I have received a cease and desist letter from a law firm via email.
They claim as they client registered a trademark two years ago for the name, I must handover my .com domain to them for free, otherwise they will sue me.
For them not to sue me, because they have now registered trademark (even though I had the .com domain and was using it 7+ years before them)
They state from their solicitor that I must do all the following (long letter they sent me but here is the title/headings):
1. Cessation of Use of the Mark.
2. Abandonment of Rights
3. Future Trademark Applications
4. Transfer of Domain Names
5. Acknowledgement of Ownership and No Challenge
6. Mutual Release
7. Covenant Not to Sue
8. No Outstanding or Known Future Claims/Causes of Action
9. Acknowledgment of Settlement
10. Confidentiality of Agreement
11. Non-Disparagement
12. Agreement is Legally Binding
13. Entire Agreement
14. New or Different Facts: No Effect
15. Interpretation
16. Governing Law and Submission to Jurisdiction
17. Equitable Relief
18. Reliance on Own Counsel
19. Counterparts
20. Authority to Execute Agreement
"[Company Name] further demands that you provide, by no later than the close of business Pacific Standard Time on December 15, 2021, written confirmation that you will comply with these demands. You are specifically advised that any failure or delay in complying with these demands will likely compound the damages for which you may be liable. If [Company Name] does not receive a satisfactory and timely response, [Company Name] is prepared to take all steps necessary to protect [Company Name]'s valuable intellectual property rights, without further notice to you.
The above is not an exhaustive statement of all the relevant facts and law.
[Company Name] expressly reserves all of its legal and equitable rights and remedies, including the right to seek injunctive relief and recover monetary damages."
If anything I would have thought they should be the ones changing their name, as I was using the name 7+ years before them with a similar product
As Director of a domain name protection company (and not an attorney) I can offer this:
If you registered the domain name before the other party files for a trademark, then there is no way you would have known that they would file for the mark. So, in most cases you probably don’t have to give up the domain name. It comes down to whether or. Or you registered the domain “in bad faith” or not. And again, how would you know they would start their business and get a trademark? You wouldn’t.
Are you in the same industry and compete with each other? If so, there might be an issue, but I’d your site offers different products and there would be no confusion between companies or websites, then there may not be an issue.
The best way to handle this is to get a domain name attorney to respond to their letter to you, essentially telling them to go away, and that you plan on keeping the domain name.
If you cannot afford an attorney, look for a company that offers domain name insurance or a domain name warranty, if you have an issue like this with your domain name, your legal fees to defend the domain are covered.
As you have described the situation here, you bought the domain before they filed for their trademark, and you’re not pretending to be them. So you should be able to keep the domain. They are just trying to “ strong arm” the domain away from you with a threatening letter. If they do sue you or file a udrp, defend yourself with the help of a good domain name attorney.
...
> as I was using the name 7+ years before them with a similar product
Sounds like they are, but that the issue is in the reverse, they are trying to steal the authors market and product directly by using their name. This is very aggressive, not to mention wrong.
No doubt that they did think of that. Instead they decided on intimidation as an opening strategy.
> ... as I was using the name 7+ years before them with a similar product
So they are guilty of what they are accusing you of. You could: 1) threaten to counter sue and settle for a price, or 2) sell them your .com
They've no doubt anticipated these responses as well and are prepared to negotiate. They simply decided to open the negotiations at $0
This isn't ok and making them go away isn't good enough. They need to pay for having made that long list of demands and threats, ideally by having their whole business taken away and given to OP.
I would think it’s too late for that. Insurers typically (and most of the time rightfully, exceptions being cases were law requires them to do so, as is the case with health insurance in some countries) do not cover cases known before the insurance started.
If they covered past issues, nobody would take insurance before they knew they needed it.
Business insurance and cyber liability insurance doesn’t cover domain names. You have to get a domain name protection company to cover the domain.
I've never heard of that before and all I can find trying to search are sites about the `.insurance` TLD.
Anyone got any links to some examples?
IANAL; this is not legal advice.
Furthermore, the USPTO allows multiple trademarks with the same name in the same class, because trademarks must be distinctive and unless the name is completely made up and demonstrably novel (e.g. Blu-Ray, Kodak) it's not distinctive and does not inherently constitute a trademark (though generic trademarks can acquire distinctiveness through use e.g. "apple" would probably be considered distinctive).
