Yeah SmallCompany, you go and threaten the yearly charity fundraiser. Jerks.
August 21, 2006 5:51 PM   Subscribe

I've received a phone call, but not a cease and desist (yet) on a domain name I own. There's lots

Yes, I found a previous AskMe but it doesn't answer my question and didn't have a follow up / resolution.

Abridged version: Guy has trademark on words that match my domain name, I had domain registered before trademark was official. Do I need to hire a lawyer if I want to keep it?

It's really worth reading the rest though:

So I own a domain name. It's a few common words strung together, and was thought up entirely independently. In fact, I was somewhat surprised it wasn't taken. It's currently being used for a noncommercial purpose (a yearly charity fundraiser, actually).

Today, I came in to work to hear a voicemail, left on my direct line at work, from someone asking to talk to me about "my website". It should be noted that my direct line at work is not published anywhere (that I'm aware of), and that a valid number is available in the whois for the domain as well as on my own website (which is linked 2 clicks away from the website in question!).

As it turns out, this guy owns a trademark on the string of words that matches my domain. He filed for this trademark before I registered this domain, but the trademark was not approved until several months after I registered this domain.

I called him back at the number left on the voicemail, and he sounded nice enough at first, until he got to the "I'd just like to get the domain from you now, rather than have to take you to court", which rubbed me the wrong way especially given his tone of voice.

I politely responded "I think based on my knowledge of trademark law that I'm not actually obligated to give this domain up", to which he responded that I am being unethical, and that perhaps he should call my employer.

Notes:
- As it turns out by complete coincidence, this person has done business with the gargantuan behemoth company that is my employer. Perhaps this is how he dug up my name.
- I might have been willing to part with the domain had he not rubbed me the wrong way with his two distinct threats. Now, as a matter of principle, I feel like holding on to it.
- I do not sell any product at the website which this domain displays, nor do I compete in any way shape or form with his "business".
- His trademark is a "Name Mark" for a product his business sells, not for the business itself.
- I have not offered to sell him the domain name for any given price - I know this is viewed as "bad faith"
- Based on my own readings of the ICANN dispute policy, I believe I have airtight ownership of the domain. Points 4.a.ii, 4.a.iii (applicable disputes) do not apply in this case. points 4.b.i, 4.b.ii, 4.b.iii, 4.b.iv all do not apply (bad faith use). Points 4.c.i, 4.c.iii (my rights/legitimate interest) do apply.

Also worth noting:
- Their company name .com is not even owned by them. They have the .net .. it seems the .com holder has a business of the same name, but does not own the trademark (the guy complaining to me does hold the trademark) .. still they own the domain name, which I think bodes well for me.
- They've bought the .net and .org of the domain name I own, but seem to not be content without the .com that I have.
- They claim their product has existed since 2002 in the market, but the domain wasn't taken when I registered it back in February 2005, and their trademark wasn't registered 'til much later in 2005.


So my main question is this: Can I go through one of these ICANN disputes without a lawyer, or do I have to lawyer up just to hold on to this domain name? I don't sell anything on this site, so I don't really want to pay for a lawyer at this point.

I'm also curious if there's any implications of harassment from his threats, or invasion of privacy, especially considering he avoided my publicly available and working phone number from the whois, and tracked down my private direct work phone number.
posted by twiggy to Law & Government (17 answers total) 2 users marked this as a favorite
 
Wikipedia has a pretty sound write up of trademark law. I'm no expert, but based on what you have said above and what I read on the wiki page, as long as what you do and what he does are different and there is no likelihood of confusion, everything should be good. But that doesn't stop someone from taking you to court and racking up $$$.

Perhaps also demand that all communication be written from now on. No sense getting hassled about this where you work.
posted by maxpower at 6:04 PM on August 21, 2006


It might be useful to have a consultation with a lawyer, even if you don't use him/her to actually do the work. Many will offer a free half-hour or one-hour initial consultation. (Be sure to bring along a copy of the ICANN dispute resolution policy if the lawyer is not familiar with it)

In my understanding (IANAL, etc.) he has little chance of succeeding at an ICANN dispute. Though they seem to be inconsistent. He has even less chance of succeeding in court. Either one of you could pre-empt the ICANN dispute by taking it straight to court.
posted by winston at 6:08 PM on August 21, 2006


And I wouldn't believe he's serious about doing anything as far as a dispute or lawsuit until you hear from his lawyer or get the court/dispute papers. 99% of threats to sue are bogus.

Document every communication from him in as much detail as you can. He certainly isn't acting like he's being advised by a lawyer right now.

You might want to discuss the situation with your boss before he contacts your employer.
posted by winston at 6:13 PM on August 21, 2006


First off: Of course, IANAL. But I have dealt with this exact thing in the past.

