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GoDaddy service : Should I sign up for GoDaddy?? Asked for assurance that you wont infringe again

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We have a domain I marginally believe is trademarked. Lets call the trademark XXL (out of pure randomness.) We own XXLweb.com and get a legal letter from their representing law firm.

We have no issue transferring this domain to the company that claims trademark /img/avatar3.jpgship. The domain really means little to us. However, the law firm also wants us to agree to no use the name / mark in the future. Sure, well try to not use this mark in the future, but the last thing were going to do is sign anything saying well agree to never buy a domain with XXL in it again. Thats just plain stupid on our part.

So how do you handle this? Do you ignore this part of the request? I feel legally responsible to put something in the response like We however can not agree to not purchase any domain in the future that your client might believe is similar. We will take our own precautions to stop this from happening and will in our best efforts try to avoid such issues in the future, but can offer no legal guarantee as Im sure you can understand..

Is that calling for more action? Im not going to sign anything  that is for sure! But at the end of the day I rather transfer the domain to them without any UDRP issues on such an insignificant domain. Or is it just better to reply "sure, here is the domain", but not even acknowledge the request for future assurances?..

Comments (44)

That's common language. And imho it's not a problem. It's either you believe you are infringing or you are not. If you believe you are (and they do too) then why wouldn't you agree to stop the activity and future activity as well...

Comment #1

We have many different purchasing methods, and I won't purposely buy a domain with this again. But that is not to say my business partner wont do that accidentally. Or its not to say it won't slip my mind in 6 months, or that another purchasing process won't buy a domain with XXL in it in the future. So - signing something literally gives them legal means to come after us if we do it again in the future. Last thing we need is some company suing us for a million dollars because we accidentally infringed on their TM for a second time  after agreeing to not do it once...

Comment #2

It may be common language, but it's definitely a problem. Use a real name like "bowl" instead of XXL. For example, while superbowl.com may be a TM, and superbowltelevision.com may be a TM, soupbowl.com or fillmybowl.com may not. If their company is apple.com, applecomputersales.com may be TM, but hotapplepie.com may not. For a company to request that you never use a keyword in the future for any reason is nonsense...

Comment #3

Yes, I agree verbster and that describes it perfectly. Our intention is 100% to not to infringe again on this company (nor any company for that matter), but assuming it's "apple", I can't buy RedApple.com? It's insane and shooting ourselves in the foot to sign something saying we won't TM infringe again. It also lines us up for a lawsuit if that company really cares and we do it again too.

So, do you ignore the request - or honestly tell them "we won't guarantee anything". I'm sort of want to make it public knowledge "we're transferring this domain, but won't agree to your future terms"..

Comment #4

His example XXLweb tends to make the XXL the trademark. I am willing to bet it's not a dictionary word. And he should be grateful they aren't suing his ass for damages and his revenue.

You do whatever you think is neccessary Rebies...

Comment #5

Dave Zen - thanks for the link! I looked around but did not find any previous threads about this. That thread was especially helpful.

I guess it comes down to how to contact / reply and transfer. I agree 100% with what was said in the other thread, and without compensation, we're not going to sign anything. Seriously, I dont plan to use this mark in the future, and never meant to use it or saw it at first myself, but I surely am not going to sign a contract without compensation. Since I dont care about this domain we'll transfer the domain to them for free.

Im thinking now my approach will be this& Move domain to a new account at the current registrar, then write a polite reply, mailing it to them essentially saying&.

Attached is the login information for managing this domain, however we can not sign any contract without compensation. Unofficially we will watch out for this trademark, but can not absolutely guarantee a domain of similar nature is not accidentally purchased by us in the future..

I still wonder if the above sentence does not fire them up or give them rights to come after us later? Is it better to just give them the login information without declining their offer? But the above is 100% the truth. Well watch out for it, but won't guarantee it...

Comment #6

When you bought XXLWeb.com were you aware of XXL the trademark?..

Comment #7

Diabro,.

No. Actually I don't remember buying the domain at all. One of those - sliped in somewhere between many other domain registrations. Looking back on it I would not have manually approved buying this domain.

Did I "know" this was a trademark? No. (keyword being "know" there!) Have I heard of the company? Yes. I would most likely have guessed it was a trademark in looking at it. But somehow, not on purpose, this domain did slip into our portfolio...

Comment #8

Granted, if the company is something very distinctive like ebay.com, that would make a difference. Anything not very obviously different (like granitebayboats.com) would be trouble...

