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So I've received threatening calls/letters from a lawyer representing
an individual who claims that I'm infringing on their trademark.
Facts as they stand today.
1. I've registered my domain name long before they registered their
trademark.
2. I don't maintain a home page although I use my domain name for my
email address and
webmail thru my website together with photo albums etc. So it's not
publically active site although the domain name is used in my primary
email address.
Said lawyer keeps asking me how much I'd want to sell the domain name
for and knowing that indicating this strengthen's his case I'm a
little reluctant to quote him a figure. Nor do I have any indication to
sell it as it comes a big inconvience to change my email address.
....
Do, do they have a case of trademark infringement and is that related
in anyway to domain name dispute resolution?
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On Sun, 27 Feb 2005 22:01:08 -0500, robert@elastica.com wrote:
So I've received threatening calls/letters from a lawyer representing
an individual who claims that I'm infringing on their trademark.
The formal definition of trademark infringement is use of a trademark
in a manner that is liable to create confusion about the origin of
goods or services. That is, it tends to create the impression either
that you are the source of the trademark owner's goods or services, or
that it is the source of yours. (See my later comments on the
significance of this.)
1. I've registered my domain name long before they registered their
trademark.
In general, the first party to use a mark in commerce acquires a
common-law trademark, which gives it the right to exclude later
infringing users. The fact that a trademark is registered makes it
easier to defend, and has some other technical advantages, but does
not fundamentally change the trademark holder's rights. (I'm assuming
you're in the United States, because this aspect of trademark law is
quite different in most other parts of the world.) If the other party
used its trademark in commerce before you got your domain name, it can
still claim you are infringing.
You can look up their domain name registration at the Patent and
Trademark Office web site, www.uspto.gov. It will tell you their "date
of first use," which is the date on which their registration
application claimed that they first used the trademark in _interstate
or international_ commerce. That's not conclusive, since a common-law
trademark does not require interstate or international use, but it is
a very good talking point if their date of first use is a good bit
junior to your domain name's date.
2. I don't maintain a home page although I use my domain name for my
email address and
webmail thru my website together with photo albums etc. So it's not
publically active site although the domain name is used in my primary
email address.
I infer from that that you are not using the domain name in commerce,
e.g., as an address for business e-mail. In that case they could argue
that the date when you registered your domain name is not a "date of
first use in commerce," because you are not using the name in commerce
at all, and in fact you're not entitled to claim any date of first
use. But if they argue that they are kind of sawing off the limb they
are sitting on, because if you are not using the name in commerce, how
can your use of it create confusion about the source of goods or
services?
In a typical trademark infringement dispute the court considers the
similarity of the two parties' goods or services as one measure of the
likelihood of confusion. For example, if the plaintiff sells pet food
and the defendant sells veterinary supplies, the plaintiff has a
pretty strong case; but if the defendant operates a car wash, the case
is a lot weaker. (To such very different businesses could perfectly
well both use the mark, and even register it, without conflict.) In a
case where the defendant has no goods and services at all, assuming
the court does not simply dismiss the complaint, how it would deal
with this factor is anybody's guess.
Said lawyer keeps asking me how much I'd want to sell the domain name
for and knowing that indicating this strengthen's his case I'm a
little reluctant to quote him a figure. Nor do I have any indication to
sell it as it comes a big inconvience to change my email address.
All of the facts you've mentioned suggest to me that this lawyer's
client has at best a wispy shadow of a trademark infringement case
against you, and the lawyer knows it, but he's trying to intimidate
you into selling the name because his client wants to use it. If
that's true, then the chances that he will sue you are rather small.
Quite possibly, however, he will try his luck with a Uniform Dispute
Resolution Procedure (UDRP) action. This is a nonjudicial procedure
mandated by the Internet Corporation for Assigned Names and Numbers
(ICANN). You consented to it as a condition of registering your domain
name. It doesn't require an attorney, although an attorney's advice
would probably be helpful. It's done entirely online, it's pretty
fast, and it's cheap, so anyone who seriously wants to make you
disgorge your domain name has little to lose by giving it a try.
