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GoDaddy service : Advise I buy GoDaddy?? Just Got a huge Legal Email about Trademarked Name

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I have a site I built and is online but apprently the name is a huge company and not been from the USA (Australia) I had not even known about this. I got an email with a lenthy PDF which out lines all this legal mumbo jumbo, the company history and lots more plus loads of other rubbish and accusations. They have accused me of some things I never done as well plus they said that they contacted registerfly as I used to have Protectfly on but I never herd from them. They said I have until March 8th to transfer the doamin to them. I'm happy to do that but I sent an email back like this:.

Hello,.

Ok, I never received any notice from Registerfly.com and I have not known about the trade mark or have I tried to deceive my visitors like you have made out. A lot of what you have accused me of is a load of rubbish.

Besides all that I'm willing to transfer the domain name over to your company and stop using the name altogether but I would expect some sort of compensation for this. I have spent a lot of time on building the website and the promotion I have put into the website. Can you please tell me what you can offer to cover my costs.

{contact details here}..

Comments (83)

Have you checked the company out online? I personally wouldn't respond to this email. The last time I checked it's very hard to prove that you got an email in court. Unless it's a certified letter, I would ignore it and consider it a scam. How do you know it's from a reputable source? If you feel that it is a real concern, Tell them you will only accept certified letters concerning this matter and all matter will be discussed with your lawyers. (if you don't have a lawyer, don't sweat it..... they don't know that)..

Comment #1

Like navigator says I'd do a lot more checking before responding - any reason why you haven't says which huge company it is ? Is your site a .com ? Or have they got the .com and you've got the .oz or .net or something ?

Comment #2

My 2 cents,.

Never, ever reply to an email like that before seeking advice from experienced members in a forum like namepros.

But since you did that upfront(in a not professional manner like alot guys here would agree) let me ask you a couple of questions about the situation, it will help more experienced members here(hi dnquest), to see the facts about your issue:.

1.Is your site related to their business?.

2.Have you checked if they posess all other xtensions for their business?.

3.How long have you posessed this domain(if longer than they have their TM, than you could have a better chance, if you really have different content/ business approach, but I am not that experienced ).

4.Do you have a lot of founds to fight a legal battle? <importante :-).

I think you did a bad thing with answer their email, it was probably a scare tactic from them.....but what do I know?.

Good luck, I pass on to anybody with more experience :-).

Cheers,.

Frank..

Comment #3

Do research before you send a reply. I have to say you made a big mistake by doing this. Good luck ...

Comment #4

Ok, well it's too late now the email was sent and besides I don't want to make this into a big legal battle, I just want some $$ for the domain & I'm happy. it's really not such a big deal as I can easily change the website name to something else but it does have a small page rank and 2k pages indexed in google so I would like some compensation from them. I wouldn't lose any sleep over it put it that way if I give it to them which I intend to do before the 8th of march as they requested but as long as I get some compensation from them first.

I also see on Sedo where I have many of my domains listed for sale or parked. my domain was parked there and when I put the site online I never took it off sedo but Sedo have taken it off my account due to a copyright complaint as well.

I would be happy if they pay me for my costs to develop the website. I would also 301 the website shortly to another domain so I hope to have it all redirected and picked up by Google etc before I did change the domain over to them.

I do think the email is legit and I have no doubt about that.

As for these questions:.

1.Is your site related to their business?.

Yes I guess so.

2.Have you checked if they posess all other xtensions for their business?.

No.

3.How long have you posessed this domain(if longer than they have their TM, than you could have a better chance, if you really have different content/ business approach, but I am not that experienced ).

I'm sure they have been in business for a lot longer than the year or so I have had the domain.

4.Do you have a lot of funds to fight a legal battle? <importante :-).

No..

Comment #5

Tell them to give you $1200. If they don't - don't worry. They have to spend more than $1200 to start a WIPO and definetely more for lawyers. So if they don't give you $1200 for this domain, then they won't start a legal suit against you either...

Comment #6

Yeah, $1200 would be about what I would expect anyway - Well I was thinking of asking for 2-5 k but anything over 1k I would be happy with..

Comment #7

Choose a dollar-figure you'd be happy with, because not only is the domain a different term than the TM, but the term is generic enough to not worry about a dispute IMHO. There are several US trademarks for the term "24 Hour Fitness" and no trademarks for "24 Hr Fitness".

They will lose if a dispute is filed...

Comment #8

They've been around for a long time, that's the gym that I go to.

Your domain is definitely infringing, even though not intentionally. You can try to get some money for it, but if I were in your situation, I would just give it up...

Comment #9

Still close enough to cause headache.

Like CFguru said, try to get out with an offer that's below their legal costs, roughly $1200-1500 should easily be on the safe side...

Comment #10

Ok thanks for the advice, I will wait to hear back from them & will update here when I do......

Comment #11

My only 2 cents is that I don't believe you are infringing unless you offer gym and/or workout facilities for a fee. I mean, that's the business they are in, isn't it?..

Comment #12

Hmmmm, that's interesting..... the OP is operating a website about fitness supplies, where you can order your weight lifting products, treadmills and everything related.....on the other site the complainant is a FITNESS CLUB!.