Comment #9

I don't want to deceive you guys. It's a fairly obvious trademark. Nothing like Nike or Google. But more like Sothebys. Most everyone has heard of it, but on quick glance you might not see it as a trademark or might read it differently.

I think it might be aside from the point. I see the trademark concern, and I really dont care, so well transfer the domain back. The question is - we don't want to sign anything, but what is the best way to transfer back without getting into any legal issues?..

Comment #10

I have just experienced the same. I offered to transfer the domain name in the end but refused to sign anything regarding future conduct.

Amazingly, they decided to proceed with a WIPO (under consideration at the mo) anyway, seemingly to impress how serious my 'offence' was! I still can't believe it - the absolute best they can hope for is a transfer of the names following the WIPO decision - precisley what I'd offered weeks ago.

It's an absolute waste of their time, their money, the panel's time and my time (I filed a defence).

My advice is not to sign anything. And in terms of transferring, why not just delete the domain & send them an email informing them when it would be available? Then it's out of your hands...

Comment #11

I have recieved similar things. Say I EED is a tm. From any companys standpoint seed.com would be a tm violation or bleed.com. I wouldn't be surprized how many of those ciest and desist orders are sent out each day. If it's obviess tm violation give them the doamin but dont be stupid and sign that guarantee. Tell them Simply I'm no attorney and I'm no god.

I'm providing this domain as requested but I make no guarantees on not using the tm in the future by mistake however If that happens I will deal with it as I deem necessary...

Comment #12

So you admit the TM violation and yet you won't agree in exchange for leniency not to do it again? That's great....and this is why the Snowe bill is coming to punish domainers such as yourself. Thanks bud. What domainers do not understand is that the companies do not want these domains. The C&D's are sent to PROTECT their brand. By telling them you don't recognize their right to the brand you are instigating them to react. It's costly for them but if they want to keep their TM status alive it's imperative.

Once you lose this WIPO and get the official cybersquatter label forget ever winning any future decisions...even if you are in the right. I just wish companies went for the $100k fine more often and teach a few bad apples a lesson.

Namepros members...you should feel ashamed so many here are telling this guy not to agree to stop the TM violations in the future. Blantantly it's like saying he can cybersquat as long as no one is looking. Shameful...

Comment #13

I'm not telling him to not to stop registering TM violations. (I've done it myself by accident and honestly it's no real big deal if you work with them) The fact of the matter is were humans and do make mistakes. Take my example above eed as the tm and me registering seed.com. Lets take it a step further and say I established seed.com as a plant food company (seeds). If I signed that letter it says I wouldn't register anything with eed in it as thats a tm. Under regular law I would be allowed to own seed.com if it was obviessly not infringing on there tm (diffrent product diffrent indestry) From what this company wants her to do is say she wnot have those letters at all...

Comment #14

Nonsense. These things are usually grey areas and large companies (which they invariably are) even if they hold hundreds of TM's do not and should not have the power to go around making such demands of others. Signing that thing, the OP could get unwittingly caught in the future and, with a legal document to be used against him, absolutely slammed.

Eg say the TM holder was "O2" the UK mobile phone company and you signed the letter. Then you realise you have a domain with the word "O2" in it , say o2tents.com which is all about sales of oxygen tents? How about you wanted to start a blog called whyo2mobilesarecrap.com - that's free speech.

Am I making sense?..

Comment #15

OP admitted it's an obvious TM. Imagine if Google asked you to sign a similar agreement. What logic is there for "unwittingly" after the company has contacted you and made it CLEAR their TM.

And we aren't talking about EED here. I dare the OP to give us the TM. Everyone here would probably stop dead in their tracks with their nonsense defense of this...

Comment #16

I'm not defending what the OP has done. Of course it's hard to defend or condemn without seeing the domain in question. The original question and pertinent issue is his rights into the future.

By signing that he is ever so slightly limiting what he can do in the future including plenty of circumstances which anyone would reasonably consider entirely in good faith. He shouldn't have to do that. Not unless mandated to by an independent body (in which case he should!).

See my other thread in this section - in this case, the complainant does indeed have a TM on the term realestate.com.au (check here - http://pericles.ipaustralia.gov.au/a...lication_start) but I have dozens of domains with the term realestate within them. If you were me, labrocca, and the complainant did what is being asked of the OP, would you sign that form?..

Comment #17

I am not Jesse, but I have signed a form like that before way back about 7-8 years ago when myself (like most everyone else here) registered TM domains not realizing it was illegal. Luckily, I did not have many TMed domains and I let the others drop way back when. It is understandable to fall into the trap everyone fell into when we first starting out, but once you are informed of the situation, I would hope one would say, "ok, I won't register any of your TMs again".