An interesting trivia is that Apple Computer got in trouble with Apple, the record label, when they introduced the Apple IIgs, because it had a musical instrument synthesiser chip built in.
Somehow that does have the cadence and sound of a ‘premium’ brand, or at least faux-premium. The ‘registered’ symbol really sells it, though.
In these post-ironic times, I can easily see this name being used.
Occasionally, our adoring public has a salient question. Here are the most frequently asked, along with clear, concise answers. Please only send mail if your question has not already been answered on this page.
History of bud.com:
Just point them to https://www.icann.org/resources/pages/help/dndr/udrp-en
I'd evaluate what your endgame is. If your endgame is to keep the domain then I'd get a lawyer in order to make it clear that you will respond to legal challenges (and, yes, the bill is going to run up). If you were willing to sell, for a price, then you should try to figure out how much a legal challenge would cost them and set a price a bit higher than that.
Is it fair? Absolutely not, but the US legal system is set up so that those with the deepest pockets often win. It isn't a fair fight for normal citizens, and even having the law on your side is often not enough because it is a financial battle more than a legal one.
Either way may be wise to lawyer up today, either for a better selling price, cause them to back off entirely, or move it into the "bury you with costs" phase of bullying.
If OP has first use in commerce that predates theirs they could start, or threaten to start, the paperwork to have the trademark tossed. If they see you are asking questions that aren't a response to bullying, but that would precede a legal an attack their trademark directly, they might find themselves on a different footing.
Regardless, the possibility, I would think puts you in a better negotiating position if you're looking for an offer, or just want to make them go away.
Seeing a lawyer is likely the way to go. Also, I notice you use the term "solicitor" which makes me think any US law-based answers are less likely to be grounded in reality for you, so add more than your usual pinch of salt to anything you see here, including what I wrote!
"This past June, the U.S. Supreme Court ruled that plaintiffs cannot sue companies in a state where they may do business, but do not have significant connections to that state."
Bristol-Myers Squibb Co. v. Superior Court of California (BMS)
https://www.andruswagstaff.com/blog/supreme-court-rules-plai...
If not - they'll auto-win and Verisign will happily transfer the domain to crooks.
Assuming both parties are in the US, this is the key legislation around domain squatting: https://cyber.harvard.edu/property00/domain/legislation.html.
You haven't told us anything about what you do with the domain, but since you registered it quite a bit of time ago I'm assuming it has nothing to do with the company in question that sent you the letter.
Looking at the clauses in the link, it seems pretty clear they they have no real case. Everyone's advice of getting a lawyer is obviously apt, but I'd say you can just save yourself the money and ignore this letter completely. There's a 99% chance that you will not hear back from them. If they do decide to actually escalate it, you can always get a lawyer at that point.
A general piece of advice about the legal system - nothing ever happens within 3 days. They are creating a false sense of urgency in order to scare/bully you.
(As a side note, I get very annoyed when a random question on the internet is met with a hundred responses of "get a lawyer". I'm sure the person who posted it already knows that lawyers exist. What they are looking for is some free advice, not legal representation from HN.)
This is not legal advice and in no way relates to my employment:
Trademarks don't work like that. Prior use for trade is an absolute defence in most jurisdictions (though I'm not intimately familiar with USA) and is most likely a reason to invalidate the latecomer's trade mark. You're definitely not "sitting on [their] trademark" if you were using it for trade before them. If anything they're infringing your trade mark -- though that's unlikely to do anything unless there's 'passing off'.
Trademarks are usually limited by geography and by Nice class (famously Apple computers promised Apple Music not to do anything in the way of music business so as not to infringe Apple Music's earlier mark) so several businesses can use the same word as a trade/service mark as long as they're not likely to be confused.
The opposition period may well have expired for invalidation, I don't know how that works in USA.
Them badgering you, and a trademark attorney misrepresenting the situation could be reason for a countersuit by itself. Certainly I'd discuss that if they do enlist some representation.
So it seems like they aren't squatting, but genuinely using it (for a similar product, which makes sense)
If you send cease and desist letters without merit you should be forced to indemnify the respondent for the entirety of their attorney's fees and pay exemplary damages.
This would require lawyers to make a careful assessment about prospects of success, rather than hoping to scare the other side into capitulation.
These heavy handed tactics are just dreadful and shouldn't be accepted in any rational legal system.
To avoid doubt, I'm not saying that their claim doesn't have merit. Unfortunately you will need to pay a lawyer to find out.
