Use of a trademark inside a URL is not illegal especially if you are planing a non-competing business or using it for an expression of free speech.
Confusion is a valid concern, but who was confused?.
Just a scare tactic...
Actually, there is not enough information given to form a real opinion...
You have to ask yourself if they are going to sue you or not. Being right may not prevent them from filing against you.
Personally just hearing what you have posted I would think you are in the right here. That's just my view though. That's what I would do. Ignore him. Either make him file and spend the money if he is serious. You can always decide to settle with him afterwards.
Just tread cautiously no matter what you do and I hope you do seek legal counsel...
Not sure the domain is worth seeking legal counsel before it is absolutely required. I make no money from the site and the domain, generally speaking, is worthless to the average domainer. Post added at 08:11 PM Previous post was at 08:08 PM My thought exactly. The guy will not go into specifics and just wants to speak to my attorney. Of course, I never really asked him anything because I do not want to ask or say the wrong thing at this point. I let him do the talking, but it's very little so far.
But the fact that he just wants to speak to my attorney and not me makes me think it is a scare tactic because any lawyer looking for damages loves to speak to the "other" party since they usually always say the "wrong" things when not instructed by legal counsel.[COLOR="Silver"] Post added at 08:13 PM Previous post was at 08:11 PM.
Well, I could possibly give more detail. Just tell me what you are looking for. However, as far as I can see, short of naming real names, I have told everything in detail. I mean, if you need the date adn time the attorney contacted me, I guess I could tell you, but I did not find that relevent LOL.
BTW, I'm not about to name the real domains in question, I wasn't born yesterday. The domains I mentioned are so close to the originals that there is no need for full disclosure of the real domains. Post added at 08:22 PM Previous post was at 08:13 PM Well, actually, use of a TM in a domain or even a URL is illegal much of the time.
But the point is, I don't believe I am using their TM.
Their TM is "StateSchool.com" (with the .com) and my domain is StateSchoolAds.com. My domain merely includes the name of a town which is made up of 2 general dictionary words and then I add another dictionary term that all together signifies "Ads for the town of State School".
If anything, the only people that have any kind of infringement claim against me is the town of State School..
I think you are misinformed somehow to think the use of a TM in a URL is illegal..
Read HERE and you can read at Stanford on this only it is actual use of THE trademark although it was not filed..
Filed or non-files TMs have different legal protections, but the ACPA's intent will usually be interpreted with the intent of the law given heavy weight...
As far as I knew.
Every country have states.
So how in the 1st place were they allowed to register the TM for State Schools ?
I may be wrong as I do not have enough knowledge about this field but.
Shouldn't registering common words be treated as a wrong..
Are you sure the domain is StateSchool.com?.
That domain is a Parked page and regged by Name Media (BuyDomains.com).
The USPTO does not show any registered trademark for State School or StateSchool.com...
State School is an example...like Maine Harvard. Realistically the school has more rights to State School domain than this guy imho.
Maybe you should tell the lawyer you plan on filing a challenge to his mark to have it dismissed. Maybe too bring it to the attention of the school itself...
They did not TM "State School", They TMed "StateSchool.com", big difference. As stated in the thread already, StateSchool.com and State School are examples, but they are very close to the actually town name and domain name in question. The real domain and town name consist of 2 very similar, everyday dictionary terms, & no proper names or nouns involved. Actually, the example you gave isn't correct since my domain, their domain and the town name do not include any proper names. I think what they TMed is perfectly legal. But for them to say I am infringing on their TM is legally incorrect, IMHO, but I could be wrong.
I don't have the money or time to pursue their demise. I just want them to stop pursuing my demise since I think it is 90% clear that they have no basis in their claim against me. Besides, the school would not care because the name does not include any proper names, let alone their own. "State School" or "StateSchool.com" referrs to any state run school, college, university, etc in the whole USA or even the world...