Maybe it is just me, that sounds really intriging but there is one problem with onewordonly's answer about the time of the ownership ("I'm sure they have been in business for a lot longer than the year or so I have had the domain").

Could be used against you mate.....

On the other site...are they from aussie and you are from USA or viseversa?....could be also speaking in your favor.....

Let us know :-).

Cheers,.

Frank..

Comment #13

First, before you reply to any correspondence, always research and verify the information given to you, separate the fiction from the non-fiction (you also need to do it in the legal section too because too many people don't have a clue. They think they are helping, but in reality, they can help make the situation worse).

Once you verify the information and have all the facts (and not opinions or personal beliefs), the you respond professionally and with a cause. Unfortunately, your response is basically a classic old cybersquatter response (and I believe you could have fought this one), "pay me money and it's yours". Maybe they bite, maybe they won't. It is the "maybe they don't" you need to worry about. Your email could be used against you and you could be labeled a cybersquatter. Now what is more costly, $1500.00 filing fee, or your reputation as a domainer.

Anyway, you need to use your head whenever you receive correspondence, and yes, email is a valid form of correspondence, and yes, emails can be tracked, and yes, they can be used in the court of law to prove the emails were read. I know this from first hand experience. As a refresher, a C+D is simply communication to let you of your wrong doing and they are asking you to stop it. It doesn't have to be certified, it doesn't have to be all official and lawyer like, heck, it doesn't even need to come from a lawyer.

Like I said, I think you can fight this one since it is descriptive in nature, but your response may hurt you. How strongly do you feel about the domain and what type of revenue does it bring in. You need to weigh these and decide your own risk/reward factor...

Comment #14

Couldn't they just spend the $$$$ for a WIPO and their lawyers and should they WIN claim these financial amounts back from you?.

Or can these amounts spend not be claimed from you in court?.

I mean it's easy to say they have to spend more but if they feel they can win they can probably sue you for financial damages afterwards..

So there is nothing to lose for them in the end but there is for you?.

Just wondering.....

Comment #15

I will go even further. Ask a lawyer..

Most of the advice you can get here is not qualified legal expertise (unless it's coming from dnquest, as usual he is one of the few who seems to know what he is talking about)..

There is a lot of bad advice in this thread too. Honestly I very much doubt so... Besides just because there is no TM filed with the USPTO does not mean they do not have any rights or TM protections. Also there are TMs at state/international level..

Suffice it to say, the name is confusingly similar. Issue #1..

What's more, the site is related to roughly the same industry. Issue #2. That is bad advice. Actually that's the kind of behaviour that gives us a bad press..

By doing so you fit the definition of cybersquatter. Basically this amounts to blackmail.

Actually there is a potential risk of WIPO being initiated by the complainant even if it's not the cheapest and most likely route.

I see 2 possible reasons:Some lawyers are hell-bent and will be happy to crush people that they deem to be arrogant... For a large company it is an opportunity to publicize their brand policy and make an example out of a poor guy... some large companies are used to WIPO, even for frivolous/abusive claims.

WIPO is not the only option available to them..

They can also resort to the traditional court system.

Bottom line:.

You have a TM issue..

You have more to lose than they..

I would shut down the site with a polite explanation and not seek any compensation of any kind (remember this could be used against you later to establish bad faith)..

Good luck...

Comment #16

Ok well I will have to think about all this, I will see if I get a response from them with my email I sent too. As for the question about the country, I live in Australia yes, the website is hosted in the USA though.

As for the money question, I have not made much .. I would have to check my records but roughly about 5 products sold and small adsense profits. I've never promoted it. It's just one of a number of sites I own that turn over a small revenue that all add up to be enough to give me an income...

Comment #17

Your problem is not that you are competing in the same industry, it's just that the domain is confusingly similar to theirs..

Your domain in itself is not worth a lot. It's a hyphenated .info. They do not really care about the domain, they are concerned about you taking advantage of their brand name (parasitism).

The value of your site stems from development. You can keep your site but I would suggest to quickly find another (stronger) domain with no TM issues and rebrand the site entirely. Keep the contents but remove any references or similarities with 24 Hr Fitness and you'll be fine...

Comment #18

Their name is 3 generic words - do they have worldwide rights on these words or anything similar ? Sounds a bit far-fetched to me. Also, surely they would have to prove bad faith ? This guy was attacked for registering pig.com but won - http://domains.adrforum.com/domains/...ons/843597.htm..

Comment #19

Sdsinc, thank you for the kind words, but I am not a lawyer. Just want to clear that up. There are some very good lawyers here though that do chime in from time to time. I just try to help by being objective with no BS. So what you get here are opinions and not true legal advise. Though some opinions can be similar to what you may get from retained legal advice.

In TM law, "24 hour fitness" is not generic.. hmm doing some basic research, started in 1983, 370 locations worldwide and 3,000,000 members.... I think they can show TM status, what do you think?.