Now, it seems to be a unique TM, if that is the case, just sign the thing and get it over with. Realize, it is the DOMAINERS responsibility to not register TMed domains. You sign an agreement with each registration saying so. The ignorance defense is usually ignored by everyone of influence (lawyers, panelists, judges). So, what is the problem? Just say you won'y register anymore of thier TMs. As far s all the "if-buts", if a domain is registered where the usage has nothing to do with a TM holder, that is a different situation.

(I didn't want Jesse to rant alone ) There is a difference between the 2 situations (I did respond on your post already). Yours seems to be a descriptive domain while this seems to be unique. Additioinally, the ccTLD hae thier own things going on, at least the TLDs have more fairness than those (or would seem to be)...

Comment #18

This is an interesting issue and I'm curious of the outcome of signing that piece of paper.

Say I own windowscom, and I have been using it as bad faith. Microsoft demands I hand over, which I did. In addition to that, they force me to sign this letter that I agree not to "not use the name / mark in the future".

Now, months down the road, I find that I am not cut out to be a domainer and I've not made any money in domaining. And out of sheer coincidence and opporunity knocking, I became a windows cleaner. Now does that mean I cannot register windowscleanercom because I've signed that piece of paper? Or I can still register windowscleanercom because though it contains the word windows however, I am not using the name / mark for commercial gain?..

Comment #19

The paper you sign is saying you won't register TM infringing domains. In your example, the domain is descriptive of the services you are providing, or if it is part of a name to which you are doing business, then you are not infringing on the TM...

Comment #20

I have signed also the "won't do it again" clause. I have only been asked where the TM is unique. People also think that because you sign this paper you're suddenly up shits creek. It's just not true. Does the agreement have an additional penalty for breaking the agreement? Doubtful. What the agreement says is basically you respect the rights of the TM holder...which helps them in their TM defense.

By handing over the domain you are placing a similar liability against yourself for the future anyways. The document is just more official. Lawyers gotta dot their I's and cross their T's. They like to get paid and do so by writing in whatever clauses they can. Sign it...make them happy. Exactly...Phil has come to my rescue!..

Comment #21

Im not trying to fight anyone. Im looking for insight and discussion. Ive admitted there is a TM, so I think its rude for others to dare me to provide the TM and to insinuate its my fault that the Snowe bill was proposed and tell me Im lucky they did not sue my ass. This is one domain we registered a few months ago, and Im looking for suggestions, not inflammatory comments. Im looking for reasonable course of action  and to me (and others here) it sounds like signing anything is just dumb to do. I could go ask any lawyer  and they will most likely tell me in a heartbeat  dont sign anything if you dont have to. Its common sense 101.

Netfleet& Thats very interesting about offering the domain up but them pursuing WIPO anyway. Although I assume you could be responsible if they really want the domain and you delete it  and then they dont get it. Then you could be liable for damages at that point I might guess? Jesse - thank you for this comment. Much more insightful and helping address the issue. Yes, my primary concern is we sign this, and then out of pure mistake in the future we register another domain containing this mark - there is now a legal trail that gives the company right to come after us - with proof we know (and signed) to not do it again in the future. I dont think were up a creek, but do think were potentially harming ourselves in the 4 or 5 year scheme of things...

Comment #22

Whether it was an intentional or unintentional violation of trademark is besides the point of the question. I think we can all agree that trademark infringement is wrong and whatever our past sins were, we can strive towards changing today to behave with ethics and be respectful of trademarks.

Now, about the question at hand. Your willingness to hand over the domain without a fight, or any request for compensation, is admirable. That is the proper thing to do. However I personally would not feel any need to sign ANY type of contract whatsoever with the other party, unless my hand was absolutely forced to do so. Transfer the name, apologize if you feel the need, and be done with it, imho.

RJ..

Comment #23

I agree with RJ... You should not be compelled to sign anything...If you do sign, make sure you read EVERYTHING and understand it fully before you do... make sure they don't have some god aweful terms in there... but imho you are under no more obligation to do anything other than turn the name over.

If they throw a hissy fit that you won't sign it, imho you could tell them that you don't think it's necessary to sign anything, but that you will make your best effort to make sure your company doesn't do it again. The trouble with signing is that they could come in the future and say in court see he signed it and broke your contract... which would be doubly bad.

Just IMO...

Comment #24

I did not think of it from this standpoint. Good answer...

