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GoDaddy review : Great idea to buy GoDaddy?? Got An Email Regarding TradeMark

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Hi I will appreciate if some one can help me with their expert knowledge on this question.

I have a Domain that I registered which is misspelling of a company. Now I was using the misspelt domain to promote the same company's product as an affiliate. The domain is registered as a private domain though. Today I get an email from the COMPANY through private registration email which was forwarded to me saying that it is a TM ifringement and I must cease and hand over the domain to them or else they will file a lawsuit etc etc.

Now I did some research and found out that I really registered the domain way before they filed for the Trademark and their TM was approved around 7 months or so after I had registered the domain. Although I am still promoting their product and my domain is directed to the affiliate link of the company, does it still considered as a trademark infringement? I am not using it to promote any other products or their competition which I don't think they have much. So is it still considered that I am using the Domain in bad faith while the domain was registered to only promote This Comapany's Product as well as it was registered before they filed and were approved for the Trademark?.

Thanks for all your help and expertise. God bless.

S..

Comments (27)

I would say you have the right to own the domain name because you registered it before they trade marked the company. Also you are promoting their product and nothing else. I would say they are trying to scare you so you hand over the domain name to them. I think they have absolutely no right. But this is just my opinion and I wouldn't give anything to them rather than a reply saying NO...

Comment #1

You printed this in a 'public forum', and you're wondering if the company has a case against you and the domain in question!?! Drop the site, give them the domain, and 'hope' they don't come after you for monetary damages. (...kids..)..

Comment #2

Thanks for the feedback. My intentions were not wrong at all. I am promoting their product only and did that before they were approved for the Trademark. I have seen this too many times that people are using to promote the trademarks products. e.g makemoneywithgoogle.com or googlemoney.com domains like that and many others with some other trademark names as well. some of those domains are fully developed sites selling the products that is either a product from the Trademarked Company or even how to make money from that trademarked company etc etc....

So my question here is how do I deal with it since I have no wrong intentions. I have been promoting their product only ,which benefits them as well. So what is the best thing to do here. And please no scolding or tear downs as I was a newbie at the time this domain was registered and Also remember it was NOT a Trademark at the time...

Comment #3

It is possible to use a domain in bad faith after you registered it...

And that is what you are doing. You can cry you had no bad intentions all you want. But the TM laws are to protect the businesses that own them.

You are benefiting off their TM'd name. A name they spent alot of money branding and protecting. Yes you are promoting their product but making money off of their name.

And just because other people are doing it and getting away (for now maybe) with it that doesn't make it ok for you to do it.

The company has every right to pursue the domain to protect their TM...

Comment #4

Whether you're a newbie now or then, you are 'infringing' on their name/product, making money, and whether you have good, bad or whatever intentions, you have no case, and if you go to court not only will you lose, they can come after you for money's made and more. Call it scolding, teardowns whatever, they will call it squatting, infringing, and illegal. So my advice is the same...

Comment #5

Ok I understand that. Again my question is how do I deal with it? I have no problem letting the domain go. and Maybe I didn't mention above , but still my question is what DO I do from here? I don't need the court headaches so what do I do? cancel the domain? or is there another method to let the domain go?.

Oh by the way although I registered it before they trademarked it, I still never made any money off of it so I have no problem handing them over the domain. Although Misspelt but I guess No body ever typed it to land on my affiliate link. oh well.... Just want to avoid court headaches......

And you know what is more funny? Other than the DOT COM domain they don't own any of the other extentions even with the correct spelling haha. I guess then they will go after all the other extention owners e.g. dot net , info ,org ,mobi since none of them is owned by them other than the Dot Com extention.

I wonder what they were doing? and Not register any of the other extentions even in the correct spelling? or was their intention to trademark it and then go after the Guys who own the other extentions? Hmmm Makes me wonder!!!..

Comment #6

Do NOT cancel the domain..

Reply to the email and ask them how they would like to handle the transfer of the domain into their possession. They will most likely have a registrar that you will have to transfer to...

Comment #7

Seems clear to me what they want.

And based upon your posts...you are in the wrong here...

Comment #8

I agree, it looks like you just have to give up the name.

BUT.....

This smells like a bit of a scam. I would definitely contact the company directly (by phone) to be sure they are the ones who sent this email...

Comment #9

You think maybe someone is trying to dupe him out of a typo??..