As far as the problem here, the confusingly similar domain is in the same catagory as TM holder (fitness). Then send a not so well written email. It does look a little bleak. I guess at this point you have 2 options, wait for a reply or be proactive and send a follow up email, this time not as harsh and maybe more amicable...

Comment #20

They have written back but have "CONFIDENTIAL COMMUNICATION FOR SETTLEMENT PURPOSES ONLY" at the top so I can't post the entire letter here but they offered less than $10 for my domain name.

They said something along the lines of NOT been willing to reimburse me for the costs to develop my website, particularly as your website uses, without authorization, trademarks.

They said they appreciate my willingness to work with them and they look forward to reaching a resolution etc.

I would like to write back to them and ask for the costs I would want back, can someone help with this?.

My girlfriend would give me the money if I had to fight it as well although it would not be what I would really want to do...

Comment #21

Realistically speaking, the most they're going to do is file a UDRP, which if you are willing to give up the domain, then you just wait for notice about the UDRP of the case and then transfer the domain. Make them pay the $1000+ to file one before you transfer it if they want to play that way. Technically they could come after you in civil court, but the chances of that happening are slim. It doesn't make a difference what category of business they are operating in, because 24 Hour Fitness is descriptive, I'm not sure how someone could claim it's not.

I agree with what others have said about your initial response being totally crippling if you had wished to fight this. But you don't seem too eager to go all out battle-mode for it, so I wouldn't worry about it. Either drop the domain and wash your hands of all of it now, or hold onto it to see if they want it bad enough to cough up the money to file a UDRP. My guess is that they don't and this is just a scare tactic...

Comment #22

The first thing is to verify that they are who they say they are. How do you know they aren't scam artists trying to get your domain? Ask for the phone# where they can be reached so you may discuss this further. Let them know you aren't going to settle this over an email, if the name is something you intend to keep, let them now this too. The worse they can do is file a claim against you. If I remember correctly, you are in Australia, it's going to cost them a small fortune to persue you on the other side of the globe..

Think of what Donald Trump would do?.

You should post the letter on this site.

Since when does somebody typing "CONFIDENTIAL COMMUNICATION FOR SETTLEMENT PURPOSES ONLY" mean you can't share it with the whole World Wide Web?.

I'm hating the world today!..

Comment #23

Words of wisdom there, folks. You'd be a fool not to heed that. If you're seriously asking for advice, get a lawyer who's versed in this. Asking.

Advice from a forum consisting of non-lawyers is a likely way of shooting your.

Own foot.

But if anyone answers that question, it's your call. Good luck making the right.

Decision. Is hating the world going to help you get to where you want to be?..

Comment #24

No hating the world isn't getting me where I want to go but right now sitting in my office winding down from a horrible day it feels much better to hate the world than to love it. I'm normally a very very happy positive person who loves the world and most everybody in it. It's just today isn't one of those days. Therefore I hate the world today. It's really quite simple, some days I hate the world, most days I love the world...

Comment #25

I hear you. I used to feel the same way, until I decided to do something about.

How I view the world.

It's made me sleep better since then...

Comment #26

Hey here's a breakdown about my day:.

My cat hasn't eaten for 3 days and ended up having major surgery to remove 6 inches of his intestines today, He may not make it through the night.

I hate the dentist and i'm going to the dentist tomorrow to have oral surgery which should take me out of commision for 2-3 days. Yipppeee.

I wanted to be home tonight to comfort my wife about our cat and got stuck at a clients business, 150 miles from the office, I should have been out of work at 4m but didn't get home till 8m. (It turns out the client didn't actually need us).

It's been about 20 degrees outside for the last month and It takes it's toll..

My car heater sucks!.

I guess I could see the silver lining but at least for rigth now. I hate the world...

Comment #27

Nav, I appreciate yor feedback but please take your discussion about your cat to another thread , thanks.

I'm going to type a draft letter later and post a copy here for members to dissect and give feedback on. I don't want to start paying for lawyers. I will ask for about $1200 and if they don't pay it then I will wait to see if they take it further....

Comment #28

Sorry bout' hijacking the thread..

We'll get back to the subject at hand..

Always put the ball in their court.

You own the domain, they don't..... Make them work for it.

Goodluck..

Comment #29

Briman joins in the off-topic avalanche... At least you don't have a kidney disorder. Send the letter via snail-mail and ask them to call you after they receive it. Tell them you will no longer be corresponding via email. As Nav said, put the ball in their court...

Comment #30

I agree with Briman on the snail mail idea and would even pay extra to have the letter certified and signed for as this type of mail usually holds up the best in legal cases...

Comment #31

Ok, the smail mail idea does sound great, I will get the draft soon and let you guys have a look.....

Comment #32

How can you hate the world? The world is innocent, it's these damned humans that are ruining it Yeah, I'm a rather misanthropic person, but I still manage to sleep like a baby...

Comment #33

Some notes:.

1) The old "Ask for $1,200 because it costs them more to file a UDRP claim" only works if the individual making the decision on how to proceed is the one that bares the cost - and in large companies, that's usually not the case. Not saying it won't work (You could have listed at Sedo for $9,999 and they'll view your move downward as a good enough concession)..

