Web Hosting Talk : Web Hosting Main Forums : Domain Names : Domain Infringement Accusation

[MalAdjusted]

I never thought I'd get one of these, but I have.

I've owned a particular domain for over a year (call it ABCDEFG.COM - not the real name of course).

A few days ago, I received the following email. Identifying details have been removed. My comments and questions are after the email:

From: <name1>@abcdef.com <name1@abcdef.com>
To: me.protect@whoisguard.com
Cc:
Subject: Infringement ABCDEF.org
Dear Madam/Sir:

I am an attorney representing ABCDEF on trademark issues. ABCDEF is a well-known diversified company offering <<company details removed>>. ABCDEF began offering <<historical details removed>> and has continued to do so over the intervening years. The mark is well-known and is registered in the United States Patent and Trademark Office either alone or in combination with other words for each of the services mentioned above. We have recently acquired evidence that your company has been, using the ABCDEF name in your domain name. This usage of the mark ABCDEF infringes on the registered mark ABCDEF which is owned by <<details removed>> (Registration No. <<details removed>>).

Even though at this point your website does not contain any content, it is clearly designed to cause confusion. This use of ABCDEF's trademark in the domain is a violation of ABCDEFs trademark rights and §43(a) of the Lanham Act. This domain incorporates ABCDEFs mark, using the same channel of commerce (Internet) used by ABCDEF. Use or registration of the ABCDEF trademark in your domain with bad faith intent violates the Trademark Cyberpiracy Act. If this situation is not remedied immediately we will notify your ISP of this violation.

ABCDEF aggressively protects its trademarks and other intangible assets. We trust this letter is sufficient to ensure that you immediately remove the referenced domain from the Internet and transfer it to ABCDEF. This letter has been submitted to your contact information e-mail from a WHOIS search. Please provide us with proof that you have taken action in this regard within the next fifteen (15) days. In the event we do not hear from you within the next fifteen (15) days, we will presume that you do not wish to resolve this matter amicably. Any further use of ABCDEFs name by you after this time will be regarded as willful infringement and I will advise my client to swiftly move to take appropriate legal action.

Sincerely,

ABCDEF

<<name2 removed>><<name2 removed>>
Vice President
Deputy Corporate Counsel



OK, so I need advice on what to do next. Here's my response to some of their accusations.

We have recently acquired evidence that your company has been, using the ABCDEF name in your domain name.
OK fine, I will agree that my domain ABCDEFG.com contains their company's name (ABCDEF) in it.

Even though at this point your website does not contain any content, it is clearly designed to cause confusion.
The first part is correct - my website does not contain any content, except a colored background and text that states "ABCDEF.com is Under Construction". It's been like that for over a year..
The second part is INCORRECT - it is NOT clearly designed to cause confusion. Who would be confused by such a simple webpage? There is no content referring to their company, so how could anyone get confused?

Use or registration of the ABCDEF trademark in your domain with bad faith intent violates the Trademark Cyberpiracy Act.
I don't know where they get the 'bad faith' part. I'm using my domain in good faith for my own purposes, not related to their company at all!

We trust this letter is sufficient to ensure that you immediately remove the referenced domain from the Internet and transfer it to ABCDEF. This letter has been submitted to your contact information e-mail from a WHOIS search. Please provide us with proof that you have taken action in this regard within the next fifteen (15) days.
Now let's say I wanted to transfer the domain to ABCDEF. How do I do that? Aren't they supposed to provide me with more info?


Questions:
- Why would the ABCDEF company, who already has ABCDEF.com, care about ABCDEFG.com? How could people be confused by that? And my website is clearly not referring at all to ABCDEF. I wonder if they are going after all owners of ABCDEFx.ext domains???
- Note that the return address has one person's name, and the letter itself is signed by someone else. Is this significant?
- Why does the subject line have .org when my domain is .com? I checked WHOIS and the .org domain doesn't exist.
- Any chance this could be a hoax?
- Assuming this is legitimate, is there some organization that could help me out here? (gratis?) I'm not a company, just a hobbyist with no funds to match wits with a large company.
- The domain is at Namecheap and has WhoisGuard enabled.