Second winston's comment re: 99% of threatened suits.

Can he prove that his "first use in commerce" pre-dates your registration of the domain name?

Also: Cybersquatting doesn't apply here: You didn't beat a trademark holder to a domain name, as your registration of the domain predates his registration of the mark.

Finally: Communicate with him, at his next attempt to contact you or your employer, that all further communication must be in writing, and that he must immediately cease and desist any attempts to communicate with you verbally or in person, and must cease and desist with any attempts to communicate with others regarding his dispute. If he persists, file suit against him in small claims court, and request an injunction against him. Or, if you're feeling saucy, call the cops for harassment.
posted by Merdryn at 6:22 PM on August 21, 2006


Also: He may not have your direct phone number. He could've called your office (if you're easy enough to track down) and asked to be placed directly in your voicemail.
posted by Merdryn at 6:23 PM on August 21, 2006


Nissan.com is still up. I think you're almost certainly safe.
posted by riotgrrl69 at 6:27 PM on August 21, 2006


What everyone said, and I entirely agree with your appraisal of the situation. Unless you're Kodak, Xerox or McDonalds, you're limited to enforcing trademark action against people *in the same business sector* (there's a list, as I think you know, of 40 or 50 of them).

I concur on "get a consult", even (or perhaps especially) if you have pay a bill or two for it. If you pay for it, it's counsel.

Mere ownership of a domain name does not, in any way I can see, infringe another's trademark; and they can always get THEIRNAME.somethingelse.

Tell 'em to go to hell, and let us know if they enjoy the trip.

(This is not legal advice; if following my advice breaks something you get to keep both pieces.)
posted by baylink at 6:41 PM on August 21, 2006


Oh, and there's some possibility that if he continues to harass your employer, that you might have cause of action for tortious interference; ask the lawer about that too -- though the same lawyer may not have answers on both.
posted by baylink at 6:43 PM on August 21, 2006


I would suggest not following jellicle's advice to attempt to sell the domain (for under $1300). I believe this can be taken as intent to profit off of a trademark and may end up costing you the domain.
posted by null terminated at 7:08 PM on August 21, 2006


Wouldn't this be somewhat depend on the commonness of the words/phrase?
posted by Matt Oneiros at 7:16 PM on August 21, 2006


A few points from a lawyer who has practiced trademark law:

1. There are some comments above that indicate that you will not get sued, that a UDRP arbitration would happen instead. That is not necessarily true. I've used both methods before (on behalf of clients), and either can be used.

2. Do *not* offer to sell the domain. That's pretty much an admission of bad faith.

3. If a UDRP proceeding is initiatiated against you, you can respond on your own. A lawyer would probably be better, but if you want to go at it alone, you can. In court it will be much harder, just because the procedures are less straightforward.

4. It's hard to tell what the merits of your argument are without knowing the domain and the various uses. But if you have an unrelated, legitimate use, you're probably legally in the right. (Which of course does not mean you would win, necessarily. Courts and arbitrators can be unpredictable.)

[I am a lawyer who has practiced trademark law, but this is not legal advice, and I do not represent you. Consult competent counsel.]
posted by raf at 7:19 PM on August 21, 2006


Oh, but the fact that he called you, rather than had a lawyer send a letter, means he's not yet that serious. If a lawyer was involved, the first thing you'd hear would be a letter.
posted by raf at 7:20 PM on August 21, 2006


Oh, and one last thing: unless they've changed their policies drastically over the last 5 yaers or so, I pray to ghod for your sake that your domain is *not* registered with NetSol, who explicitly did *not* treat names a property, but rather licenses.
posted by baylink at 7:47 PM on August 21, 2006


jellicle, that site you linked to was a great read. What a crazy motherfucker! Does Seth still harrass you to this day?
posted by Savvas at 12:34 AM on August 22, 2006


Is your web domain name so important to you, that you may be willing to shell out all the potential lawyer costs?!?

Of course, out of principle and howe it went down, screw this guy, but if its gonna cost you big bucks for spite, then maybe its not worth it... Have him make you an $$$$ offer and see what happens?
posted by TwilightKid at 6:36 AM on August 22, 2006


IAAL. Get one yourself. This is not legal advice. Its common sense.
posted by Ironmouth at 6:46 AM on August 22, 2006


Tell him to go pound sand. A girlfriend of mine was in the exact same situation. She owned the domain waaay before Mr. Furniture Store trademarked his store name and tried to go after her. She basically told the guy to eff off and she wasn't giving up the domain.

He went away.

But, contact an attorney anyway. This is America, and there's nothing stopping this guy from trying to go after you anyway in hopes of driving you into submission with legal fees.
posted by drstein at 10:34 AM on August 22, 2006


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