He just sent me another email stating... "There's stil a p-ublic conf!usion issue with your web s|te and my client's TM. Please contact me at nnn-nnn-nnnn, by November 3 about this matter. ".
This is funny because for a lawyer he doesn't seem to have his stuff straight. First he says that my "web address" is causing public confusion. Now he says that there is public confusion with my "web site" and his client's TM.
I'm pretty sure I will just ignore him from this point forward until I get a C&D letter from him via snail mail. I sure as hell am not going to call him. I must have all of his words to me in writing. I will never call him, that's for sure.
I really wish he would go into more detail. This is as much detail as he has ever given me so far. No proof of confusion by the public and no specifics as to how my site or domain is infringing on his client's TM.
I'm still sweating having to hire an attorney to get him off my back, but I am also sort of having fun waiting to see what this guy's next move is and what his exact claims are (and how he figures it).
My guess is that he plans on sending me a C&D letter if I don't call him by Nov 3. Who knows? But we'll find out, I guess. In a situation like this, is he required to to send me a C&D before he files a lawsuit?..
There is no requirement to send a C&D prior to filing a lawsuit. Hiring an attorney would be a tremendous over-reaction. Send him a C&D email letter telling him to cease with harassing you and causing you distress. Call your local city's prosecuting attorney and have a police report done of harassment. Let them stand and read it over your shoulder. The police will give you an official third party that was advised that you consider his actions harassing.
When you send the letter include a police report number and advise him that you consider his repeated communication a harassment. include this image in the HTML email and include it as the period in a sentence like I will. Click the period to view the photo then tell him you included a web beacon and that you will know it was viewed without any reply and that even a reply will be reported as further harassment.
The more he makes you sweat, the more he makes it looks as if you feel guilty. Looking guilty is to be avoided. You need to become aggressive in your "slap-down" of him. Tell him that you have been told by an authority that you have grounds to support a lawsuit for harassment and detrimental reliance and you could seek to recover expenses for your loss. Advise him that any legal action will be considered frivolous and you will reply with a counter-suit. Advise him that you consider UDRP tribunals to be a joke or the current urban legend 'domainers' try to elevate to a court level of justice.
OMG .. disregard everything to this point. I re-read your Original post and I think you in a bad spot..
OMG .. I repeat...Disregard everything to this point. I re-read your original post and I think you in a bad spot.[/I].
I originally thought that you were contacted by a 'domainer' pretending to be an attorney.
He is probably a real attorney and you will probably be sued or at least face a UDRP panel. He is not bluffing. He will contend that you intend to take advantage of their TM to sell ads and are intentionally diluting it and taking advantage of their TM's fame.
A TM holder is almost bound to try to legally protect what they feel is a violation of a TM. A C&D is a prelude to a request for an injunction that they will receive.
You will probably lose before a tribunal. You might win in court, but still you will then have a chance of losing more and paying for the entire action. If I were betting on the jury I would pick 'them' against anyone but me. I might could win, but I am too saturated in TM law at this time. I would not want to risk a loss in this case. No TM attorney will either.
Since they run ads, you are probably going to lose any action in any court. Sorry to have given you a false sense of hope. I assumed that you felt it was a 'domainer' trying to bluff you and did not read your initial post well enough or at all. My advice is to cut your losses with the potentially TM infringing registry and agree to transfer the domain to them. You could use the domain in a non-commercial free speech way. That does not appear to have been your intention.
The local PA will know the phone number is real and will no police officer will file a report of anyone harassing without at least calling the included number.
A C&D is regular support for a request for a preliminary injunction. Refusal to reply via phone or obey a C&D will only support them when they file.
Best of luck...
I'm not an attorney, but think you should be fine so the bigger question is if it's worth your time and money to fight this?.
If someone where to trademark Miami.com, that wouldn't give them a right to every MiamiKeyword.com domain.
Is this town in PA?..
That's exactly my dilemma at this point. I make very little money. The site itself makes me no money. It's all about principle at this point. I would feel very bad if I just took the site down and never found out if I was in the right or not. I'd never for get it. Exactly! Unfortunately, the state in which the town is one detail I am not willing to divulge at this point until this is all over and done with, one way or another...
