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Subject:
Domain Dispute
Category: Computers Asked by: azuser411-ga List Price: $10.00 |
Posted:
01 Nov 2004 20:43 PST
Expires: 01 Dec 2004 20:43 PST Question ID: 423272 |
I own a domain that I have had for over 18 months. I was just recently sent a "cease and desist" letter claiming I have infringed on a US trademark from an Internet company. To protect all parties - This example will be fictitious. Ex. The company name is etrade.com. They sent me faxes stating they trademarked that name plus etrade and etradestocks My domain is e-tradecentral.com. I am an affiliate site focusing on financial services, but have nothing to do with online stock trading. I do not state anywhere on my site that I am affiliated with their site. My Question: -Do I have a good chance to keep the name (I have spent a good amount of time increasing the rank via SEO work)? -If I change the content of my site to state EC (rather than Etradecentral)- would that be sufficient? -What other remedies are possible if neither of the above work? -What advice would you give on how to handle this matter? Thank you, |
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There is no answer at this time. |
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Subject:
Re: Domain Dispute
From: mahousu-ga on 02 Nov 2004 08:26 PST |
First of all, you need legal advice, which cannot be provided through something like Google Answers. You really need to consult a lawyer with experience in this area. You might try your local bar association, or possibly the Electronic Frontier Foundation (www.eff.org) for leads, though I think this is a little outside of what EFF normally deals with. Secondly, as a purely non-legal outside observer, I will say that domain name disputes like these seem to be quite common, and a common settlement seems to be that you add a disclaimer to your home page saying you are not affiliated with the other site, plus a convenience link redirecting those who came to your site in error. |
Subject:
Re: Domain Dispute
From: ipfan-ga on 03 Nov 2004 13:50 PST |
This is a very fact-sensitive inquiry. Did you register your domain name before or after the other company began using their name as a trademark? If after, why did you appropriate a domain name that is similar to someone else's trademark? If before, you should have better rights to the domain unless you simply registered it and were not actually using it as a trademark. Trademark law says, generally, that "first in time is first in right." Mere registration of a domain name is not sufficient to accrue use in the name as a trademark for purposes of winning a fight over the domain--you have to actually use the domain name as a mark to build up rights. Here are some examples: Assume I registered bloxnall.com on October 1, 2003. Then, on March 15, 2004, I began using the word "bloxnall" as a trademark for my particular brand of golf clubs. I then get a letter from the owners of the trademark "bloxnell," who have been using that as a trademark for their brand of golf shoes since April 1, 2004. You win, since you have priority of TM use (March 15 versus April 1). But if the owners of the bloxnell mark show actual trademark use on December 1, 2003, then you lose because mere registration of a domain is not the same as trademark use (December 1 versus March 15). See the EPIX case at http://caselaw.lp.findlaw.com/data2/circs/9th/0135144p.pdf So--when did you start using the domain as a trademark and was it before or after the company who sent you the cease and desist began using their mark? If after, then your best hope is to make an argument under traditional trademark law that your use is not infringing. This assumes you are actually using the domain as a trademark. For example, if I register bloxnall.com but all I ever do with it is use the site to sell golf carts and I never sell ?Bloxnall-brand? golf carts, I have not used bloxnall.com as a trademark for golf carts and I have no rights to stop someone else from selling Bloxnall-brand golf carts?I have no TM rights in the name. |
Subject:
Re: Domain Dispute
From: actkid-ga on 03 Nov 2004 19:16 PST |
Yes you are intitiled to keeping your domain name. Why? Because it seems that you have a contract with this domain name company. What they are doing is called, breech in contract, you could sue. Even if you dont have a long term contract, the domain is yours. |
Subject:
Re: Domain Dispute
From: kielinen-ga on 11 Nov 2004 23:09 PST |
Getting a Domain name and Registering a Domain name are different. Anyone can buy a Domain name. But, is it registered. If you registered your domain when you purchased, then you can keep it. If they find that the domain name is not registered then it is fair game. |
Subject:
Re: Domain Dispute
From: ipfan-ga on 12 Nov 2004 12:42 PST |
Sorry, I cannot allow actkid's and kielinen's comments to go without response. In short, they are both wrong. Assuming that they both are continuing to follow this thread, let me ask them this hypothetical. Assume that someone at Nike responsible for renewing domain names forgets to renew nike.com, and I manage to register it. Moreover, I begin to use it to sell Reebok athletic shoes. Their comments suggest that I would be allowed to keep that domain simply because I "have a contract" with the registrar and because I "registered" the domain name. That is absurd. Trademark law says you cannot use a domain name that incorporates someone else's trademark (even if they screwed up and forgot to renew it) to sell related or competing goods or services. You only have rights to a domain that incorporates someone else's trademark if (a) you registered the domain name first AND (2) you were using the domain as a trademark first. |
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