[Rewdog]

Oh My God

I don't know about your legal standing, but that is whack!

[WildWayz]

Here is our correspondance so far....

Dear Mr. Kapherr,

Thank you for your e-mail and willingness to cease all use of KEVLAR® in
your domain name and on your website. We trust you understand that DuPont
cannot tolerate improper uses of its trademarks and therefore ask you to
proceed with the appropriate corrections without delay.

Yours sincerely,

Yours sincerely,
Anne Chabane
DUPONT LEGAL
Corporate Trademark Specialist - Europe
Du Pont de Nemours International S.A.
2, chemin du Pavillon
CH-1218 Le Grand-Saconnex
Geneva, Switzerland
Tel. +4122 717 5259
Fax +4122 717 6025
E-mail: Anne.F.Chabane@che.dupont.com
---------------------- Forwarded by Anne F Chabane/EUR/DuPont on 20/12/2001
15:45 ---------------------------


"James Kapherr" <wildwayz@clara.co.uk> on 20/12/2001 15:31:57

To: Anne F Chabane/EUR/DuPont@DuPont
cc:
Subject: Re: Kevlar-Killers.com domain


Dear Madam,

I am writing in reference to the letter I received today from yourself in
regards to kevlar-killers.com domain name.

I am a bit disappointed to hear that you would like us to remove our domain
name because of the use of the name "Kevlar".

Of course, we are not going to argue that we have every right to use it, as
Du Pont have registered "Kevlar" as a trademark.
Would it be possible if we could keep the site up, but put the symbol "®"
after every instance of the word "Kevlar" as well as a disclaimer saying
"Kevlar® is a registered trademark of "DuPont"?

Just for your information, here is a brief history of our online gaming
team
(or clan as we are known as).

Since around July 1999, some friends of mine formed an online gaming 'clan'
in the UK called [KK] or Kevlar Killers as it is known. I joined this
'clan'
in December 1999 then registered the domain name www.kevlar-killers.com in
July 2000.

In November 2000, our clan took part in the Insomnia 6 (i6
www.multiplay.com) tournament in Newbury where we came 3rd. Up until now,
we
have played in many online gaming leagues such as the Wireplay League (No longer in operation), Barrysworld League(www.barrysworld.com), Jolt's League (www.jolt.co.uk) and Blueyonder's League (gaming.blueyonder.co.uk).

The online game that we play is a free 'mod' for Half-Life called
Counter-Strike (www.counter-strike.net) which also uses the name 'Kevlar' as an item to buy in game.

If you really do insist that we remove the domain and website, then we have no choice but to do it.

Regards,

James Kapherr
Domain owner, web host and player

[thewitt]

I would carefully read the ICANN domain dispute policy and draw your own conclusions.

I do not believe you are in violation - however I am not a lawyer and I don't play one on the Internet.

http://www.icann.org/udrp/udrp-policy-24oct99.htm

-t

[MarcD]

well my lawyer is sitting here with me going over our bi laws
and while he says that this is not his exact field that you are in no way violating there trademarks.

but dont quote hiim on that he says

why dont you send them a letter back with an offer to release the domain over to them for say ooooooooooo $5,000
otherwise you see no reason to take it down. as you are not

Now it will probably cost them more than 5 grand in lawyer fees to pursue you for it
so it would be a write off =)

but ill have to say that is pretty low of dupont maybe an employee is in a enemy clan of yours

[Franky]

I have similiar situation as James does. Id just received a letter from a lawyer regarding the .INFO domain name I bought back in October. Let's call it abcdef.INFO. Well, the company is a major sports club and has the trademark worldwide. The fact is that it owns only the .COM, while other TLDs such as .NET, .ORG, .WS, even .BIZ are belongs to others. FYI, the .NET and .ORG are fans site. I, like other owners, intend to build a fans site too, but it's not up yet.

To make it short, the lawyer demand me to hand over the domain name FREE of charge, or I just cancel the registration with the Afilias. OR, I will fave a lawsuit.

What should I do???

[MarcD]

franky i would say you also dont have anyting to worry about

being as its a portion of the ENGLISH ALPHABET id tell there lawyer to go ahead and make my day

[Franky]

Marc,
It's not abcdef.info. I used it as an illustration only, because I don't want to reveal the domain name.

Franky

[Lain]

A friend of mine had a similiar problem last summer. She registered the domain "silvercrystal.net". In the anime series Sailor Moon, the main character uses the silver crystal to save her friends and world from evil. In any case, it wasn't long until she received an e-mail from an attorney. Apparently, "Silver Crystal" is trademarked by a corn company.

Since she was a student (14) at that time and couldn't afford lawyer's fee, she was forced to turn over her domain to the corn company. But now she has another domain that she likes much better

What I've learned from this is that prevention is the best thing. Next time try searching if the name is trademarked. As far as I know, marksonline.com is the only free trademark search. The rest you have to pay, and I don't think marksline.com extends to international trademarks. Feel free to correct me if I'm wrong.

[cperciva]

IANAL, but I don't think you have much to worry about. There are two considerations here: UDRP, and trademark law.

The UDRP prohibits use of domain names "in bad faith". You are not attempting to profit from the Kevlar trademark per se; your registration of the domain was consequent to the use of the term in a generic meaning. Thus the UDRP isn't an issue.

Trademark law is equally not a problem. You might want to inquire if they trademarked the term "Kevlar" in the context of computer games... obviously not, and this alone would probably get the case thrown out of court. Even if they had such a trademark, they would still have no claim: Trademark infringement exists only when a person uses a device (mark) so as to cause confusion as to the source or sponsorship of the goods or services involved.

If I were you I'd add, in small font at the bottom of each page, "Kevlar is a registered trademark of DuPont", but even that isn't legally necessary.

If I were you, I'd write back and ask them
1. if they have trademarked the term "Kevlar" in the context of computer games (since that is the context in which the term is being used), and
2. if so, what evidence do they have that you are infringing upon the trademark?

[cperciva]

Originally posted by Lain
As far as I know, marksonline.com is the only free trademark search.

uspto.gov

[Honu]

Originally posted by Franky
Marc,
It's not abcdef.info. I used it as an illustration only, because I don't want to reveal the domain name.

Franky

Aloha
curious why wont you mention the domain name ???
I would say just let em come after you if they think they can
but could depend on the name ??
if it is there business name that is based on common names and you are not trying to use it in bad faith they will have a hard time getting it form you.
if it is unique name and you are using it to get traffic and selling or doing the same stuff then you may loose.

[Franky]

Honu,
It's the name of a sports club in Europe. I'm sorry I can't mention the name. I haven't built a complete site yet for that domain, but a welcome page saying that I'm willing to build a fans site. I have no intention to sell it, because it's my dream since I was kid to build a fans site for my fav club.

Franky

[imago-allan]

Hi! An interesting discussion on trademark.

We are not from the U.S. and we want to register a trademark in there because we want to protect our domain name in case of future dispute.

Do you have any idea how much it will cost us to trademark a domain? Or is already enforceable if we simply register the trademark in our country? Any advise or suggested service to do this?

Thanks.

[cperciva]

consul, you probably do not need to register your trademark; US law provides for "common law trademarks" whereby you can obtain most of the protection afforded the holders of registered trademakrs simply by using a term over a period of time.

I would further say that if your trademark is registered in your country that should provide you with all the protection you should need in the case of any domain name dispute.

In case anyone else is interested, however, you can register US trademarks via uspto; I believe it costs a few hundred USD.