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This is my first time in this specific NG, so i wanted to say hi first
off...
I have a little Problem which i am not sure of how to approach it - it is
about a domain issue.
First off, a few words about the situation:
I (from Austria/Europe) and my fiancee (American) have been running the site
www.x-grrrls.com (don't worry - no "adult content" site). The page has been
a platform for girls who consider themselves "straight edge" (= drugfree
lifestyle). Feel free to take a look at it. The Page is the biggest one on
this sector - about 2,5 years ago we also registered the domain
xsisterhoodx.net to use for x-grrrls.com (via a US-service, with my Austrian
contact info), as we were thinking that it fit well. (Explanation: "Straight
Edgers" tend to put X's around their names - such as XsidX for example.).
At this point there already was a site up called xsisterhoodx.com. The page
was rather outdated and over years it offered only a few articles and a
hardly used bulletin board. Anyways... Now here is the core of the issue:
The following email has just reached me (I posted a link, as I am not sure
whether posting another Email is customary here): http://tinyurl.com/3rhkz
(The author actually does run xsisterhoodx.com)
Actually we are not intending to give up the Domain. It is not like we are
trying to squat the domain - it is being used in the right context. Also
various people use email addresses of this domain. And last but not least,
the domain isn't free.
So here are my questions:
a.) What exactly am I not allowed to do if she owns the trademark?
b.) Are there national and international Trademarks? Will I be affected at
all - being European?
c.) Do I take this seriously? Can I ask for a proof of her being the
trademark holder?
d.) I received this Email via a web-form - should I ask for a hard copy of
any correspondence? I.e. should I tell her to contact me by mail?
Thanks a lot in advance! I will be happy about any opinion and information
regarding this issue.
Sid
P.S.: An interesting anecdote: The "plaintiffs" website itself actually
violates the GPL of Mambo (the content management system being used), as the
copyright notice was removed.
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On Mon, 07 Feb 2005 09:48:05 -0500, "sid derra"
<ng_NO_@_SPAM_emolife.net> wrote:
...about 2,5 years ago we also registered the domain
xsisterhoodx.net to use for x-grrrls.com...
At this point there already was a site up called xsisterhoodx.com.
a.) What exactly am I not allowed to do if she owns the trademark?
You're getting ahead of yourself. The first question is, what does she
mean when she says that she "is the owner of the trademark"?
She is in the United States (I looked up her registration), so she
presumably is talking about an American trademark. That can mean one
or more of three things:
1. She has registered or applied to register the trademark with the
U.S. Patent and Trademark Office. But in fact she hasn't, unless she
applied in the last couple of weeks and her application isn't in the
database yet.
2. She has registered or applied to register the trademark in one or
more states. This is difficult to check, but for a web site with a
national or international audience it would make no sense, so I think
we can discount it.
3. She is referring to a common-law trademark -- one that she "owns"
simply by virtue of using it and so causing it to be associated with
her services in the minds of the public.
b.) Are there national and international Trademarks? Will I be affected at
all - being European?
There is no such thing as an international trademark. There is such a
thing as a Community Trademark which is recognized throughout the
European Union. Community Trademarks are not recognized by the United
States, or vice versa. Also, most nations other than the United States
recognize the concept of a common-law trademark to a very limited
extent, or not at all.
In any case, even if she has a trademark that is enforceable against
you, she has no right to prevent you from using a domain name that is
similar to her trademark unless she can demonstrate that such use
tends to create confusion about the source of your services or hers. I
won't go into all of the legal details, but a number of things would
make this very difficult for her to prove.
One is the fixed format of domain names, and the limited number of
possible variations: no spaces, no distinction between upper and lower
case, etc. Another is the "xNAMEx" custom you mentioned, which makes
the x...x pattern merely descriptive, both in her "trademark" and in
your domain name. It can mean only, "this is a straight edge name,"
not "this is the name of Kelly's (or your) straight edge business."
Another is that once you remove the "x...x" pattern from her
trademark, what remains is a common English word with a natural
connection to her audience (and yours). In short, remove the parts of
her "trademark" that have little or no distinctive quality, and
nothing is left. (It's possible for such a trademark to become
distinctive as a whole, but it's not easy.)
