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  1. #1
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    * Cease and Desist my domain name :(

    Hi, I have a question to ask. I have registered a domain name about 9 months ago.
    I don't want to Give the domain name out here.

    I will say the domain has something to to with the UFC (Ultimate Fighting Championship).
    I received a letter from a law firm stating that they want me to turn this domain name and all rights to it over to them for the use of there marks. in other words Trademarked names.

    I am just asking should I contact them on this issue can I be sued if I don't give up rights to my domain name. Should I just up and turn this over?
    Live And LocaleWXFLINT

  2. #2
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    I know very little about this, but I expect there will be big differences between countries.
    Are you US, UK, other ?
    I'd certainly like to know what others say/think.

  3. #3
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    Brian I am in the US and the domain was purchased in the us
    Live And LocaleWXFLINT

  4. #4
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    For issues of copyright/trademark infringement, usually they have to go through UDRP (http://www.icann.org/udrp/udrp.htm) to get the name from you. It costs hundreds (thousands?) of dollars to pay for the UDRP arbitration panel.

    We have seen the following things happen when these disputes occur:

    1. Registrant sits tight and waits for the complainant to file a UDRP. Then the registrant disputes the UDRP.

    2. Registrant settles with the complainant. Complainant pays registrant some money to give up the domain.

    3. Registrant willingly gives up the domain to the complainant.

    This is not legal advice, just what we have seen happen.
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  5. #5
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    In these cases, it critical to ask yourself why you registered the domain infringing on UFC's trademark and what kind of content you have on the website. Any kind of commercialization of the website will probably indicate bad faith registration, right of the bat, and you'll lose.

    IMHO, C&D emails should be taken seriously and fall into 2 categories. 1) Someone who has a genuine case, and 2) Someone trying to reverse-hijack your domain. For case 2) just wait for them to file a UDRP. For case 1) If it's a big corp and the case is clearcut, give them the domain.

    In both cases, they will need to go to UDRP to get the domain. But you are still vulnerable to trademark issues where they can sue you under trademark law in court. You're gonna need a big wallet to defend yourself and an even bigger wallet if you lose. Case 1) will pursue you under trademark law, Case 2) can also, but is less likely to.

    I'm no lawyer, I'm a layman, and it sounds like you need the advice of a lawyer.
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  6. #6
    Quote Originally Posted by psale
    I am just asking should I contact them on this issue can I be sued if I don't give up rights to my domain name. Should I just up and turn this over?
    Well, if they threaten you to sue under ACPA (just google it) and possibly dole out
    up to $100k per name, coupled with their finding out the domain name had any
    hint of commercial use (e.g. PPC, adsense, etc.), then you might as well give it to
    them. Both of you can choose the easy way (by giving it to them NQA) or the hard
    way (ACPA or UDRP).

    If you both play hardball, be prepared to lose a lot.

  7. #7
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    I googled "ACPA" and didn't find anything relevent. Try it. It's fun
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  8. #8
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    * Case

    Well I guess in this case it looks like im going to have to surrender the name as I cant battle a company as large as this and its not worth the price of a domain name in this case.
    I don't use the site for commercial use.
    It's just used for information purposes only I don't have adds on the site neither no income is generated from this site.

    I cant see any bad faith in the sites content.

    I have investigated the law firm that contacted me via fedex mail and also called after hours the number that was given to make sure that this was not a hijack attempt.

    I will attempt to make contact with the law firm this afternoon.

    Should I get the party's info for transfer?
    Should I just cancel the domain?
    Take the advice of this lawyer?
    Or wait for a UDRP to be filed?

    Witch would you consider?
    Live And LocaleWXFLINT

  9. #9
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    A few years ago I registered a name for a project I was working on. It was going to be a software application for a vertical market. However, after a few sales and installations I realized it did not fit my business goals and stopped promoting it. In essence it was a dead project.

    After a year of owning the domain name, to my surprise, I received a C & D letter from a law firm representing a company that had been selling software with a similar name. However, I had never hear of them.

    Anyway, I did some research and found out they had trademarked their software's name. And had been doing business as such for a few years - I can only guess that I never heard of them during my research because they seemed to be targeting local clients.

    I had a choice of getting a lawyer, but since it was a dead project I called them myself and told them that I had no problem turning it over. I did ask them to reimburse me for the registration which they did.

    I now feel I should have asked for more money because I had already spent resources to design the site and my research showed that I could have kept the name as long as the content was not in the 'Natural Zone of Expansion' of your their client.

    If you really want to keep it, don't contact them, talk to a good lawyer and see your options. If you are willing to give it up, you may want to nicely ask them to reimburse you for your expenses.
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  10. #10
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    Quote Originally Posted by psale
    Well I guess in this case it looks like im going to have to surrender the name as I cant battle a company as large as this and its not worth the price of a domain name in this case. ..........................

