Got reply to my mail: For sure they cannot prove, otherwise they will do it till now. Well...
The TM application was denied in the US. If they have a TM, it is in Germany. You need to be registered to search their TM site. I didn't feel like doing it. But it appears they themselves are using a Registered mark for their TM. (Nikon, which may be why it was denied in the US).
It does seem like they at least some sort of rights to the name. But you made several mistakes in your correspondance...
1- In TM law, "simialr or CONFUSINGLY similar" is the rule of thumb. A name does not have to be exact to be protected by TM law.
2 - You acknowledge their registered TM, but if you would have looked further, the registration was denied. But by your statements, you are acknowledging their TM status (TM does not have to be registered to be a TM). Never admit to another's TM in correspondance.
3 - You do not state the reason you registered the domain, thus showing you did not have "bad faith" intentions. When I answer letters like this, I never acknowledge thier TM, and I state my reason for registereing the domain and my plans I have for it. (This does come under the "inventing a reason" at times which I thoroughly hate).
4 - Countries will recognize other countries TMs, so they do not have to be registered in a country to have TM status.
The good thing you did was ask for supporting thier TM. If they have one, it would be in Germany. If they don't, then they are miss-using the registered symbol and I would let them knnow that. I have a feeling they don't have a registered mark and like I said, thier TM is based off of Nikon's registered TM. So if anything, Nikon should be coming after you. Another thing that makes me think they do not have a registered mark is on their site, they state they are not affiliated with Nikon and acknowledge Nikon's TMs.
This could be a tactic of bullying and if they do not have a registered mark, they may not be able to fight it on the basis of TM since thier Alleged TM is based from another TM...
I'll keep the advice short here, but responding to emails like this without seeking wise counsel first is almost always a mistake..
Your email in response to their first almost certainly hurt your overall position if push does come to shove..
Here's to hoping for an amicable conclusion..
As DNQuest and IAAS already noted, your biggest mistake was acknowledging their TM and your infringment. Never, never, ever, admit to anything until you have spoken with a lawyer. Your rights to the domain may be irreparably harmed due to your response. I'd fight this guy tooth and nail just because he sounds like a jackass (a bad case of the pot calling the kettle black). Best of luck with your fight...
(server too busy message...yikes).
Very interesting read. Good information to know.
(especially for us "noobs").
Thanks for sharing..
Hmmm, it appears they're not requesting the domain name to be transferred.
To them. Just cancel it...
What use would you have for the word "Nikonian" that didn't infringe on their use anyway?.
It's not like the domain was "chips.eu", nikonian seems to be quite specific (And which you seemed to have missed the meaning of in the above...?) http://en.wikipedia.org/wiki/Nikonian.
I could not have put that any better myself..
Good sound advice there mate...
I searched the OAMI for you (no result).
Benelux,Europe and International Trademarks (no result).
Madrid Protocol ( no result)..
Sounds like a bloody nickname LOL.
I cannot see a TM issue with that but you still should not have acknowledged the email mate.
I doubt very very much that they have a case against you.
Not even a camera case..
Sorry to be off topic, but this had me ROFLMAO...
Yo no se por que?.
Why, robertjr, why?.
I had to read it four times to be sure it was not "I A$$" So, I got me laughing.
OK....It's late and I need some sleep...
Well, using the source you provide us with: First of all Nikonian refer to people who enjoy taking photos using Nikon brand. Period. Like it says this word is common on photo websites. And finally it ALSO refers to Nikonians Org. The keyword here is ALSO.
I am photographer who use Nikon gear and belong to the polish nikon user group (nikon.org.pl). So I can say I am the Nikonian. That's why I like to use this name for my site.
Ok... So I use Google. Can I carte blanche register "googler.com" or "igoogle.com" ? (Answer: "no").
Or, I used to work for McDonalds (That was fun!), should I be able to register and park McDonaldsEmployee.com or McEmployee.com ?
Sure, maybe some of those I could, but being a member of a group does not give one the freedom to use that groups branded name without restriction..
My examples above may not be the best, but I'm sure folks can think of others.
As I suspected, they do not have a registered mark and are erronously using the mark illegally. Thought they are trying to establish a TM, registration was denied in the US. I assume Nikon may have had a say in the matter. The problem here is Nokin is the TM holder and they are allowing Nikonian to use thier TM. But I do not know if that gives Nikonian legal leverage. This one is interesting.....
Other than the advice already given I would basically ignore them from now and not even acknowledge them. I think it will be difficult for them. Possibly change registrars and add whois protection...even place the domain under fake information ownership. Yeah that's a bit grey to do but imho an eye for an eye and what they are pulling is some crap too. Best protection is to get down in the mud with them and fight it out. I think you have a good chance of keeping the domain if you keep your head down.
Basically you made an error by not consulting a lawyer first...
Thank you all for support and your time. I hope it will not be so difficult to manage this situation. Thank you once more!.
Our guy didn't admit to anything, legally speaking. Here's what he said in the area in question: "I did not mean to infringe any of your trademarks law concerning Nikonians.org property. Before I have registerd my domain name I did search several trademark databases and did not find what you say.".
First he states that he carries no intent to infringe, then he demands that they prove said infringement in light of his finding none, based on his trademark search.
That's hardly an example of acknowledging trademark ownership by the opposition and admitting wrongdoing regarding it.
(Another thought might be that he could instead avoid the international hassle and just switch to Pentax.)..
Actually, his opening statement shows he is apologizing for infringing...
I'm not giving advice, as much as commenting on what a few said above. You'll get alot of opinions, but the only ones that really matter in the end are the two parties fighting over the domain and their determination (some battles go to panels, then court, and back again forever - albeit, this is rare and takes money and determination). DNQuest.com:.
Well thought out, and well spoken advice! Change registrars and add whois protection? Labrocca, I am totally shocked you would think of advicing that one If it ever got to court, or especially to of any ICANN arbitration panels, this would be the ultimate proof of "bad faith" to do that now, considering they have already exchange correspondence. Folks can argue up and down about rather what he said in the emails is or is not neccessarily good or bad, legally speaking. However, an ICANN arbitrator (where this would end-up, assuming wizja isn't willing or can't hire a lawyer to fight this in court instead), wouldn't see it that way. The arbitration panels do not work off of the rules/concept "beyond all resonable doubt". They can judge "bad faith" without having to show or even claim it was a violation of any one nation's laws (is very subjective, and many of these panel members like to make the point). wizja: Best of luck to you. Do, please keep us up-to-date on this...
You refer to the "did not mean" part? I'd submit that such verbiage is also part of most disclaimers that use "do not seek to, or imply in any way" and "similarities to any persons living or dead, is not intended" language.
(Granted, I personally would not have used any language in an email which might sound like "I'm sorry" in any way, shape or form for something I contend that I didn't do. But in itself, it's not an admittance of guilt.)..
Yea, unfortunately, he did use that verbage and it will be used against him. As I have always stated, when you answer C+Ds, just stick to the points only. Never acknowledge a TM, never apologize, never, ask for money, always say why you regged the domain and your plans for it and that's all...
True, especially the money part of that. I forget where I just saw it, but a poster on another thread recently said something like "it should be okay if my domain name just redirects to a 'for sale' page, right?".
Actually, WRONG! It would be a complete disaster - putting the spotlight on him as an unrepentant scammer, whose "business" exists to sell the names of others, and for no other reason...