I'd have to know more about the facts to estimate how strong a case
you would have in a UDRP action, but based on what you've told us so
far, your chances would be, at least, pretty good. You can find a
description of the UDRP process at
http://www.icann.org/dndr/udrp/uniform-rules.htm. Look in particular
at paragraph 3(b)(ix), describes the grounds for a complaint.
The downside of a UDRP action is that you would spend a considerable
amount of time defending it, and if you lost you would give up your
domain name and have nothing to show for it.
Do they have a case of trademark infringement and is that related
in anyway to domain name dispute resolution?
A domain name that is used in commerce is generally treated as a
trademark, whether or not the owner considers it to be one. A domain
name that is not used in commerce is, ipso facto, _not_ a trademark.
UDRP panels should generally follow the same logic, but they aren't
bound by precedent and their proceedings are less formal than judicial
proceedings, so they are somewhat less predictable.
You didn't ask for specific advice, but I'll volunteer some. If you
definitely don't want to sell, read up on trademark law on the USPTO
web site. It explains the basics pretty well in layman's terms. Then,
armed with your new legal knowledge, tell the attorney that you're not
interested. Point out that since you are not using your domain name
commercially, confusion about the source of goods or services is
impossible, so you can't be infringing his client's trademark. Mention
the priority dates and/or difference in goods and services if those
points are meaningful and support you. Throw in a few other fact
gleaned from the USPTO web site, and he'll realize that you know
enough about the law to understand that his trademark infringement
argument is a bluff. Then get ready for the UDRP complaint that may
follow.
If you think you may be willing to sell, find an attorney of your own
who has experience with trademark law, and preferably some experience
with domain name disputes. Many attorneys will give a free initial
consultation, and that may be all you need to arm yourself with some
useful advice tailored to your specific situation. Or, if you prefer,
your attorney may well be able to negotiate a better deal for you than
you could negotiate for yourself, leaving you with more money even
after you pay his fee.
My email address is llm040903 at earthlink dot net.
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robert@elastica.com wrote:
....
Said lawyer keeps asking me how much I'd want to sell the domain name
for and knowing that indicating this strengthen's his case I'm a
little reluctant to quote him a figure. Nor do I have any indication to
sell it as it comes a big inconvience to change my email address.
...
Don't quote a figure or even suggest you want to sell it. It can be
used as evidence against you. Their case of "cybersquatting" can be
strengthened by any offer or even chance remark
This happened to a friend of mine. See
http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0320.html
See section b
As long as you have strong evidence of being in existence before the guy
started using the name as a trademark and the fact that you don't want
to sell it, you should have a strong case.
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On Mon, 28 Feb 2005 17:50:22 -0500, Roy <garlic@garlic.com> wrote:
Don't quote a figure or even suggest you want to sell it. It can be
used as evidence against you. Their case of "cybersquatting" can be
strengthened by any offer or even chance remark...
To the original poster: this warning is an overreaction to a
legitimate concern. Given the facts you've reported so far, there will
be no issue of cybersquatting unless you go out of your way to create
one, because:
* You have a history of genuine, if noncommercial use; you clearly did
not register this domain name in order to resell it.
* If that's not enough, you can also prove that you registered the
domain name before the other party registered its trademark. You may
be able to prove that you registered it before you knew of the other
party's existence, or before it existed at all; and if not, it will
probably have a very hard time proving that you did know of it.
* It contacted you -- you did not contact it -- and it has raised the
topic of payment, while at least implicitly threatening you with legal
action if you don't deal.
You can find the text of the Anti-Cybersquatting Consumer Protection
Act at http://www.patents.com/acpa.htm. Go through the factors listed
under paragraph (B)(i) to see what the cybersquatting "hot-button
factors" are. I think you'll find them pretty easy to avoid.
My email address is llm040903 at earthlink dot net.
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robert@elastica.com wrote:
Said lawyer keeps asking me how much I'd want to sell the domain name
for and knowing that indicating this strengthen's his case I'm a
little reluctant to quote him a figure. Nor do I have any indication
to
sell it as it comes a big inconvience to change my email address.
Unless, of course, he pays you enough to make up for the inconvenience
:-)
And if it's just the email address you care about the company might be
willing to put up a web site, etc. using yoir address while still
letting you keep your address.
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