I feel like I'm being bullied here. Any advice?

Thanks for reading!

[Techno]

It may or may not be legit or scam. Without knowing the word its impossible to say. If its EBAYx.com then yes ebay could come after you.

[Hottweelz]

There are lot's of "Gray Areas" in this subject...

One argument in the Company's defense is that, if you have a site that is, for example, MicrosoftA.com and it's been dormant for a year, as you state, they do have a decent Cyber-Squatting case against you.

You could win that case, but can you afford to? Against a "Corporation?"

[Dave Zan]

Originally Posted by MalAdjusted

Questions:
- Why would the ABCDEF company, who already has ABCDEF.com, care about ABCDEFG.com?

They already answered that by saying they aggressively protect their trademark
and other intangible assets.

Originally Posted by MalAdjusted

How could people be confused by that?

No one really knows. But the complaining party knows your domain name has the
namesake of their trademark, and that's reason enough for them to believe it can
potentially confuse their customers.

Originally Posted by MalAdjusted

And my website is clearly not referring at all to ABCDEF. I wonder if they are going after all owners of ABCDEFx.ext domains???

There's always that possibility. Like they said, they aggressively protect their TM.

Originally Posted by MalAdjusted

Note that the return address has one person's name, and the letter itself is signed by someone else. Is this significant?

Maybe. As the saying goes, trust but verify.

Originally Posted by MalAdjusted

Why does the subject line have .org when my domain is .com? I checked WHOIS and the .org domain doesn't exist.
- Any chance this could be a hoax?

Or a mistake. Or it's possible the .org was registered but subsequently released,
there's a separate thread for that.

Originally Posted by MalAdjusted

Assuming this is legitimate, is there some organization that could help me out here? (gratis?) I'm not a company, just a hobbyist with no funds to match wits with a large company.

Fortunately, yes:

www.eff.org
www.publiccitizen.org
www.internetjustice.org

Someone else posted almost exactly what you're talking about. Good thing I know
those links by heart.

Originally Posted by MalAdjusted

I feel like I'm being bullied here. Any advice?

Don't talk about this any further and seek legal advice. This is a webmaster forum,
not a legal one you know.

[stub]

That's one of the weakest C&D letters I've ever seen. It looks like a reverse hijacking attempt to me. They'd have a hard time proving TM infringement with a parked page and they can't prove bad faith registration either. I'd let them take out a UDRP/WIPO complaint against me. I don't think they'd win that either. NEVER ask them for money. NEVER put anything on your site which even remotely resembles or refers to their trademarked products/services. I'm not a lawyer. NOW SEEK A LAWYER who is familiar with TRADEMARK and INTERNET DOMAIN LAW.

[ntfu2]

As far as i know, two companys can operate under the same name as long as their products do not match.

example:

Apple (music group) is different then Apple (computers) therefore they are allowed to 'co-exisit' as long as neither trys to create confusion between the other one.

Either way, i'd tell whoever wrote that letter to pound salt, of if they really valued their domain to fork over some big bucks for it.

[Shock Hosts]

Tell them to ring you, because it's so hard these days with scammers everywhere and con artists everywhere to know if they're not lying.

[Dave Zan]

Originally Posted by stu2

They'd have a hard time proving TM infringement with a parked page and they can't prove bad faith registration either.

Not if that parking page bears an ad related to what the TM holder's business is
known for. Even so, try making the judge or panelist understand that.

Some judges and panelists do. Unfortunately others don't.

Originally Posted by ntfu2

As far as i know, two companys can operate under the same name as long as their products do not match.

example:

Apple (music group) is different then Apple (computers) therefore they are allowed to 'co-exisit' as long as neither trys to create confusion between the other one.