Comment #10

Of course if you call the company directly and tell them you got the email you are making them aware of your domain so you can probably guess what THIER next move would be.....

Comment #11

Most emails that we receive re TM infringement are fake. So check if the email came from the companys address. If it is not, just ignore it. If yes, then call them and ask how they would like to acquire it. Be polite with them. If they are genuine people, they would pay you a few bucks just as a good gesture, I hope.

PS. Given the fact that your name was registered before their TM was granted, had you used your site for something entirely different (not to promote their products), they didnt have any right over your name. But now you have made a mistake so you have to pay the price, Im afraid...

Comment #12

Did their letter perhaps include some helpful suggestions on what to do with the domain?.

Are you unable to do what they have requested? This type of thinking plagues domainers like a virus.

If I launch a product or service "Froozlenorf" and promote that as the name of my goods and services, such that it is recognized by relevant consumers as an indicator of the source or origin of those goods and services, then in the US, the UK and many other countries I have a trademark.

I do not need to register my trademark with any official entity. My trademark right arises under common law (again, in appropriate jurisdictions).

One can obtain certain benefits by registering that trademark with, for example, the US Patent and Trademark Office, but a "TRADEMARK" is not something that is granted by the USPTO. The USPTO grants REGISTRATIONS of trademarks.

Now, let's stop and think for a moment about whether or not this company "had a trademark" when the domain name was registered.... First, read the affiliate agreement. I will bet you that it probably has something to say about using marks in domain names.

But the larger issue here - "Did consumers recognize the claimed mark as a trademark when the domain was registered?" - appears to be answered in the very statement of the problem.

Again, a word, symbol etc. which serves as a distincitve indicator of the source or origin of goods or services which bear it. The domain here appears to have been registered because relevant consumers will be looking for the indicated goods or services at a typo of the term used by the company.

This is a no-brainer, assuming that the term actually is a distinctive mark. However, it is clearly distinctive enough that the OP figured buyers of the product would mis-type the domain name in order to reach the affiliate site.

Now, assuming the communication is legitimate, the other mystery here is why the OP has a hard time figuring out what to do in order to avoid a lawsuit. I can't, simply can't, imagine for the life of me that the question is not answered clearly and directly in the c&d letter...

Comment #13

Well Jberry thanks for all your feedback. The question here is not that if I am willing to give up the domain Which I am willing to let go. The question was what do I do or how Do I move forward and avoid any potential lawsuits even if I give up the domain. Also since I have not been in this situation so my question to some of you was how to deal with this issue. That is the reason I asked that should I cancel the domain or is there another method. I will reply to the email I recieved and matter of fact I will even write an email to the owner of the company and explain him the situation and will be willing to hand over the domain to them.

By the way the domain is not some made up Trademark. It is a two words generic domain as well. And I have no problem with giving up the domain but I am still wondering why did they not register the correct spelling of the domain in other extentions, including .net, .info, .org, .mobi which are all taken and by different owners. Seems like they are going after the rest of the guys as well probably and I think all of the extentions were also registered before the Trademark registered.

I was thinking why would they not register the other extentions if they had the plans to go for the trademark? I think most would do it atleast in the .net and .info extention if not any other?.

Also let me make clear. This company knew of this domain since the begining, why do I say that? Because domain was in their system in my account and it was hosted on their servers so how could they have not known about it. Even when I was hosting the domain on their server, it was to promote their product with my affiliate links on it. Then I learnt ( as at the time I was a newbie) that I could forward the domain so I changed the nameservers but still the domain remained in my account till today and I didn't delete it from my account although I was not hosting it on their servers anymore. So they must have known about the domain for almost a year.... Now all of a sudden they get registered as trademark 3 months ago so they send me this email....

Once Again let me REPEAT I have NO intention of keeping the domain because it never made me a single penny neither through the affiliate link nor even when I was hosting it on their servers. So it serves me no good. All I lose is registration cost which is no big deal. Even if I was somehow able to keep the domain it would still be worth not much at all. In all of this time of almost 1 year, I probably never had more than 5 unique visitors and if that many.. So basically even the domain is a typo not too many people have visited it through the mis-typed word...

My concern here was , what are the chances that even if I hand them the domain will or can they still file a suit ? So Jberry what would be the best possible way to hand over the domain and AVOID the legal actions...

Comment #14

There's a reason there are so many stupid criminal videos, ya know!..

Comment #15

No point registering the other extensions if it won't create the desired results.