    Should I get the party's info for transfer?
    Should I just cancel the domain?
    Take the advice of this lawyer?
    Or wait for a UDRP to be filed?

    Witch would you consider?
    I think I'd be inclined to say you are willing to transfer the domain (which was reg. in good faith), and ask how much they will pay for your admin. services, needed to execute the transfer.(better than asking for money for the name itself).

    A more unscrubulous(?) person would not be on this forum, but selling quickly on eBay

    Good Luck

  11. #11
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    Quote Originally Posted by psale
    Well I guess in this case it looks like im going to have to surrender the name as I cant battle a company as large as this and its not worth the price of a domain name in this case.
    I don't use the site for commercial use.
    It's just used for information purposes only I don't have adds on the site neither no income is generated from this site.
    If it is NOT used for Profit, than you are legally allowed to keep the domain. I have been down this road before with AOL a few years ago, and they stated since I was using my domain for profit that is why I was targetted, however for example there were a few AOL Sucks type domains out there I pointed out to him and he said they are not for profit.... This is not 100% Legal advise but don't let them bully you. This is jsut from first hand experiance.

  12. #12
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    Quote Originally Posted by ACW
    . I did ask them to reimburse me for the registration which they did.
    Same Situation I had with AOL, they reimbursed me the FACE VALUE of the domain as if they were to register it themselfs. I believe I got about 8.95 since it was at Godaddy.

  13. #13
    you have to ask yourself why did you register the domain ? remember domain hoarding is a risky business as a trademark owner can and have won cases to get ownership of the domain.

    if i were you, to save yourself uncessary grief, quickly create a website that is not related to the people's business who want to snatch the domain off you.

    for example if your domain was : IBM.com

    then you wouldnt be allowed to have a website selling or marketing the same services as IBM as IBM is a trademark related to computer and IT hardware and services... if you did they would be in their right ask it back.

    However you could create a website with the domain of IBM.com but had content related to say : International Bull Merchants

    if you see what I mean. So create a website that relates to the domain in some way, to the domain you have got BUT not the same business as the guys who want their domain back.

    hope that makes sense.

    good luck.

  14. #14
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    Quote Originally Posted by tommyd
    Same Situation I had with AOL, they reimbursed me the FACE VALUE of the domain as if they were to register it themselfs. I believe I got about 8.95 since it was at Godaddy.
    I got about $100 for 2 domain names (.com and .net).
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  15. #15
    Quote Originally Posted by psale
    I am just asking should I contact them on this issue
    Friendly reminder - if you contact them - do not actively offer to sell them your domain as it would put you in a "bad faith"- standing.

    If you have acknowledged that you have received their letter you should perhaps consider adding a big link to your page saying "If you are looking for Ultimate Fighting Championship yada yada .com - please click here. This site is not affiliated with Ultimate Fighting Championship yada yada".

    You should also carefully go trough all your logfiles to see if Ultimate Fighting Championship yada yada .com actually is in risk loosing substantial trafic because of your domainname.

    Google Ultimate Fighting Championship yada yada .com and your domainname to see whether you might have an obvious issue with people coming to your site while theyare looking for Ultimate Fighting Championship yada yada .com.

    Last but not least - is your domainname worth loosing a legal battle? Is it so good that it is worth taking the risk? Give it a serious thought.
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  16. #16
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    If you're considering just giving up the name...
    perhaps just spitting out the actual domain name would be helpful.

    Probably very few here, if any, are lawyers, and nobody's offering legal advice... But, some people may beable to come up with specific things you should ask a lawyer if fighting their claim seems worthwhile.

    As other's have mentioned... wether you have much chance at keeping it will depend much on your use of the name and how it relates to the trademark holder's IP.

    If as others have mentioned... you've setup a site which specificaly relates to the UFCs IP and business... then you probably dont have much of a leg to stand on and it could get very expensive for you.

  17. #17
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    I have received a few C and D letters in my time. I normally do not fight them

  18. #18
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    I've had 1. They objected to the ads being displayed on a NetSol parking page. After I gave them the domain, they went and put the same NetSol parking page ads on the domain. Go figure!
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  19. #19
    Quote Originally Posted by stu2
    I've had 1. They objected to the ads being displayed on a NetSol parking page. After I gave them the domain, they went and put the same NetSol parking page ads on the domain. Go figure!
    They forgot to change the DNS?

  20. #20
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    Just set up a UFC Sucks webpage. Then show Shamrock sucking on a lollipop.


    + NOW WE'RE MAKING RECORDS, NOW WE'RE MAKING TAPES

  21. #21
    Quote Originally Posted by BloggingStuff
    if i were you, to save yourself uncessary grief, quickly create a website that is not related to the people's business who want to snatch the domain off you.
    It won't help, I'm afraid.
    And what's ACPA stand for?

  22. #22
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    They forgot to change the DNS?
    Incompetence more likely.
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  23. #23
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    Quote Originally Posted by stu2
    Incompetence more likely.
    It seemed they were competent. At least in legal matters.
    Respect My Authoritah! - Eric Cartman (a friend of mine).