Comment #25

They have that right anyways. What exactly do you think NOT signing does for you? Weight the positives and negatives. Worse case scenario vs best case scenario. As someone else here already pointed out...they refused to sign one of these and the company decided to UDRP. Would a judgement in UDRP against you be a benefit vs signing the paper saying you won't infringe on their mark in the future. I already pointed out the OBVIOUS negative of having a WIPO decision marking you FOREVER a squatter.

You are under and impression that "you don't have to" sign this. What gives you this impression? "you don't want to" is very different then "you don't have to" ...seems the TM holder has you dead to rights and has made this clause as part of their agreement. What standing legally do you have to deny them?.

Is you plan to basically not sign and "hope" they just go away? That seems a bit more risky given the current climate of going after domainers don't you think? You're the only person that knows who we are dealing with. Once a company contacts me I walk on glass for a couple weeks till it's blown over. If you are comfortable in telling them you won't sign then hey...go for it. Good luck in that...

Comment #26

What is wrong with what he said, could you please expand your answer to maybe see why you don't think he is serious. The TM holder may do whatever they want, just like you may do whatever you want. They want the reassurance that the person doesn't squat on thier domains. What is wrong with that? It is a better option than UDRP, or even worse, ACPA. So basically, in exchange for not esculating this matter to court or UDRP, they are asking you don't infringe on thier mark...

Comment #27

How long does it take to completely delete a domain. ie your name not showing on whois info...

Comment #28

I was remarking on the implication that a respondent must accept or agree to anything in a C&D letter (beyond being prepared for the consequences of not doing so). Even if you believe it's the prudent thing to do, there's a huge difference between a C&D order and a C&D letter...

Comment #29

The respondant does have the choice to sign or not sign, I agree. But the complainant has the choice to solve the situation amicably or to be aggresive. They chose amicably and in order to keep it amicable, they gave certain conditions to let the coplainant off the hook. If the respondant wants the easy way, they agree to the terms. If they don't agree to the terms, then the complainant has other avenue's, some of which the respondant may end up paying a huge fine and all the legal costs for both sides...

Comment #30

What we're seeing here is a new approach of TM holders understanding that they do in fact have other ways to handle one situation, long term.

This is their brand, this is their business and I would follow their requests to avoid any issues. I agree 100% with DNQuest.

It's a choice available to you. However I would do what they want you to do. This isn't going to be the first time something like this will happen. Think about it... this topic is growing very large as the days go on.

But the ultimate choice is up to you. I feel that you might be under the impression that all you should simply do is give the domain back "like everyone else does". This day and age, it's becoming more of a problem for TM holders and they want to ensure their mark means business.

It makes sense. You guys would do the exact same thing... I think..

Comment #31

If that is all they want is an assurance that you won't do it again, it's not unreasonable. Personally, I would want it rewritten that you will make every reasonable effort to make sure you and your purchasing agents will not infringe again. That way, if you hire a new guy or get another partner and they reg another, you aren't instantly under the gun again. Also, if a parter regs something that infringes, that doesn't necessarily make you guilty or liable unless they registered it with your permission or under your guidance of some sort... someone else can chime in on that point... The others are right, there are risks to signing and not signing... it is up to you to determine what risk you want to take...

Comment #32

Good posts and points!.

Yes, it's exactly that flamewalker. If a new guy comes on and registers a domain with that same TM - we don't want to be under the gun because of that. If this company has an issue and it unfortunately did happen again - we'll turn the domain over again. But I can not guarantee this TM won't accidentally make it into our portfolio again. Heck, automated systems could do it accidentally for some reason or another. Or a new program written.

At the end of the day, we have a blacklist we watch out for and this TM will get added. We will do what we can to not make the same mistake again. I think I agree flamewalker - a rewritten contract might be better. Heck, maybe I'll rewrite it, sign it and send it back that says "we'll take precautions this does not happen again". But that is not a guarantee. I can guarantee Ill TRY to keep this TM out of our portfolio.

Everyone somewhat gets what they want.

Good question as well& If I theoretically signed their agreement and send it back, but someone else comes onboard and buys the same TM  where is the legality in that?..

Comment #33

I could live with that. I have a feeling they could too. Interesting discussion at least...

Comment #34

I bought a dictionary .biz about a year ago with some vague idea of what it could be used for. Which was not even remotely close to the trademark. As with all my purchases, I just park them. Rarely do I optimize them or develop them. Out of the blue, I got a C&D from a trademark owner. When I looked at my parking page, it was smothered with competitors ads.