Other than .com. What those desired results are depend on that party alone.

To decide.

Just tell those folks you're transferring the domain name to them, and follow.

Through on that. Hope they know how to accept a domain transfer, though...

Comment #16

That's like saying it was okay to steal the car because they left the window open. There is an expectation that people won't steal things that aren't theirs...

Comment #17

If you are wondering what to do next then do as another NPer suggested and contact the company/the company's legal rep to see what it is they want you to do. and to verify that they are who they say they are...

Comment #18

I had a TM issue many years ago....With E-trade.

I never received a single e-mail, but, I did receive "snail mail" from the lawyers in California.

If it's an email...forget about it...it doesn't hold any weight in my opinion.

Once you get a registered letter, that is when you should take it seriously.

In other words, wait to hear from the lawyers, otherwise you got nothing to worry about.

However, I am not a lawyer and nothing that I have said should be taken as "legal advice".

Saucey...

Comment #19

Email might be a scam, or trying to get the domain by threatening.

Simply IMO the company will first inform that they will cancel the affiliate account if the affiliate link is used in the domain in question. if they are going in the right direction.

Im not a lawyer or a expert but my advice is be cool and wait for their next step. if the email is from company email address be polite and try to build up a conversation by phone preferably, if they are genunie and has good intentions most probably they might give some small bucks.

I think long time back the owner of amason.com used to earn good money by redirecting visitors to amazon.com as an affiliate, and as I heard amazon.com paid sort of million $ range to get the domain..

Comment #20

Is there any truth in the fact that you can ignore the email and just wait for real mail contact?..

Comment #21

I don't understand the question.

Some people have this odd superstition about letters. Nobody has to write to you prior to filing suit against you in the first place. So if they contact you by email to settle the matter first, or whether they contact you by physical mail, is absolutely not relevant to anything.

Lawyers can send email. Really, a lot of them know how to type and everything...

Comment #22

Yes JBerry. I did follow your advise and I am not going to wait for any mail which I hope I don't get either. I have already sent the email to the owner.

Of the company but I have not heard from him yet. I mentioned that your.

Company's legal dept sent me this email and I want to aviod any legal issues and would like to save time for them and asked him how he would like to handle the transfer of the domain.

I will keep you updated. Thanks for stopping by again and giving your expert feedback. It is much appreciated.

And thanks to everyone else whoever posted here. It is much appreciated as well.

Hopefully this matter will be resolved soon with no hassles and I will hand over the domain and that will be it God willingly...

Comment #23

I don't know what is going on so far. I sent an email to the owner of the company and also replied to the email the legal dept had sent me informing them that the domain was registered way before the Actuall TM was registered so it was an innocent mistake and in no way shape or form I had the intention of infringing the TM or causing any inconvineinces to the company and I was willing to hand over the domain to them. I asked in the email to let me know how they would like to handle the domain transfer but I have not heard from them at all. Now the domain is about to expire in 2 weeks and I am not going to renew the domain. What if I don't hear from them in the next 2 weeks and let the domain expire....Then what can they do regarding any legal actions? I am also not using the domain and I have changed the name servers to registrars name servers now which doesn't benefit me at all in anyway.

Any suggestion on what to do from here? Jberry would you be able to tell me what should I be doing other than wait for their email for the next two weeks. And If I don't receive an email from them in the next two weeks then I am letting the domain expire...Should I worry after that for any potential legal actions?.

Thanks in advance.....

Comment #24

Let it expire and keep a copy of all your communications. And one important thing: simply do not worry much. Lawsuits are NOT lodged against ordinary individuals. People spend money to gain more money. What are they going to achieve by dragging you to the court?..

Comment #25

Thanks jberryhill, helps us noobs who think we know a little bit of domain law to get an insight like that.

Not to mention the hilarious asides:..

Comment #26

Well, whether or not you should or should not give up the domain name, or even care, is a separate question.

Your experience of writing back, volunteering to transfer the domain name, and then not hearing from them, is not unusual. Half the attorneys who send these things have no idea how to actually transfer a domain name.

Sometimes, particularly with a weak mark, a TM claimant may simply be building up a file of "enforcement letters" in the event they are actually planning action against someone else entirely. This is done for defensive purposes if, in the course of litigation, the defendant claims they have lost their rights through non-enforcement.

Since you have offered to transfer the domain name, you might mention that you do not intend to renew it for them, save your correspondence, and move on...

Comment #27


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

 

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