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Hi everyone.

I need your legal advice. I just got an email from a company demanding I render the rights to domains I own. (i never got a Cease and desist letter, so Im not sure if this is a formal one. it's just an email from a paralegal. no actual document attached).

Background: the domains in question: www.clearpassmembers.com and www.clearpassflyers.com.

Trademark: Clear Pass "trademark in respect of, inter alia, vehicle mud, rain flaps and wings" that description was quoted from the email.

Why I registered it (domain): I come from a design background and had my start working in club flyers and vip cards. one of the biggest success stories was the use of fancy clear cards to give out to VIP members... anyways this was the nature of the site which is work in progress. There is proof of my professional creative background and why I would want to develop a site like this.

Based on the paralegals description: "trademark in respect of, inter alia, vehicle mud, rain flaps and wings", my purpose is completely different.

From what I understand, I'm not doing anything wrong As long as the nature of the business is completely different.

Please give me some advice. I don't like getting bullied around, and I believe I have done nothing wrong. Apparently I have 5 days to respond.

OH! and they are parked. and they point to credit card/flyers/mailers services. etc. NOTHING EVEN CLOSE TO WHAT THEY SERVICE. SO I AM IN NO WAY JEOPARDIZING THEIR BUSINESS..

Comments (15)

Jorge,.

You have a few options, depending on what your aims are, but consulting an attorney is probably best...

Comment #1

Thanks for your advice. wish I could fight this. wish there was a way for me to find out if they are just out to scare me and have no case really. their business doesnt sound like anything related to the domain names.

Any more advice from anyone?..

Comment #2

I think you should start building your websites you intend to develop. Your SEDO parking gives us a wrong impression. As far as I can see, you want to sell those domains to ClearPass for big bucks. I will stand corrected if I see some decent websites with decent contents there...

Comment #3

I actually do have a site. i'm putting it up this evening..

Thanks everybody. if anyone has more advice please post...

Comment #4

Interesting...I wonder if they sent the same C&D to ClearPass.com?. Or, the net and .biz for that matter. Also, it does not appear they do commerce in the US, so this may create an angle for you. But, the biggest issue you likely face is that you have not put it to use yet in your intended industry. I would suggest you seek a little legal assistance, as a reply worded correctly from the right attorney might just end the whole thing...

Comment #5

A note from a paralegal? i'd verify the paralegal's existence first before I start spending money on an attorney. if this company doesn't own clearpass.com/net/biz, etc. I wonder why they'd target you?.

Do your research on the company a bit more in depth, you will want to know who you're dealing with in more detail than just knowing what their product is.

Once you verified everything and your logical mind tells you that you may have a case, then i'd seek legal assistance. If you've done your homework, your attorney will have a lot less time to spend on research = less money out of your pocket for fees.

And as everyone else already pointed out: develop a site,...immediately,...tonight! make sure that YOUR business is branded all over it and that it relates to the domain name.....

Comment #6

The fact that you have them parked and listed for sale at Sedo pretty much kills any defense you would have had, whether or not you knew of the trademark holder when you registered the names. The odds of you successfully defending this one at UDRP would be 20 to 1 against you.

Your best bet at this point is to try to negotiate a reasonable settlement with them in lieu of them taking the case any further. Filing fees for them to proceed with a UDRP dispute are ~$1600 (plus lawyer fees) and the process takes a couple of months. Go ahead and let them know you've never heard of them or their trademark and that you registered it for completely different reason. Remain civil and maybe you could work out an agreement that's fair for both parties.

Sorry to hear about this, but good luck! I hope it works out ok.

RJ..

Comment #7

Agreed: they probably don't intend a UDRP for these domains, so I'm sure an agreement could be worked out. eBay used to email everyone with "ebay" in their domain including MaineBays.com, so obviously sometimes companies overreach.....

Comment #8

Thanks everyone for your replies.

A few things to bring up... if you wish to entertain this discussion further. I think we all can learn from these situations, so I hope to hear from everyone who has something to contribute.

We'll start of with more about this company addressing me. they have filed for chapter 11. they own for the name "clear pass". their site is http://www.clear-pass.com/.