Let's assume for the sake of discussion that she can somehow overcome
those difficulties. Where's she going to sue you? She is in New York;
the attorney she is threatening you with is presumably also in New
York. Do you think she has looked up your domain name registration and
realized that your contact address is in Europe? I'll bet not.
c.) Do I take this seriously? Can I ask for a proof of her being the
trademark holder?
I looked at her home page, with its "It has come to my attention..."
message, and I could feel her anger fairly radiating through the
ether. You haven't explained anything about the history of conflict
she mentions, but from what you have told us, it appears to me that
the moment she ran across your domain name she went ballistic, and she
hasn't come back down to earth yet. She may not do so until she
actually talks to an attorney and has to answer some reality-based
questions.
I would suggest writing a reply that diplomatically deals with facts
-- not emotions or threats, hers or yours. You're sorry to hear that
she believes there is a possibility of confusion between your domain
name and her trademark. It was certainly not your intention to create
such confusion, and you think her concern is unnecessary because (give
reasons; I mentioned some above). If there are any additional facts
about this matter that she believes you should be aware of, you would
be grateful if she would inform you of them; in particular, where her
trademark is registered and what the date of registration is, etc.
If she insists on proceeding against you, she will probably find that
her only realistic course of action is to file a complaint under the
UDRP (Uniform Dispute Resolution Procedure). This is a procedure for
resolving domain name disputes which was established by ICANN, the
organization that is ultimately responsible for Internet governance.
It is simple and fast, and is handled entirely on-line. Essentially,
each party submits a written statement, and then an arbitrator makes a
decision. I think you would very probably prevail in a UDRP
proceeding, provided you read the instructions carefully and write
your statement clearly. If you lost, all that would happen would be
that you would lose the domain name.
d.) I received this Email via a web-form - should I ask for a hard copy of
any correspondence? I.e. should I tell her to contact me by mail?
Don't bother, unless you would like to use that as a graceful way of
pointing out that you're effectively beyond her reach.
My email address is llm040903 at earthlink dot net.
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In my previous response I wrote:
I would suggest writing a reply that diplomatically
deals with facts... You're sorry to hear that she
believes there is a possibility of confusion between
your domain name and her trademark. It was certainly
not your intention to create such confusion...
I would like to mention one additional aspect of this.
Your domain name probably came to her attention because one of her
users found your web site while looking for hers. That is at least
some evidence of actual confusion. Evidence of actual confusion is one
of the factors that American courts customarily weigh when they
evaluate a claim of trademark infringement. It is probably so in many
other nations' laws as well, and in the UDRP.
I would recommend offering to include a disclaimer and a link to her
web site on your home page. This might help to cool her off, and would
be an on-record demonstration of your good faith.
My email address is llm040903 at earthlink dot net.
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<ng_NO_@_SPAM_emolife.net> wrote:
If she insists on proceeding against you, she will probably find that
her only realistic course of action is to file a complaint under the
UDRP (Uniform Dispute Resolution Procedure). This is a procedure for
resolving domain name disputes which was established by ICANN, the
organization that is ultimately responsible for Internet governance.
It is simple and fast, and is handled entirely on-line.
The last time I looked, somebody who holds a registered trademark (at
the national level) will almost automatically prevail in UDRP against
somebody who doesn't. SO it might be to OP's advantage to apply for a
trademark in his own country. If she's not alert (and she probably
isn't), she probably won't notice it in time to challenge it, and it
will be registered in his country.
If she then goes against him under UDRP, he will point to his
registration and she will probably lose.
Assuming that OP's use of his domain name is worth more to him than the
small application/registration fee (around $375 in the US), he should
probaby take that step.
But I'm not a lawyer. This isn't legal advice. yada yada.
--
I pledge allegiance to the Constitution of the United States of America,
and to the republic which it established, one nation from many peoples,
promising liberty and justice for all.
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On Tue, 15 Feb 2005 15:32:09 -0500, Barry Gold
<barrydgold@comcast.net> wrote:
The last time I looked, somebody who holds a registered trademark (at
the national level) will almost automatically prevail in UDRP against
somebody who doesn't. SO it might be to OP's advantage to apply for a
trademark in his own country. If she's not alert (and she probably
isn't), she probably won't notice it in time to challenge it, and it
will be registered in his country.
Good point. If the complaining party does anything at all she will
probably do it before the OP could get a trademark registered, but
even a pending application might have some persuasive value. And it
would certainly help deflect similar disputes in the future, whether
from this person or from others.
My email address is llm040903 at earthlink dot net.
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