What is particularly galling to me is how media companies trying to protect their content rights make completely meritless legal claims such as mass sending false DMCA requests to video sites saying that they own some work that is completely false, with no punishment for spamming out factually incorrect claims and harming people. That whole messed up system has been commented on many times in other threads.
For actual legal filings, the only issue is that how a "case without merit" is defined is probably very subjective, because legislation can be very complex and lawyers can make a legal argument backed up by some statute for just about anything. There needs to be an extremely high standard for what constitutes a meritless case that should be punished in this way, because otherwise it also makes seeking restitution for wrongs risky, and that's not a good outcome either.
Similarly good ideas in this vein IMO include: simplifying the language of laws, making the actual text of laws more easily accessible, and sunsetting/time-limits on old legislation so that old ideas that no longer make sense aren't kept permanent due solely to bureaucratic inertia.
Indeed, but cottage industry of ambulance chasing lawyers are heavily lobbying politicians to not let these great ideas see light of the day.
There's also a need to penalize domain squatting. While the avaricious company is in the wrong here, but own.com was showing a generic static page with links for many years, which is clearly domain squatting hoping to speculate on the three-letter domain.
Both are wrong, even if the domain squatter is legally allowed to do so. How many domains is OP speculating with?
It seems to me that there are enough cases of obvious misbehavior like this that don't get punished, but I get that it would open up a lot of risks where it would be a matter of opinion. They hate judgment calls if they can possibly avoid them.
They like the law to be black and white, which means they rarely punish lawsuits that follow the rules. Even when it's clear to anyone else that the rules are being abused.
We ended up litigating and canceling their registered trademark with the USPTO by proving our business and website were setup before theirs. If you have over 7+ years of business and public records this should be a pretty open and close case. The bad news is however even if that is the case it can take 2-3 years (probably due to pandemic)and a lot of money. In our case it cost less than $10k, so the guy’s extortion made no sense.
It also didn’t help their case that the guy lifted verbatim copy from my website, including my TOS with my address! I’m not sure if the judge even looked at this though.
Fuck people like this. I feel bad for the Op, but sadly, I am jaded by the BS games that bullies play and win. I wish karma 1000x upon people that do this kind of bullshit.
We've all seen how part of the responsibilities of a brand is to protect it, but as someone else posted, there are ways of not being an asshole when protecting one's brand. Ultimate face saving for the company in question would be to realize what is ocurring and fire the legal team they have hired for this role, apologize for their behavior to the Op, and then amicially work out a resolution. However, I realize that this is such a low chance of ever happening to be laughable.
Yep, when somebody else started using my trademark in a slightly related business, I called my lawyer and discussed. We decided to offer that they license the trademark for $1 and agree to discuss with me before using it in any new way. That way my trademark is protected and I don’t need to be an asshole.
Worked out well, we even threw each other business occasionally, and they went out of business after a couple years anyway.
If you are in the USA, the law is on your side: just because they registered the mark doesn't take away your rights.
In addition, if they are doing something different from you (or perhaps you're using the domain for non-business purposes) they have no claim. You can open McDonald's garden shop (even if your name isn't McDonald) and unless you made it look like a McDonald's restaurant (trying to cause confusion) it's none of the restaurant company's business.
Best, unfortunately, is to get a lawyer. If your country has a "small claims" court you could even sue them to get back your lawyer costs, but those are likely to be small in any case.
Good luck!
Well that's a scam.
If they're going to sue you, let them. You literally have prior use of the term and if you have to prove that, you can with comical ease.
They know this… which is why this sounds like bullies trying to scare you into giving up a domain they can't afford to pay for. Scary letters are cheap. Write one back asking they reassign their trademark to you?
But seriously, probably get paid advice first, and don't worry about this 3 day nonsense. Nobody works that fast.
And remember that trademarks are classed. Rarely does somebody get exclusive use of a name in all senses. You might not be able to sell what they sell under their trademark, but they don't have rights to the word in generic senses.
Oh and probably approach a regulatory body about their solicitors. This isn't an appropriate way to conduct business.
don't worry about this 3 day nonsense. Nobody works that fast.
If you're gonna spend any money with a lawyer, have one write up a "go away or I'll let this go to trial and you can pay my legal fees" letter to send back to them.