Clear Pass, Europe's leading spray suppression.

System for trucks and trailers. "direct quote from their site".

Enough about them... what do I do and why do I own these domains.

I work and live on the web and my roots are that of a graphic designer. I spent years designing night club flyers. Back in 1996, rarely did you see fancy marketing material being used by clubs in the area. One idea I had for the longest time was to offer unique marketing material and services for this industry. Back then I owned and operated a website that offered solutions for nightclub owners and promoters. among these solutions, various unique ways to promote your club.

HOWEVER there was plenty of references to "flyers", "passes", "clubs", "members" etc. back then it had become trendy to make transparent mailers and credit card type passes for exclusive venues. you can see how this is all related to the nature of this service I offer to night clubs.

A couple of months ago, I got a nice mailer from a retailer and it reminded me of the days when I was running the site and I decided to register: www.clearpassmembers.com and www.clearpassflyers.com plans were to bring back the service for exclusive clubs in your area.

Since I wasnt doing much work on the site or the service at the time, I decided to park it. if you click on the links, you will see that they go to credit card, plastic cards, flyers, printers. that sorta thing. nothing that would even come close to competing with the services this person is accusing me of.

So thats it. thats all I have to support my case. thats all I have and it's all true and again I had no ill intent. no what?..

Comment #9

Have you replied yet? Here is what I would do asap.

1. Remove sites from Sedo immediately.

2. Add the content or a mission statement.

3. Ignore the email they sent you.

4. Wait it out.

Now I think this company is just blowing smoke at you imho. I believe you could win a udrp but the problem is cost...if they go that route it will also cost you money and you may have to just not respond and let them take the names. If you just regged these...no big loss imho. If you do as I suggest and 6 months later no more contact...most likely you are in the clear and can go forward with full development.

At least that's my take. In the future...don't park anything you want to develop at Sedo. It's becoming a trap for companies to use against domainers in a UDRP...

Comment #10

Can you expect legal advice in a forum consisting mostly of laypeople?.

You could try what -RJ- suggested if you're fine with that. But if you really do.

Want legal advice, then seek one from a licensed experienced attorney.

There's a sticky at the top of the legal section giving lots of choices...

Comment #11

I googled your stuff and it looks about even on the company that has the tm. But they are in chap. 11 and others are using the name in the same way as you would like to, and you don't know who the paralegal is. I'd do some research first, find out who indeed sent you the letter, and get your site up to show no legal infringement on them. Point out google to a lawyer you can trust and if this is your dream, (they are out of the county and grabbing at straws) and fight like the dickens. It's your dream, don't let anyone take it, you are not infringing nor trying to divert business from them.

I wish you well, and a clear passage, good luck!..

Comment #12

One thing you need to realize when it comes to TMs and domains in using the "category challenge" argument.... you actually have to have a developed domain and have it actually being in use. Unless you have proven documentation that there is something in place, your chances are slim. Intent is well and good, but unless you actually develop it, it hurts you. And quite honestly, doing something now may not help you since it was done after you were contacted and it reaks of trying to show good faith after the fact. This would be a determination that a panelist would conclude.

This is a tough one, good luck.

Edit to add:.

I should also point out, in UDRPs, it isn't so much TM law, but who has rights or greater rights to a domain. They have rights and you have not since you have nothing developed...

Comment #13

A layman's opinion about the law is as trustworthy and reliable as a layman's opinion about medicine. I have had a headache for a week now. Who thinks I should have brain surgery?.

Come on, the quasi-C&D people are attempting to own a particular phrase. Google "clear pass." The results show that this phrase has multiple different meanings. If they were to prevail, then they would have a right to shut down every web page that contained those two adjacent words. There is also an old saying among TM lawyers - No infringement, no case.

Another thing, what facts do they have to support a claim of bad faith registration AND use? I don't see any. Both elements are required to support such a finding. Selling a domain on SEDO is not bad faith use either. Their site has link-generating revenue for the seller. It is also a form of commercial speech, which is protected by the First Amendment.