2) Confusingly similar. While UDRP is not US TM law, they rely on it almost to exclusion of all other. Do you honestly believe that your domain name is not confusingly similar to their TM?.

ALWAYS fall back to the 3 factors:.

1) Do they have TM interest? (In this case, looks like "yup").

2) Did you have any legitimate interest? (Parking can or can not, but usually "can" when the domain is incredibly generic - like "PIG.com" from recent discussions, and otherwise "can not" tends to dominate.).

3) Registered and are using in bad faith? (If you've got it parked that's is usually enough for at least one competing ad to appear and the panelist to side for the complainant.).

I'm working on a position paper that I'm going to shop to a few journals about how the UDRP system is weighted so heavily in favor of the complainant that the legitimate claims still get viewed with an unhealthy level of skepticism. (In short: All the panelists money is dependent on complainants filing with their arbitration service, and to get panelists to file rather than buy from the domain owner, they need to have a reasonable chance of succeeding... There can be no greater conflict of interest, ).

All of the above is not advice but is for informational use only.

-Allan..

Comment #34

A lawyer is good advice, but I am conviced that most lawyers, judges and even domain professionals are not aware of the basic principles of property any longer..

I have seen so many stupid off-topic statements accepted in disputes as valid law/regulation while it could not be found anywhere.

It is really necessary to consult people who are active in the domain field, and take what is useful to Your lawyer. Some people on forums do have lost or won domain disputes. That is what domains are for: Not to say "Mind Your own business" but to exchange information.

Do not ever take everything said by professionals for evident: Many amateurs are longer and better busy than some professionals.

You own something if You got it legally. Legally, means in the first place that You did not take it from someone else. Then, there is the principle of "Who comes first is served first.".

In any dispute, the rule is that the complaignant must prove at least guilt on the side of the other party. In UDRP it is exactly the same.

If one domain holder mainly uses the domain for a fitness related web and another domain holder uses that domain with another extension for a drug or fitness/wellness-enhancing product, then it depends if there is any trademark and for who and for in what counties.

I would not answer anything unless it comes from a lawyer, a law enforcement office or the UDRP officials...

Comment #35

Allaroundguy, the first mistake is that you think you outright "own" a domain. All domains are bound by TOS. Violation of the TOS will cause you to lose the domain. As far as "rights" to a domian on a first come first served basis is ONLY valid as long as it is not proven that you violated the TOS. Plus, domain are not legally concidered property. Even if you own land, if you do not pay taxes on it, you will lose it.

As far as this issue, don't you think they are both related to personal fitness? and yes, 24 Hour Fitness has a TM.. it even has a registered mark,no question there. A simply inquiry would have told you that.

Allan... surely you are not suggesting the domaining business is looked down upon, are you? when I say that, I receive holy hell lol..

Comment #36

24 hour fitness is descriptive alright and from reading there austrailian tm application thats exactly what they thought 2.... http://www.ipaustralia.gov.au/pdfs/t...ngs/788963.pdf.

Your response was a shot in the foot though......

Comment #37

They don't own the domain, but they do own the trademark. From everything that I've seen, they certainly do have a right to the name, and in the end they will get it, the only variable is the amount of hassle that you're going to have to go through.

The domain has no value to them, they're just protecting their trademark, so I doubt that they're going to give you $1200 for it...

Comment #38

Ok here is my draft letter I propose to send by snail mail, please post your opinions and feedback on your thoughts on this:..

Comment #39

The letter doesn't come off to me as being very professional..

One thing that I noticed: They have no interest in the domain name itself, nor do they in the content. All that they are interested in is protecting and enforcing their trademarks. They would have no reason to register the domain before you did, nor would they to do so in any TLDs or ccTLDs, because they have no use for those domains, and it wouldn't be practical for them to register every variation of all of their trademarks in every single domain extension. However, since you did register that name, it is their responsibility as the trademark holder to protect and enforce their trademark. It has nothing to do with bullying you, nor anything to do with your website itself, but has everything to do with enforcing their trademark. Its that simple...

Comment #40

You need to change the overall tone of the letter. You are basically inviting them to a legal battle. This can turn ugly real quick. It doesn't matter if you feel you are right. Lawyers have a reputation for being experts at bleeding a person dry before they ever get to court. I would be a little more polite and to the point.

Also, don't tell them that they should've registered the name before you did. This is insulting and makes you look like an arrogant cybersquatter. It doesn't help your argument at all. There is no company (that I know of) that follows the policy of registering every possible combination of their TM so they won't have to defend it in the future. TM holder's are required to defend their marks to keep them valid. You could be just the person they are looking to make an example of...

Comment #41

Frankly I don't know why the OP bothered to write and post the letter here to.

Get feedback from laypeople rather than seek professional legal advice. Sure it.

Costs money, but s/he might end up paying more if s/he screws this one up.

Tell you what: if you're not willing to pay for qualified legal help, then have a.

Look at the link below: http://www.internetjustice.org/..

Comment #42

Hello Dave,.

That was really nice of you to post this link, it might help others as well..

But....the OP don't want any help or advice, you see it in his letter..After the responses here from all of us... he is still ignorant, sellfish and is the one who feeds the negative opinions about domainers.