This could be the best thing that has ever happened to you. Depending on the price and size here, very little chance / or unlucky for them to go nuclear option. The last thing they want to do is take this to court and then also lose. Devastating for them to lose and only expensive for you to lose.
Settle here and take the bonus.
How deep do their pockets look and how valuable is this domain to them / you?
0. Get lawyer and do everything through them and through their advice first.
1. Draft a response saying basically over your dead body, make it clear and obvious how likely it is they will lose, and tell them you are prepared to take this to courts for a legal judgment.
Tell them you are reasonable though and give them an option to make a serious offer for purchase at 10x whatever you value it at.
2a. Get offer, negotiate to a value of 0.25-4x (not 10x), accept, move on with your life.
2b. Get sued, win, re-offer sale at 20x. Sell domain at 8-12x.
2c. Get sued, lose, sucks.
One way to make a very weak case that an already-registered domain is being used in "bad faith" against a trademarked entity a bit stronger is to argue that the owner of the domain made an unsolicited request to the trademark holder for payment...
- People often mention 0 countries. Where do you operate? Where was your company founded? How about the other company? Etc. How do you know if that helpful comment doens't assume something totally different?
- Are you really going to feel confident about your legal situation after reading comments on a platform like Hacker News?
Why would one need to legally own that domain name as a company name to keep the domain? Makes no sense to me
https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-900d1...
Just like patents have a concept of "prior art," trademarks have a concept of "first use in commerce."
If you can demonstrate that you were the first to use the trademark, you have less to worry about (but nothing's guaranteed until litigated).
HOWEVER, if the party that registered the trademark can demonstrate that they used it prior to you, regardless of when they registered it, then they may have the upper hand.
This is probably not DIY territory; consult a lawyer knowledgable about trademark law to help you determine how to respond.
They may, in fact, recommend that you countersue for infringement. Might not be worth your time to pursue, but at least in theory you could claim that they're infringing on your trademark, because the U.S. follows a "first to use" rather than a "first to file" trademark system.
Let's say I get an email like the one OP got but I don't understand english and I take no action... Will the non-US registrar give them my domain by default?
1) "Hobbyists" and the like who are not doing anything particularly valuable with the trademark and domain name. Even if these people can prevail in a lawsuit, the other company is hoping that the owner decides they can't (or won't) risk the time, money, and stress of going through a civil lawsuit.
2) People with valuable businesses whose rights are worth defending. The other company is already pretty sure you're not in this category, since you haven't vigorously defending your naming rights to date.
Overall, you have prior use, and may be able to "win" if it gets to an actual lawsuit. The strength of your legal claim isn't the problem; if you have to spend high-five figures to keep the rights to your hobbyist website, you have already lost. Your goal is to convince these folks to leave you alone on as favorable terms as possible. If your domain name is not particularly valuable and important to you, this likely means A) hiring an attorney, B) using their services to convince the other company that you're in the second category, and then C) selling them your domain name for significantly more than it's worth to you. If your domain name is valuable to you, the only thing that changes is that you may need to pay the stochastic taxes that businesses have to pay to have access to the legal system for dispute resolution, and you might have a hilarious "thank you for informing us of your clients' violation of our trademark rights" demand letter sent back at them.
On the other hand, "MikeRoweSoft" clearly was playing on Microsoft and I can see why he lost that battle.
TM's are cheap so its an easy trick and a lawyers letter doesn't cost much either, but its a legal game you may well be forced to play, because they might go to the domain registrar and try it on with them to get your domain.
Unfortunately these are the additional cost we can be forced into playing if someone with more money wants something from you like in this case your .com name. You could also see if your domain registrar as some sort of arbitration which could keep costs down or lower than using a lawyer. I think divorce lawyers best typifies some of them thrive on disputes. Good luck!
In the USA, if there might be customer confusion between your two businesses then there is grounds for a cease and desist, but you have precedence. Might consider turning the tables and sending them a cease and desist :) perhaps they’d like to give you the .net domain as an apology
But agree with all comments: get a lawyer before you do anything.
First use is a strong defense, but you will need to defend it. If you have similar products and can show first use, as you claim, perhaps negotiating a sale of your entire business including the domain would be something to offer them.
Usually this kind of tactic happens because they've looked at you and guessed you don't have financial capital to defend yourself. Unfortunately, because it's very difficult to prove they're acting in bad faith, there's likely no way to recover your costs of defense.
All they're doing is losing their trademark here. If you were using it before them, it shouldn't have been assigned to them.