I explained and apologized all this to the lawyer by reply email. I didn't state categorically that I wouldn't turn it over. I changed the keyword, and gave them assurances that their trademark would not be infringed on this domain whilst the domain still belonged to me. It's been a couple of months without any further contact from them.

I provided them with info about my revenue. Exactly $0 in nearly a year. Except for when their lawyers checked out the domain and clicked on the links. So although there were some visitors to the domain, none of them clicked on any links. Apparently none of these visitors associated this domain with their trademark, either.

Lesson learned: I checkout USPTO now when buying domains, and set the keyword when parking them...

Comment #35

Why not spend an extra 10 seconds and search google too? Not all TMs are registered and with a Google search, you can see if being used as a TM or at least could be argue that someone is using it as a TM. Becauseas we all know, it is the domainers responsibility that they do not register TMed domains..

Comment #36

I'm not sure there's anything wromg with registering a TM'd domain as long as the domain isn't used in a way that infringes on the trademark. Sometimes that's pretty obvious...sometimes it's not. That's why we have forums like this and reputable attorneys to help us figure out the close calls...

Comment #37

There IS something wrong with registering a TM knowingly...sometimes you can use a tm term for another purpose and be ok, but it's a huge risk... and usually not worth it. For instance, I recently picked up gamereplay.com, not realizing there was a tm... well I found a use that is non-infringing and did not park it, and the tm owner didn't have the money to fight me over it. Many tm owners will...

Knowingly doing it is wrong... accidentally is another thing that can usually be remedied without too much trouble...

Comment #38

I wish I had enough money to open a gas station...I would name it "Google Gas"...

Comment #39

I agree that it's probably not a good idea to try to use something close to an exact replica of a very distinctive trademark, especially if intentional...that would most likely fall into the "obvious" infringement category. I am not advocating that. But there are other uses that may include all or part of a TM in one category that may be okay to use in another category.

TM'ing "Chocolate" does not mean it can't be used in another unrelated product's TM..

For example, registering "chocolatecellphone.com" would be an obvious infringement on LG"s Chocolate mark for their phone, but using "chocolate" in "worldchocolatemasters.com"" (makers of confectionary) does not infringe on LG's mark. Neither do other names like "lazy chocolate," "chocolate maven" or "peace of chocolate.".

As for "Google Gas," I don't know...if your family name is Google, and you've been in the gas station business for 50 years, who knows? It would be an interesting court case, or maybe something similar has already decided the issue, like "McDonald's Fine Furniture" or "Apple Ugly."..

Comment #40

Http://www.mcdonaldsfurniture.com/.

Hehe...

It doesn't matter that Google made up the name....what matters is usage. TM status is given for FIRST USE in commerce. Unless I am mistaken Google hasn't been selling Gas just yet. Of course Google would probably argue I would be making money off their mark and they would be right in that regard...but a good lawyer could keep them in the courts for years...

Comment #41

Without meaning to go off-topic from this thread, one rare case involving this.

Is the Nissan.com dispute. Mr. Nissan still has the domain name, but he can't.

Put up anything car-related on the site.

The moment he does that, he'll give the car company a book to throw at him. You could try that. Of course, it might be a challenge to prove, say, users will.

Not likely confuse that with a uniquely famous trademark. (hint).

Anyway, to sign or not to sign...that is the OP's question...

Comment #42

Actually verbster, I have that exact scenario in the case of "Game Replay"... they used ti for renting video games online, I am (going to) use it for a video archive of matches played on my World Gaming site.

Labrocca: ... and you know Google can afford that kind of lawyer..

Comment #43

But they have to prove DAMAGES...if they are not engaged in selling gasoline to customers HOW am I taking away their revenue? That's the point of suing. The burden of proof will be on Google to prove damages. Google Gas would be perfectly legal.

The same rules that apply to Apple also applies to Google. The fact that it's not a dictionary term is meaningless. A mark is a mark and it's usage is the ultimate enforcement of that mark. I guess people haven't been reading my posts all these years very well.

EDIT: I just thought of the PERFECT example of what I am talking about. Acme...it's a latin word as well as Googol. It was used by Warner Brothers for cartoons but has since transformed into Americana as a legit name: https://www.acmemarkets.com/eCommerc...o?action=begin http://www.acme-superstore.com/ http://www.acmepowerdist.com/ http://www.acmeportable.com/.

Acme pulls up 18 million results...there has to be hundreds of companies using the name across the nation...

Comment #44


This question was taken from a support group/message board and re-posted here so others can learn from it.

 

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