Either way, i'd tell whoever wrote that letter to pound salt, of if they really valued their domain to fork over some big bucks for it.

One exception to that is if the name's "unique".

Take microsoft. It's using 2 simple generic words, but joined together forms one of
the most "powerful" trademarks on the planet.

And since it's earned a lot of goodwill for its mark holder, can you imagine another
business being able to use that same term to sell small soft pillows?

[stub]

Not if that parking page bears an ad related to what the TM holder's business is
known for

OP stated it was an "Under Construction" page, but I agree with you about parked pages with relevant ads. Had personal experience of that one

[Lubeca]

Originally Posted by ntfu2

Either way, i'd tell whoever wrote that letter to pound salt, of if they really valued their domain to fork over some big bucks for it.

The second bit ("fork over some big bucks") is the WORST advice you could possibly have given the OP.

MalAdjusted: Do NOT, I repeat NOT, under any circumstances whatsoever, ask them for money to hand over the domain. The moment you ask for money this becomes a case of "bad faith" and you are going to lose. Read up on the nissan.com case (I'm sure Google will find it).

[HostingBeaco]

An associate of mine received a letter along these lines. Both companies were/are ticket brokers, so Company A emailed to my associate and demanded that he transfer his domain to them immediately.

He refused to do so because he was also in the same business, and Company A had ample time to contact the original owner of the domain and offer to purchase it from him. My friend contacted the original owner of the domain and payed him $5000.00 for the domain and used it to promote his ticket broker business.

He did basically tell Company A to go pound sand, and in the end Company A ended up offering my friend $15000 for the domain name. He refused the offer because he believed that the domain would make him more money by using it for his ticket broker division and he hasn't heard from Company A since.

The difference here is that Company A owned domain_name.net and my friend bought domain_name.com from the original owner whom owned it prior to Company A buying the .net version. So obviously it is a different situation, but in my friends case, they were bluffing and attempting a scare tatic to get him to just give the domain name to them.

Anyway, as others have pointed out, seek legal council on this issue.

[sailorFred]

Read the relevant sections of the Lanham act yourself. It's fairly clear, for legislation.

The things I learned that are different from advice here:

If the mark is famous, it can be protected against uses in other fields. Uniqueness is not important. If someone has registered blackpiglet for a petcare business, but it's not famous, I can use it for a web hosting business.

If you don't have content, it's suspicious. The legislators assume that you're waiting for the trademark owner to offer to buy it from you.

You can not be looking for "bad faith profit." That means you are trying to make money either directly from the trademark holder, or by associating your content with their trademark.

There is an out clause, if the judge finds you had a reasonable good faith belief that you were not infringing on the trademark.

Knowledge is power. Read the law they are threatening you with.

[RajanUrs]

The best advice I got from a lawyer is never say more than what is needed.

Simply send them a reply saying you did not register that particular ABCDEFG.ORG domain. Or maybe you should request for a phone number first to verify who they are.

[stub]

The difference here is that Company A owned domain_name.net and my friend bought domain_name.com from the original owner whom owned it prior to Company A buying the .net version. So obviously it is a different situation, but in my friends case, they were bluffing and attempting a scare tatic to get him to just give the domain name to them

I think Company B were idiots trying to run a business on a .net domain without owning the .com

[HostingBeaco]

Well that really all depends, since the original owner of the .com domain wasn't even hosting it anywhere so I guess that Company A thought it would be safe to use the .net version.

A lot of people attempt to act bigger than they are on the net. I lost a domain name last year due to my forgetting to renew it, and someone grabbed it up and put a for sale sign on it. I played bigger than I was (and played my part as an attorney) and told them I would take them to court to regain the domain name or they could transfer the domain back to my client and we would pay them the cost of renewal for one year or they could take the domain off the web and not renew it when it's registration period has ended.

Within 2 days, the domain was no longer available on the internet. I didnt get it back but atleast I got them to remove it from the web.