GET AN ATTORNEY.
But to calm down, read about "stop and go" in Pittsburgh in the 90s. There was a store called that about an hour's drive outside the city. Then a gas station convenience chain merger tried to take on that name for 150 stores. About two years later the original store found out and said no. The 150 store behemoth tried to sue.
The 150 stores are now called CoGo's.
I own MY_LAST_NAME.com, me and my family use it for email, ( i.e. firname@lastnane.com ) should we register a trademark to protect ourselves from this type of bullying? Are we safe since its our own last name?
TBH this scares me quite a bit since we have all the family’s emails tied to the domain, not only would it be a huge pain to lose it but also a security risk. Weve had the domain for 10yrs or more at this point…
This has happened to me. Ignore them until WIPO claim shows up. Which they probably tried and were denied. A good example is nissan.com
My suggestion would be to either A) ignore and see if they go away, and/or B) have a domain name lawyer send a reply showing you won't roll over. That's usually enough for parties like these to back down.
If you need a lawyer recommendation send me DM me on Twitter (@marckohlbrugge). More than happy to help.
FWIW, some people might mention a procedure called 'UDRP' which is typically used by TM owners to quickly and cheaply get a TM-infringing domain name. However, one of the requirements for a successful UDRP case is that the TM needs to have been issued BEFORE the domain name was registered. Which is not the case here. So a UDRP approach would fail for them.
The other way for them would indeed be to sue and try to claim TM infringement in court. I don't have much experience with TM law, so I'm not sure what your odds of winning are. But there might even be a way to get their TM invalidated.
TL;DR: Talk to a lawyer.
P.S. If they have money for lawyers, they might also have money to buy your domain name. I wouldn't propose a purchase until you've talked to a lawyer (as it could hurt your case), but it's something to consider for later on.
--------------
(ix) Describe, in accordance with the Policy, the grounds on which the complaint is made including, in particular,
[...]
(3) why the domain name(s) should be considered as having been registered and being used in bad faith
--------------
Marc, do you have an email address?
Note that I'm not a lawyer, but I've dealt with similar issues before through a qualified lawyer. Happy to introduce you. Not sharing name here publicly, because that could potentially be used against me. (i.e. someone intentionally creating a conflict of interest, etc)
"What is domain squatting? This is the practicing of buying a domain name for the sole purpose of preventing someone else from buying it. Typically, the buyer will then resell the domain name at a higher price to a buyer who is desperate to pay for the domain. The domain squatter takes a risk in trying to find a domain that someone else will be willing to pay at an up-charge to buy the domain in the future."
If the .com "preexists your trademark", it's harder to prove they bought it to prevent you from buying it. If you're a small business smaller than $80K per year in revenue, it's likely they don't even know you exist.
For this one, I've taken the general position that as long as they don't show up in the first 3 pages of google results for "company", I don't really care, but same question.
For context, my company is a saas booking platform for outdoor recreation businesses.
There is a huge community of domainers on Twitter. There will be blowback. You will get tons of support, and recommendations. (as well as guidance on lawyers...etc).
Meanwhile, also look up that law firm that sent you the letter and see what you can find out about them (e.g., are they even legit, what kind of other cases do they handle, etc).
And search for any information you can find about this other company and the people. What have they done? do they own property? What other businesses? Criminal records? etc. etc. etc.
Also gather all your own records - business formation, original site registration and registration history, logs of any marketing and advertising you have ever done, etc.. Anything that shows you actively using this trademark over time and as far back in time as you can establish.
Bring this data to your new specialist attny.
Consult with a lawyer. Intuitively their case makes no sense, but actual law is not always intuitive
Its easy to prove you are not acting in bad faith because your ownership precedes the trademark. I personally own and use several domains that others hold trademarks on, but all of mine were registered before those companies established trademarks.
It is ridiculous, and the only reason for this is because they have no legal right to the domain name.
1. Do not reply to the email yourself. 2. Get yourself a lawyer and keep a full accounting of all legal expenses.
Not sure how to interpret this free legal advice.
1. A bit of Google-searching suggests that you're in Australia. I couldn't find any U.S. trademark registration for $NAME, where your .com domain is $NAME.com as listed on (what I surmise is) your Twitter header.
2. If the facts are only as you say — always a big "if" — the letter you describe would be ... let's just say, groundless, at least in the U.S.