(I think everybody is waisting their time).

Soon we will see this case popping up on the national arbitration forum, I bet.

Just my 2 cents.

Frank..

Comment #43

Onewordonly:.

The tone of your letter is wrong and you are the one that is being insulting IMHO. The wording of your letter sounds borderline paranoid..

You are inviting a legal battle (or UDRP to the least) for a domain that is not worth it..

Remember that they don't care about your domain, they care about the confusion with their brand. They are NOT going to pay for that domain.

They have a TM. You are clearly infriging on their TM. You are in a bad position. It's a simple as that..

I hold a few TMs myself and I would not hesitate to send a C&D in a similar case..

I can understand your position and I can understand theirs too. But you need to be more realistic. Even though it was not your intention to infringe on their TM when you registered the domain, you effectively did. It is your responsibility as a registrant to make sure that your domain is not going to pose legal problems.

My advice: drop the domain, keep the site, use another (better) domain instead.

If you don't comply they could decide to go the UDRP route..

True, it will cost them $1500. But it will also leave a trail on the Internet (National Arbitration Forum / WIPO) for the whole world to see with your name and details along with the ruling..

This will set a bad precedent and earn you a cybersquatter label. If you have any further similar issues in the future your past will work against you..

IMO you should seriously reconsider your position. Legal advice is helpless without common sense in the first place. You may know the Internet very well but you may lack experience of TM issues.

Also... always remember that everything you say and write can and will be used against you..

Whatever you do always be polite and as moderate as possible. Tip: why not give them a phone call instead..

Good luck...

Comment #44

Onewordonly - my 0.001 cent's worth, I am not a lawyer but I do work with words, your letter comes across as being very unprofessional (e.g. 'crawl back into your hole'). You woiuld do better to get it professionally drafted by a lawyer, it may cost you a bit, but I don't think your letter as it is now will have the desired effect at all. Are there any legal forums or freelance sites where lawyers ply their trade (at elance.com they have a 'legal' section) ?

Comment #45

NO, NO, NO, NO Do not send this letter or anything that even remotely resembles this letter. Why do you feel the need to send them a letter? If they choose to pursue you in court, they can use this letter against you.

Here's what I would do:.

Rent a P.O. Box.

Stop all emails back and forth.

Tell them you will only respond to snail mail correspondence via your P.O. Box.

Consult a lawyer.

Stop trying to turn a potential trademark infringement lawsuit into a quick domain/website sale.

Put the ball in their court..........

Make them take the time to contact you and for the love of God, do not send them this letter.

Goodluck!..

Comment #46

Ok ok ok, as I said this was a draft, (basicaly just some ideas and feelings on this written up quickly ).

I thank you all for your feedback, you are right, I'm coming across in the wrong way. sdsinc, your feedback is great and so is many of the others. I will sleep on this and consider all what is said here and will let you know.

Don't worry I won't be sending them anything until I have this all worked here first...

Comment #47

Ouch! Sending that letter would be like hitting a pit bull dog with a stick....your going to get bit!..

Comment #48

My approach would have been:.

Thanks for informing me of your TM.

I do see how the name could be viewed as confusingly similar to your TM and although I've put hundreds of hours into the site at this location, I will be more than happy to take the site down and transfer the domain to you.

All I ask is that you allow me one week to notify the users of my site that we're moving to a new location at newnoninfringingdomain.com.

Please provide me with your account details at "registrar.com" so I can transfer the domain to your account a week from today.

Regards,.

Your Name Here.

This should give you enough time to move the site, make changes, let users know etc. - so all of your work isn't lost.

Unless you really feel strongly that you have a case and have the resources to fight it..

Why be a hemorrhoid?..

Comment #49

Nice letter GreatDomainz!.

@onewordonly.

Perhaps you can even get more time so you can redirect everything to keep your rankings.

This article can help you out to move from the TM domain to a new domain.

It does take a little while but all pages will be redirected so if you propose this they may be lenient enough to agree with this.

Or perhaps not but you'll never know until you ask right?..

Comment #50

Resorting to traditional court system costs even more than a WIPO, hence the 1.2k.

I think I know quite well on the whole trademark idea, believe me. I believe 1.2k idea is quite good. Either way, thread starter can choose what best suits him/her. Take 1.2k or nothing for a generic domain. Your choice...

Comment #51

All in all get legal advice, though if you are willing to except $1,200 it might be best just to let it go as in drop. Last solicitors letter I had written cost over $3000.

Weighup the odds of winning & loosing and if winning is 1200 dollars well giving up isn`t really that bad.

Sometimes winning is knowing when to give in...

Comment #52

Whatever you decide, keep us posted.

At the very least it could be an ideal example of how to act (or how not to act) in the same.

Circumstances which any domainers here could face.

Imho though, it doesn't seem worth the hassle, especially if any of your future.

Communication with them is anything like the letter you decided not to send...