What about the "confusingly similar" requirement to support a UDRP claim? Two of the three words may be similar, but the analysis doesn't stop there. The party must also prove "confusingly." Does the SEDO page or the newly constructed page confuse people who are looking for the clear pass site?.

I have read many arguments about the "confusingly similar" element and people just seem to stop their analysis once they conclude that the domain name is similar. They forget about the confusingly part. Just look at nameprose.com, for example. The name is similar to namepros.com, but it has a completely different meaning and website content. Anyone here "confused.".

When analyzing any case, each and every element must be proven by the challenging party. Just what is the rational for the UDRP and anti-cybersquatting laws? To make the people who register and use in bad faith someone's intellectual property rights pay for their infringement. No infringement, no case.

Listen. There is no "highest and best use" standard for domain names either. The government cannot make a content-based distinction when deciding who should get the domain name. If the domain owner has not registered and used the domain in bad faith, then the owner has a free speech defense. Attorneys' fees are usually awarded in free speech cases.

Everyone who gets a C&D letter who has registered and used the domain in question in bad faith knows it. Those, like our poster here, who are not culpable, should defend himself. Go ahead and let the claimant pay the $1,200 plus dollars for the filing and arbitrator. The worst thing that could happen is that the arbitrator is incompetent and you lose. So you turn the domain over to them or appeal the decision.

Never be intimidated by a C&D letter if you have not acted in bad faith. In such cases, the sender is usually using boiler plate language from a form letter to scare you.

You still need to respond to their letter stating your defense. Use facts. Once they have the facts, if they still file, then they run the risk of a reverse domain name hijacking finding by the panel. If you get such a finding, then you should think about calling your local bar association's lawyer referral service. They can refer you to a lawyer who can sue using your state's unfair businesses practices act. These acts usually provide for the award of attorneys' fees to the prevailing party.

I'll end this post by saying one more thing. If you don't have the time or fortitude to defend yourself, and the domain is not worth that much, then just turn it over to them.

P.S. Take down the SEDO page anyway. SEDO could randomly put in a link to a clear pass competitor.

P.S.S. I ran a search of the clear pass phrase using: http://tess2.uspto.gov/bin/gate.exe?...ate=lm29o5.1.1 and saw two results that read "DEAD.".

I also ran a search using: http://www.patent.gov.uk/tm/t-find/t-find-text.htm. It shows, I believe, at least two companies using the clear pass phrase. One of which is, http://www.patent.gov.uk/tm/t-find/t...emark=E2622504.

Mark text: CLEARPASS.

UK case status: Registered.

List of goods or services.

Class 10: Surgical, and medical, apparatus and instruments for use in angioplasty; cardiovascular instruments.

Names and addresses.

Applicant: Clearstream Technologies Limited.

Moyne Upper, Enniscorthy, Co. Wexford, Ireland.

Representative: F.R. KELLY & CO..

27 Clyde Road Ballsbridge, Dublin 4, Ireland.

The above company doesn't appear to be ceasing or desisting.

You should read the following for guidance. Taken from http://www.patent.gov.uk/tm/t-other/...-infringe.htm:.

Infringement.

What is trade mark infringement?.

If you use an identical or similar and confusable trade mark for identical or similar goods or services to a trade mark already in use - you are likely to be infringing the earlier mark..

__________________________________________________ ______________.

Remember. Each and every element must be proven. Similar goods or services? Doesn't look like it.

...and whatever you do, whenever someone tries to claim your domain, right or wrong, never, ever offer to sell it to them...

Comment #14

This is going to be a drive-by-posting, which by definition is never well thought out - but "clearpassmembers" does not seem to have anything to do with mudflaps? I've gotten C&D's that were more poorly thought out, but...

I'm not sure their purpose in fishing like this, but while others could see you quickly losing this one, I could see you, assuming a) they do try to UDRP you and b) you get an attorney to respond and c) you take the mitigating actions as mentioned by others above.... well, I could see the decision being "reverse hijacking" - they've found it over less..

That being said, the panelists are fickle and paid to be fickle, I'm afraid - so do your own risk/benefit analysis. No legal advice here, just an impression and some information...

Comment #15


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

 

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