3. If you own $NAME.com; AND: For seven-plus years you've actually been using $NAME as a trademark "in commerce" in the U.S. by shipping goods bearing the mark (or rendering services under the mark) in interstate- or foreign commerce; AND: You're being threatened with a U.S. trademark registration, AND: The registration hasn't been made "incontestable" by the passage of five unopposed years; THEN: In theory you could petition the U.S. Patent and Trademark Office (USPTO) to cancel the other company's registration, on grounds that you're the senior user. That would not be cheap, and I think this would require hiring a lawyer to represent you in the USPTO. https://www.uspto.gov/trademarks/ttab/initiating-new-proceed...
4. You might find amusing the precedents at https://www.oncontracts.com/monster-cables-picked-the-wrong-... (response to a threatening letter from Monster Cable) and https://lettersofnote.com/2011/02/14/regarding-your-stupid-c... ("some asshole is signing your name to stupid letters"). In a similar vein, one of my late former law partners reputedly had a big BULLSHIT rubber stamp that he would supposedly apply to such letters and return them to the sender. (I don't remember ever seeing the stamp so it might have been a story that "evolved" over time.)
5. The title/headings that you list are mostly gorilla dust that unsophisticated lawyers throw up to try to get opposing parties to agree. There's no way you'd want to agree to all, or even most, of that without a BIG, buyout-type payday in return.
Again, don't rely on the above as legal advice; when in doubt, consult a lawyer who's licensed in the relevant jurisdiction.
EDIT: If you want, email me (see my HN profile); if this is a U.S. matter and it's not from one of my existing clients (extremely unlikely), maybe I can write and send an "appropriate" email response for a purely-nominal fee (but I wouldn't be able to take on anything more than that).
check your registration rules, and reach out to them to explain what is happening, stop any end run on your registra.
This isn't in what you quoted. I wouldn't be surprised if they didn't demand you give them the domain but hinted that you should give it to them because you won't be able to use it for the purpose you wanted anymore.
You can most likely keep the domain, even if the trademark holds water - in that case you just can't use it for what you're probably wanting to use it for. If you were actively using the domain, the trademark might not hold water, but from the way you describe it, it seems like pretty passive use of the domain. It's also bad to let them register a trademark you wanted. I don't know too much about it, but presumably there's a way to get something like a Google Alert if your brand is going to be trademarked, and you can oppose it if you know about it in time: https://www.gerbenlaw.com/blog/filing-a-notice-of-opposition...
If they did demand the domain, see nissan.com. I don't think it necessarily hurts them to demand the domain. Nissan hasn't gotten the domain but they haven't got in trouble for demanding it either. No lawyer has been disbarred over it. ICANN stops short of transferring domains because of trademarks alone, but it isn't with prejudice.
A trademark isn't a domain, but a domain also isn't a trademark. If it were, a lot of YC brands would have been squatted, because plenty of had to settle on not having the .com at first, and many have ended up getting them later.
I wonder what it was like when codeacademy.com got codecademy.com. Perhaps it was something like "Hey, you guys can't use codeacademy.com for much, mind selling it to us for cheap?"
They have no right to their claim and are using abusive language to make you do something under threat.
You can get quite some money out of it I believe.
IANAL and this is not a legal advice.
I also IANAL and this is not a legal advice.
Is it correct that they will sue you if you don't comply? Maybe, that's up to them.
Is it correct that your use of the domain name violates their trademark? Also, maybe. That depends on the market you are in, the market they are in and that the trademark is registered for, and other things.
If you aren't willing to just hand over the domain, and don't want to just roll the dice on liability, you should seek professional legal advice, and not respond in any way until you have received and considered that advice.
> Is it correct that your use of the domain name violates their trademark? Also, maybe
No. As an issue of black letter law, if they can demonstrate that they were using it before the issuance, it does not violate trademark, by design.
Many trademarks are lost this way.
thats a big hunch, and i dont see that going in a good direction at all, for anyone, if my hunch is actually fact, rather than hunch
There's a really interesting episode on the Tim Ferris podcast, where Drew Houston shares the story.
Of course you need to get a lawyer if they do sue, but it sounds as though you should be the one suing, demanding they cease and decist, etc.
FWIW this is the kind of protection you could get by registering your business/product's mark. I'd say it's still possible but probably slightly harder to do now.