Comment #53

I think you started out this battle in a strong position, because I still say that 24 Hour Fitness is descriptive and therefore not protected, but you seem to be completely blowing this by opening your mouth. Honestly, if you don't care enough about the situation to do some serious research and formulate an appropriate, professional response, than just drop the domain and be done with it. I also don't agree with others who have said to just hand it over, personally I'd wait to see if they file a UDRP before I made any decisions, because I think it's probably a scare tactic. I dont think their TM is as strong as everyone is making it out to be, as it's clearly descriptive and is being used in conjunction with those services.

Honestly I think you're best response would be no response. Or like I said, go to your registrar and delete the domain...

Comment #54

Normally I'd let it slide, but I've got to point out a few things: However, they still have a TM - so however strongly we feel that it is descriptive and shouldn't have one - it doesn't matter. The UDRP doesn't (Or more accurately "shouldn't") evaluate the legitimacy of TM's, rather the first criteria is whether or not the complainant has TM rights - which they have registered in this case. Just "waiting" could lead to a UDRP, true, which has no direct financial penalty - but it's still something you should try your best to stay away from. And 2, if they are out to make an example of someone, you don't want to be the guy they take to "real" court over a domain name - especially if they are domiciled anywhere that you live/travel/to business. So while it could be just a "scare tactic" , advising someone to "do nothing" (Or worse, as we'll see in a moment, "drop it") is seriously deficient on the "safe course of action" meter. Yet again, doesn't matter what you, or I, think. DELETE THE DOMAIN? I'll take "Top 10 things to piss of a company for $400, Alex".

I get the point, believe me, but we don't know why the company wants the domain. It has been hypothesized that it is purely to protect their TM, and therefore they won't use the domain - but what if they really wanted it, and you're dropping it sends it to domaindoorman or snapnames where it auctions off to our friends in the Caymans? Do you think that recovery against the original owner would be out of the question when the original owner was on notice?.

Ok, mini rant </over>.

Will anything that I say actually happen? Hell if I know. But what I do know is that so much of what is written here will get the OP in MORE trouble (potentially) rather than less. The advice given should usually be limitted to "Call JB", and then give INFORMATION - point them to resources, panel decisions that have come out one way or another - show them specific parts of UDRP or ACPA , and tell them things that could happen based on different courses of action - but advising them to do all manner of inconsistent tasks is counterproductive and ... Well, nevermind.

I've used slip's quotes here, but let me make it clear that's only because he was the last poster before I started this response last night (Norwalk has kept me home for 4 days - and admittedly made me more irritable). I generally like slip's posts - and this is nothing personal against him, just bad timing.

I'm thinking of making a "guidelines" sticky for this forum - something along the lines of "You're going to ask so we might as well give you the location to FIND YOUR OWN ANSWER up front - since so many of the questions come from those who can't, or won't, call an attorney.

-Allan..

Comment #55

I agree with this, but they also have to prove that the respondent is using it in bad faith. If he claims that the domain is descriptive in nature and that he is using it in good faith, then the legitimacy of the company's TM would HAVE to come under evaluation to determine whether or not bad faith is present. And in this case, going on the assumption that he is running a legitimate site and the domain being descriptive, I don't think they could show bad faith, well aside from the glaringly obvious mismanagement of this issue on the OPs part I wouldn't normally recommend this course of action if it was obvious infringement, I'd say transfer the domain and learn your lesson, but like I have stated, I don't think this is obvious infringement and I think the OP had a legitimate chance to defend this, so if I were in the situation, I would do nothing until I got a UDRP, and then at that point, start working on my defense. Maybe I'm unaware of this one. Is it not reasonable to try to rectify an infringement by ceasing the infringement? Is it a law that someone has to transfer the domain? I don't know that one...

Comment #56

And see, that's why I normally like slip's posts.

Good points, all.

Briefly:.

1) Bad faith as it relates to the (possible complainant's - as no UDRP has been filed yet) TM isn't as relevant as the use of the respondent's domain. The use matching a generic/descriptive term is relevant, but it won't be drawn directly from the evaluation of the legitimacy of a TM. We might be saying the same thing - but at this point in the game, the OP shouldn't be focused on whether or not the TM given to the complainant is valid, but rather whether or not he fits the next 2 elements of UDRP - or if he would fall under the factor-test for the ACPA - a much more daunting possibility..

2) Waiting until the UDRP is only good if you will win; in this case: even if the OP hadn't sabotaged himself, he probably wouldn't. Look at usage..

3) The "don't delete" is more a civil procedure parallel - so I could be making the same mistake that I accuse many "would-be" domain attorneys of making. However, this isn't a UDRP yet - and it might not be. The demand letter sought the relief of transfer - and for good reason. The "deletion" is more of the effect of "throwing it up for grabs". I don't know a good analogy (Thank you, phenegren) at the moment, but the only one that comes to mind (And it isn't a good one) is that if you were accused of being in possession of a ill-gotten diamond ring, and before you could be sued you simply threw the ring into the toilet and flushed (And videotaped yourself doing it - as there is proof of action in the domain example) - this wouldn't be a "get out of trouble free" card by any stretch of the imagination. Agreed - the analogy doesn't hold up, and in TM law stopping infringement is key to avoiding punitive, but it isn't the panacea you may think, judging by your response.