  24. #24
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    I'm more inclined to call it bullying
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  25. #25
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    I think the bottom line here is simple. If you registered the domain in good faith, and use it for anything EXCEPT to compete with, or pretend to be, the company that is requesting that you give the domain up to them, then it is yours. No one can force you to give it up. That's basic trademark and copyright law, which I occasionally get involved in as an "industry expert".

    My advice......... KEEP IT. it's yours, you put all the effort into acquiring it and producing the "creative content". They can scream all they want, but the chances are, if your use of the domain doesn't fall into the categories I mentioned above (and it looks like it does not) they can't do anything.

    What do you know about the company that wants it? Is there any conflict of interests? Is it a .com or a .co.uk?

  26. #26
    Nice first post. But not realistic.

    They can simply go to Court and sue under ACPA if both parties are in the US, or also
    do an in rem if they've no chance of contacting the registrant.

  27. #27
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    I agree with david, unless you have money to burn I would not bother

  28. #28
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    Well, I have to say that there does seem to be a defeatist attitude here.

    Especially as the domain name has not been shared with us.

    I have given evidence in a couple of trademark disputes, where companies have used the trademark dispute process to effectively stop competitors entering their market space. The only winners in these things are usually the lawyers!

    Unless we have the domain name(s) and company in question to check out for ourselves, I think I'd rather stick it out and say "don't fold".

    I thought the Internet was supposed to offer free speech and allow us small guys to stick together. I may be out of order for my 2nd post on this forum, but surely there's some fight somewhere.

    Fight back first, at the first encounter they came chasing you, therefore it is you in the position of power, not them. And that's simple business sense.

  29. #29
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    In most of these cases we see here, it's a bad faith registration in the first place. If someone is registering a domain using the UFC trademark and has content about UFC on the website, it's (almost) a slam dunk that they will lose the WIPO case. At least in WIPO you can't lose your shirt, only your domain, but as Dave says, if they actually decide to punish you by taking you to court for trademark infringement, you're likely to lose your shirt defending yourself, whether or not you win.
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  30. #30
    Quote Originally Posted by skilla
    And that's simple business sense.
    Is it not also simple business sense to let the matter go if the potential risks do far
    outweigh the potential rewards?

    Look at the nissan.com dispute. Mr. Nissan fought and eventually retained use of
    the domain name, but it cost him dearly.

    (Before any of you start yakking who's right and wrong regarding that, I suggest
    you take time to read the "last" decision and review all the facts that time:

    http://www.citizen.org/documents/Cou...anComputer.pdf)

    Ah well, welcome aboard anyway.

  31. #31
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    Wow! See what you can get into. Especially note "each party bears their own costs".
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  32. #32
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    I agree with Dave that Nissan Motors vs. Nissan Computers is the best precedent to be quoted here.
    Respect My Authoritah! - Eric Cartman (a friend of mine).

  33. #33
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    Quote Originally Posted by stu2
    In most of these cases we see here, it's a bad faith registration in the first place. If someone is registering a domain using the UFC trademark and has content about UFC on the website, it's (almost) a slam dunk that they will lose the WIPO case. At least in WIPO you can't lose your shirt, only your domain, but as Dave says, if they actually decide to punish you by taking you to court for trademark infringement, you're likely to lose your shirt defending yourself, whether or not you win.
    But that is EXACTLY what I said in my earlier post. And the Nissan vs. Nissan case is only relevant because they (Nissan Motor) took offence at the guy putting motoring ads on his website. that is clearly a case of someone benefitting from another's brand or trademark, and is clearly trademark infringement, for which they certainly do have the right to a C&D order. As well as a number of other degrees of compensation. Also, they contacted the guy (Nissan Computer) and offered to buy the domain, to which he did not reply. After they started chasing him, he registered a large number of other branded domains, clearly proving to the court he was in this to blackmail trademark/brand owners.

    This may not be the case here. If the UFC domain discussed, has nothing to do with the products supplied by UFC Inc (or whatever), and it doesn't infringe their brand, and doesn't defamate them etc. etc. they have no rights to force that domain away.

  34. #34
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    In most of these cases we see here, it's a bad faith registration in the first place.
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  35. #35
    Quote Originally Posted by skilla
    If the UFC domain discussed, has nothing to do with the products supplied by UFC Inc (or whatever), and it doesn't infringe their brand, and doesn't defamate them etc. etc. they have no rights to force that domain away.
    I agree with that for the most part. But the other party doesn't have to, even if all
    those facts are staring right at their faces.

    Fortunately many Courts and mediation panels strike down harshly such attempts
    nowadays. But that still depends on any and all facts presented and evaluated.

    My point in adding that nissan.com dispute is for people to weigh the risks and the
    rewards in taking such actions, especially the intent behind them.

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