Domain Trademark Infringement?

March 22, 2004 8:57 PM

Just received a "cybersquatting, trademark infringement and unfair competition" letter for registering a domain name. If any MeFi users have had a similar experience, I would love to hear about it. [more inside]

The subject of the letter was "cybersquatting, trademark infringement and unfair competition of [product] by registration of www.[product].org in violation of the Lanham Act."

They said that they can claim for legal fees but will not do so if I transfer the domain name to them within ten (10) days.

The website, however, is a consumer-based organization of users of the product and says as much. It is non-commercial in nature. It clearly states that we are not affiliated with or approved by the product makers and that all trademarks are property of the respective owners.

If anyone has been in a similar situation, would you please tell me your experiences?

posted by cup to law & government (10 comments total)

Disclaimers do not necessarily obviate a likelihood of confusion. Chilling Effects may be of some help.
posted by anathema at 9:22 PM on March 22, 2004

There was previously a similar Ask MetaFilter thread about poprocks.com that may prove enlightening. (It seems popvulture still has the domain, if that's any consolation.)
posted by Danelope at 9:24 PM on March 22, 2004

Davezilla had similar problems, mefi thread
posted by holloway at 9:33 PM on March 22, 2004

Here are the infringement (15 U.S.C. § 1125(a)), dilution (§ 1125(c)), and cybersquatting (§ 1125(d)) provisions in Lanham. The Cybersquatting Act is basically a jurisdictional fix: it was enacted to make it easier for the government to shut down offshore domains that use a U.S. based registrar.

By contrast, the end result, not your motives, are at issue in the infringement and dilution provisions of Lanham. On this point I'll defer to anathema who is the resident expert.
posted by PrinceValium at 9:45 PM on March 22, 2004

Email is in my profile if you want more info.
posted by anathema at 4:24 AM on March 23, 2004

Cup, tell them to blow it out of their asshole. Until they actually proceed with the dispute, it's just a letter. I'm not a lawyer...
posted by angry modem at 6:05 AM on March 23, 2004

i read somewhere recently that a trademark which had "sucks" appended was found to be non-infringing and not confusable with the original. i understand it's not your intention to berate them with your site, so maybe if all else fails and you have to give up the domain, in your case, maybe registering something like [domain]talk.org or [domain]users.org might be acceptable to the greed-driven mindless foaming-at-the-mouth cannibals upstanding members of the legal profession who so keenly and selflessly guard the rights of the downtrodden corporation. oh, and 'cybersquatting', as i understand it, cannot possibly be a crime unless one's intent is to extort money (or otherwise derive financial benefit from the use of the trademark) IANAL.
posted by quonsar at 7:05 AM on March 23, 2004

"sucks" cases have gone both ways.

unless one's intent is to extort money (or otherwise derive financial benefit from the use of the trademark)

This is one way to prove one element (bad faith) of the legal test. It is certainly not the only way.
posted by anathema at 7:14 AM on March 23, 2004

Thank you very much for your excellent links and your kind responses, everyone! :)

It is a dot org - it is an independent *organization* for and by users of said product and contains disclaimers to that extent on every page. It is non-commercial in nature. The color scheme, etc., are not confusing, I don't include any product logos/images and there is no way that a person coming to the site would mistake it for an official site. The only reason it exists is because I love the product, would like to hear what people say about it and would like more people to use it.

Is there anything else that I can do to convince their lawyers to go after the dot com and leave my dot org alone?

It is not for sale, by the way - never has and never will be - so I don't think cybersquatting is an issue, either.

Again, thank you all for your kind responses! :)
posted by cup at 5:38 PM on March 23, 2004

Like I said above, offering the domain for sale is only one way to show bad faith in an ACPA claim or a UDRP.
posted by anathema at 8:35 PM on March 23, 2004