I am not an attorney, but I did stay in a Holiday Inn Express in State College last night...
Since their trademark is StateSchool.com, I wouldn't think they had a case unless your domain was StateSchool.comAds.com. As a previous poster mentioned, their argument would mean that they had rights to stop every StateSchoolTravel.com, StateSchoolRealEstate.com, and StateSchoolAttorney.com website because they are "confusingly similar" to their trademark.
Toys.com and ToysrUs.com were both TM'ed at the same time as were Pets.com and Petsmart.com. I believe that this is a scare tactic by the site owner and he probably hasn't even consulted an attorney.
Exactly. Again, to clarify, as I stated before, the site owner is not the one that contacted me. The site owner's attorney is the one who is contacting me. I have the attorney's name, phone, and address. This is a legit attorney...
Well then WTF because your example is misleading then. If you think their TM is valid and the TM is not a geo then you are probably infringing.
Can you provide a second example? Maybe something closer to what you actually have.
StateSchool.com imho makes me think of WisconsinUniversity.com. State would be a geo and the school would be TM'd by the actually school. Now I read this...WTF...is the "state" in stateschool a proper name or not?.
Bah...I am out. Good luck OP...
Not being willing to reveal the actual name, even in private, is a major negative here.
Anybody that replies is simply speculating on a supposition over a guess... not a great basis for thought.
Since you are so unwilling to divulge the name, even in private, I submit that you know full well that your domain is a major violation already and any discussion here just feeds your need for drama and wastes everyone else's time.
You want a real opinion? Then stop being so secretive about the name. You don't want it posted in the thread, fine... but not even privately is just stupid...
I have realvead the name in PMs to others. But not you because I do not know you. Sorry. The example I gave is plenty much like the real thing. If I did tell you the real thing, you would kick yourself for not realizing it. If you don't feel it is enough, then you can just skip the thread.
I am not being mean, just saying that I can't appease everyone. Hint:" If you use a thesauraus, you should be able to figure it out. If not, so be it. I cannot jeopardize things because I don't want to anger certain people. I wasn't born just yesterday.
Thanks to everyone that has had the patience thus far. I appreciate it. Post added at 03:15 PM Previous post was at 03:14 PM.
[/COLOR]Sorry, I did not mean to anger you. Please don't be angry. Not worth it...
There is not one single post here from anyone that is NOT having to "guess" the name, so gotta call BS on that one.
Your latest derogatory comments towards two members that could actually give you a real opinion are equally absurd too.
Which brings us back to my earlier statement, I submit that you know full well that your domain is a major violation already and any discussion here just feeds your need for drama and wastes everyone else's time.... something clearly closer to the truth, judging from your last comments...
I clearly stated that I did not wish to anger anyone.
Those that I have revealed the true domains to and those that have "figured it out" know what is going on here. I mean, with your attitide (even your first post) how could I trust you. You are clearly an instigator and therefore I will hav eto ignore you (too bad this forum does not have an ignore function, or at least I have no found it). You bring no value ot this thread. Just instigating hatred. Post added at 06:13 PM Previous post was at 05:49 PM Labrocca,.
I cannot give a more closer example. I'm practically giving it away. but again, if I did reveal the real domains, you would see that there was no reason to have done so since the made up ones serve the same purpose. They are exactly the same. The words in the real domains and the words in the fake ones are synonymous and are both made up of general dictionary, non-proper words that, together, also happen to be the name of a town.
Please don't be angered if you do not like the fact that I will not divulge the real domains. Just walk away. I know from the past that you could provide some good info on this thread, but I just cant accommodate everyone. I refuse to display domains on text on threads that are of a legal nature. That is foolish to do. Some things have to be changed to protect the innocent and to not cause further issues with opposing parties.
I assure you, this is very real and my examples are as close as can be and could not be more similar.