-Allan..

Comment #57

Allan, that's an awesome idea, would be very helpful..

Cheers,.

Frank..

Comment #58

I couldn't agree more. OP, the more you try, the worse you are making things. You've dug yourself a hole in which (IMO) you cannot escape.

On another subject, people with no legal training should clearly write it in their posts to qualify their comments.

Disclaimer: Anything I said above should not construed that an attorney/client relationship has been formed. Additionally, as I am not an attorney (yet), you can take what I say with a grain of salt...

Comment #59

The only lawyer that I know who has participated here was JB, and I haven't seen him post in a long time, so I think it's safe to assume that no one here has had legal training... Even if there are lawyers who post on here, legally speaking I dont think they would want you to assume that anything they write is to be construed as legal advice either, because they would risk putting themselves in a bad situation. So instead of every single person in here, including lawyers having disclaimers on all their posts, why not just make a Sticky?..

Comment #60

I'm working on one; but don't think that the forum is "Lawyer-Less" - I know of at least 4 - but for the reasons mentioned here and elsewhere, nobody is in a hurry to:.

A) Provide legal advice based on information gathered from a forum.

B) Give any illusion of attorney/client relationship.

C) Break any ethical rules regarding advertising, etc..

D) Conflict out of good representation at their firms..

-Allan..

Comment #61

Unless stated otherwise nobody here has legal expertise... I thought it was obvious to anyone..

The legal forum is still useful to learn from peers who have often experienced similar issues. Just by reading the threads over here and the WIPO decisions I think I have gained a pretty good idea of what is OK and what is a no-no.....

Comment #62

Your first mistake was replying to their email.

Your second mistake was replying the way you did.

If it goes to UDRP your email response will almost certainly hurt your case.

Also, no-one seems to have pointed out that there's more at stake than the domain and your domainer reputation. They CAN sue you for damages and a successful UDRP case plus an email that clearly states you wanted to 'extort' money from them for the domain won't help.

You should have ignored their email. They couldn't have proven that you received it. If they're serious they'd have filed a UDRP and you'd have been contacted by registered mail. If it were me at this stage I'd kiss their ass, hand over the domain, and seek advice next time before jumping in head first...

Comment #63

Do you know the difference between a TM and a registered mark. They were denied a registered mark, but bet your bottom dollar they have a TM in the fitness field.

Emails can be tracked... I have done it and had it submitted in a court of law and accepted by the judge.. I have also proven it on this forum. so please, don't say emails cannot be tracked...

There is no rule saying they have to have a certified letter.....

Comment #64

Ok I have thought about it, yes I made a mistake by emailing them first up I admit that. What I think I will do is hand it over to them without any $ been requested..

I have a new domain ready to go and I will 301 the website to that.

Now can someone tell me if I should start the 301 right away or should I email them first to let them know my decision and tell them about the 301. I guess they would not know what a 301 is etc.

Also they said in the original document that I have until March the 8th so I want to get the 301 started as soon as I can. I'm a bit worried this won't be enough time, this has taken sometime in the past for a site to be reindexed.

Should I also ask them for some type of statement to declare they won't hassle me anymore after I give them the domain etc?..

Comment #65

I came across this 301 redirect tutorial if that's any help...

Comment #66

You can ask them. But they don't have to do anything for you.

If you insist on fighting this matter, good luck. You're seriously going to need it,.

Especially if you push through with that 301 and the other party in question is.

Documenting your every move...

Comment #67

Heya,.

Don't do the 301 now, tell them first you are willing to do everything in your power to resolve the problem....that should shed a good light on you, show your "good will".....

Good luck,.

Frank.

BTW, I am not a lawyer, I never attended in lawschool, I never watched court TV and I certainly never had a fling with a female lawyer......(but I wish I would have)......

Comment #68

Ok here is my planned next letter to them ( I won't send it yet until a few members here give their feedback etc first):.

Start of letter.

To (Name of Lawyer),.

The 8th of March is not enough time and I would need until the 20th of March to transfer the domain over to (company name inc). Please also supply the details to be used when the domain is transfered. I will start to move this site to a new domain as soon as I hear back and you can confirm the details above.

(my contact details).

End of letter.

Another thing is that I just transfered this domain to Stargate recently as it used to be at Registerfly (it had protectfly on then so that is why they never got to me previously) so I wonder if I can transfer this domain so soon because I know Godaddy don't allow transfer until 60 days if it is recently changed?.

Thanks to everyone who has offered their advice & thoughts, I have read them all and it has helped me make my decisions...

Comment #69

I recommend waiting until after the 8th to see what happens next. but hey that's me and I'm about as far from a lawyer as you can get...

Comment #70

I think that you should be able to 'push' it to another GoDaddy account, but not transfer it out of GD because of the 60 day rule...

Comment #71

Exactly. That's what I did with one of my C&Ds...

Comment #72

DNQ, you have proven to a good degree that you can track emails, not that everyone can..

Also, I can not understand what court would take this as evidence that the the person himself/herself actually read the email..

It could be a shared email account, it could have been read by grandma...etc...etc....

That is why the vast majority of companies in these cases use certified, signed letters.

As for the rest, I agree totally with your posts on this subject...

Comment #73

Seeker, I am just saying people are under the dillusion emails can't be tracked. And yes, they are admissable in court, I have done it. (and for more detail, I did not provide a copy to the other side, I only used it after statements were made that a person was not receiving emails and that they were not forwarding them. It was admitted to attack statements from a witness) I am saying people need to be careful when they do get an email. If it looks like a C+D, DO NOT OPEN IT if you want to plead ignorance. It can be tracked when it is opened.

BTW- yes, it is lying if you get and email and then deny it. In court, it is called purgery..

Comment #74

While that is a word, the one you're looking for is "perjury", methinks.

And when you say it was "admitted as evidence" - it must have been some civil thing with an elected bench who didn't really "admit" it... Divorce or child custody or something? Either that or not in the US -.

Mind you I'm not an expert on hearsay law or authentication, but...

-Allan..

Comment #75

Allan, I'm guessing that the evidence was admitted to attack the witness's credibility and not used for substantive purposes...

Comment #76

Still. how can a received and read email prove that the intended user actually read it and not someone else using his/her computer?.

That is why companies use CERTIFIED letters, which you have to sign for, and in many places provide an ID when signing for it...

Comment #77

You never can prove that someone has read a certified letter. You can only prove that the person or designated representative of that person received the letter. Under the law, ignorance isn't an excuse. You have a duty to read. If you have notice of something, you are expected to read it. Accordingly, emails can be traced and even though you cannot prove an email has been read, you can prove it has been received...

Comment #78

Very good point..

However, up until DNQs post, I had never heard of emails beeing accpeted as tracked and defualted as read..

There are however numerous cases involving letters which are default in court as accepted..

It has nothing to do with ignorance of the law, but all about proof..

Anyhow, I am not a lawyer, and therefore my comments are limited to my knowledge..

And I do know, that at least in most os Europe, emails that have been read by "someone" do not carry the same weight as a letter that has a positive ID that someone has accepted it, and therefore must read it..

The difference beeing, a signed acceptance by (FEDEX for example) is stronger proof, than an email that has been opened on a specified computer email address..

Anyhow, this is as far as I know, so I can't take it further...

Comment #79

Ok to get the thread back on topic.... please start another thread on the legality of email as it is irrelevant to me now.

Why is that when I first wrote here everyone was telling me that I should have shown the email I was to write here first but I have now shown the email I want to send and no one has bothered to offer their advice on it? where are you all now???.

Also with the people mentioning Godaddy, please re read my message, the domain is not registered with Godaddy.

So I want to know if this email I propose to send below would be suitable?.

Start of letter.

To (Name of Lawyer),.

The 8th of March is not enough time and I would need until the 20th of March to transfer the domain over to (company name inc). Please also supply the details to be used when the domain is transfered. I will start to move this site to a new domain as soon as I hear back and you can confirm the details above.

(my contact details).

End of letter..

Comment #80

Hey onewordonly,.

I like that email way better than your emotional driven, first draft :-).

People here saw you mention GD (GoDaddy), for that they thought your domain is at GD, but obviously not....Anyway it should be easy to tell them to open an account at the registrar where it is right now....every Reg. is offering that(maybe not Registerfly anymore, I don't know ) :-).

So, again in my opinion your email is way better and shows that you don't want to fight with them.....But again, what do I know - Good Luck.

Disclaimer:.

I am not a lawyer, I never attended in lawschool, I never watched court TV and I certainly never had a fling with a female lawyer......(but I wish I would have)....

Cheers,.

Frank..

Comment #81

Ok thanks liquid your feedback is appreciated, yes maybe I can mention that. I will send this off to them before tommorrow and hope to get started on the redirection when I hear back from them. If anyone else has anymore feedback to add it is welcome.....

Comment #82

Ugh, if your critique is my speling, then I am in trouble, I mispell all the time. Not due to lack of knowledge, but lack of time when I am on. I try to help. If you want to be technical, I had printed reports on emails sent to my exwife, she denied receiving them. I offered the reports into evidence as defense exhibit #9, The plaintiff attorney objected for nondisclosure, I explained to counter what the plaintiff said under oath, the judge allowed the reports to be submitted as evidence as defense exhibit #9, meaning I can refer to the reports under oath and the Judge can view them as evidence in my case. You may submit evidence all you want, but unless the judge allows the submitted evidence, you cannot use it as a direct reference.

Anything else?.

I am sorry oneword, won't happen again (in this thread). If you show you are willing to be amicable, companies are willing to work with you. But once you make a promise, you should stick to it. Meaning don't keep delaying the date over and over. So start moving your stuff and hopefully it won't affect you too much. Maybe you can ask for more time and use it as part of a negotiation.

This could go a long way. Good Luck.

DISCLAIMER: I am not an English major, so any error is spelling, grammar, or punctuation should not be held against me. Also not retired, so time is precious and I use it for good when possible. I don't have alot of time when online, but I have lots of little blocks of time to get online frequently at times...

Comment #83


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

 

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