Please have a good night (or day, wherever you are in the world).
Actually, here are some more examples for those that deem it necessary and helpful...
Name of city: snack cracker.
Name of TM domain: SnackCracker.com.
Name of my domain: SnackCrackerClassifieds.com.
Name of city: Dirty Dishes.
Name of TM domain: DirtyDishes.com.
Name of my domain: DirtyDishesAds.com.
Name of city: Coal Miner.
Name of TM domain: CoalMiner.com.
Name of my domain: CoalMinerWantAds.com.
Name of city: Happy Dogs.
Name of TM domain: HappyDogs.com.
Name of my domain: HappyDogsAdPost.com.
Name of city: Dirty Feet.
Name of TM domain: DirtyFeet.com.
Name of my domain: DirtyFeetList.com.
Name of city: County Seat.
Name of TM domain: CountySeat.com.
Name of my domain: CountySeatWantAds.com.
Name of city: State Hopsital.
Name of TM domain: StateHospital.com.
Name of my domain: StateHospitalPost.com.
Name of city: Falling Walters.
Name of TM domain: FallingWaters.com.
Name of my domain: FallingWatersAds.com.
I hope this sheds some more light. If not, not much more I can do. I can't be more clear. My original examples were the mest, that why I chose them. They are very close. These others are not so close, but just have the same qualities...
My first post to this thread: Yeah, that obviously makes me suspect... Whatever.
What you are failing to recognize is that there are a few members here that have actually tried to help you that you have copped an attitude towards, myself included. If you bothered to do any due diligence before deciding we were all somehow "untrustworthy" you'd find out we may have more experience than most with things like this... and we made an effort to help you.
Obviously, you don't like any real objective opinion that may or may not be contrary to the position you are trying to push so you cop an attitude... again, only reinforcing the appearance that I've already described.
As far as bringing value to this thread, the only way anyone could possibly do that is without having to play the childish guessing games you are so keen on... anything else is without foundation.....
Here's a thought .. Consult a lawyer, (a few on this and other forums) who wouldn't mind giving you a 'yep' or a 'insert choice word here'..
Just an update, the atty harassing me threatened to file a UDRP a couple of weeks after I posted this thread. I simply replied, "Go ahead and waste your money, you will not win and any lawyer that knows anything about these issues would know that and would have never harrassed me in the first place. It's your client's money and your time at stake...do what you want.".
Since then, I have not heard from him nor have I received anything in the mail or otherwise stating that he has filed a UDRP against me or my domain.
Looks like the guy was just trying to scare me into taking down my site and/or handing the domain over to him and his client...
Just check maybe WIPO or NAF in...what, two weeks? By then you'll at least see if they indeed filed a.
In modern US TM law "state school" is way too generic as long as you're not clearly using their good name, colors, logos, etc.
In most forms of law, the truth is your shield. In TM law, blandness is...
4+ months later and you think I still have to watch WIPO and NAF? How long does it take, after a dispute is filed, to contact me for rebuttal or whatnot? I think 4+months seems a long time. But maybe you're right. I will continue to watch WIPO and NAF. But I won't lose sleep over it...
He can file a UDRP at any time. Like the Sword of Damacles hanging over your head. But they will notify you if he files, so you shouldn't worry overly about that.
What does the TradeMark actually say. What is it that he has actually TradeMarked? If you are not infringeing on his TradeMark, then they have a weak case. But if they have a trademark for selling online ads in a particular location, and you are doing the same with your StateSchoolAds.com, then you are clearly infringing.
If you want my opinion on the facts we have, you created StateSchoolAds.com exactly to compete in the same area of business they operate in. Clearly bad faith registration, and you will lose the UDRP arbitration...
Thanks for your input.
I realize that one can file UDRP at any time. But my question was, once one files UDRP, how long does it take the other party to get official notice in the mail?.
No need to anser, though, we'll just have to wait and see. Thread unofficially closed till that time, I guess...