In any case: asking for legal advice without even providing a the jurisdiction(s) or details is a waste of time.
get in touch with lawyers dealing with IP/trademarks
you can have a brief talk w/ them to discuss options before making any decision :)
We had evidence of first use in commerce and offered not to sabotage their pursuit of a trademark. They immediately agreed, backed down, and signed a document allowing us to use the name unrestricted irrespective of whether they successfully obtained the trademark. As we expected, the trademark application was denied (the name was descriptive, not unique) and it was all behind us quickly.
TLDR: get a lawyer. Trademark law is weird.
And don’t be mean - the other business is now your first call if you ever decide to sell.
Yes the other option is to sell the domain for a profit.
UDPR is your friend
Don't ask for money. Being seen as "domain squatting" them will work against you in a tribunal.
I usually would go straight to the throat and very personal.
Publish their letter on the domain they seek, capture all lawyer and company details and publish to site.
Use opsec for phone numbers, call them at terrible hours ( at home) to discuss offers of payment.
They are trying to bleed you with superior resources so guerrilla tactics are best ( legal of course)
They act different when they realize they are exposed and you don't care about normal processes.
Lol, I should make my own David v Goliath service.
Depends on the size of Goliath. No one scary came for me and a few 2am calls led to crickets.
Can you further elaborate on your story I am very curious?
IANAL, but if your goal is to give the them additional grounds for suing you, you may be off to a good start.
This is a really nasty idea. You’ll be bothering their family who have nothing to do with it. Sounds like you’re advocating harassment of people’s families.
Two wrongs don't make a right, and it certainly may be imprudent to escalate. But there's no moral ground for them to stand on here - they're in the same category as any other spammer. Furthermore nowhere did OP advocate deliberately expanding the scope to their family. If phone calls at inconvenient-to-them times end up bothering their family as well, it's because they didn't do the work to separate their family from their ugly business.
In general I don't buy into the idea of declaring some times as off limits for phone calls, since society has never given me the same courtesy in the early morning. I'd much rather get calls at 10PM than 10AM, and yet it's somehow acceptable for businesses to return an afternoon call at 9AM sharp and pretend they're doing their best to communicate.
Obviously, “hire a lawyer,” is sometimes right. But if I hired a lawyer every time I was told to, I would be out hundreds of hours of billing fees. Anecdotally, I’ve never fucked anything up royally. That doesn’t mean that I made the right decision, but is something I strive for.
Spending $300-1000 on a consult every time I might need one is like taking an antibiotic every time I might have encountered a bacteria. It’s important to qualify and spend money when I actually need to rather than every time.
It’s like those people who say “don’t criticize my book until you read it” (since that usually means that it makes them some money to have me buy their book). If I had to read every book to figure out if I should like it or not, that’s impossible. I need to develop effective evaluations and filters to prevent me from wasting my time and money.
Actually I’ve been surprised to find that many times even high priced attorneys are usually willing to spend 20-30 minutes+ giving you some general advice before even retaining them. I’ve gotten very valuable advice this way several times at no cost.
You're not necessarily wrong, but that's definitely a survivalship bias. You only need to lose once for a game over, so everyone still playing underestimates the stakes at play, as there is close to no interaction to people that have lost.
The outcome here could be that OP loses their domain name. If they just want to give it up, they don't have to hire an attorney. Easy answer.
But if they do want to keep the domain name, when paid opposing counsel comes knocking at the door, they need to lawyer up, plain and simple.
With that said, this guy definitely needs to consult with a lawyer.
So it doesn’t need to be expensive to request the support of a lawyer.
bruh consults are free, you're getting worked
It’s sort of like Google programming isn’t it? I’m sure you’ll get it to work, but you hopefully wouldn’t do it if you were building medical software that could end up killing people. That’s when you pay the experts.
For as long as people enjoy reading, writing and discussing, the only important thing is that readers can distinguish between "legal advice" and something some random person said on the internet.
The flip side to that is that it is illegal in most states to give legal advice to someone unless you are a lawyer. You can give legal information, but not advice.
[Illinois once tried to prosecute me for the crime, so I have some experience]
Sorry for the snarkiness, but I'm continuously gobsmacked by how oblivious people, especially attorneys, can be to the fact that the Game of Justice as it is played in these parts is simply not accessible to the vast majority of people, who can only try to find another way to work around the system even if it's probably doomed to failure.
[0] Dutch example: "Het Juridisch Loket"
Knowing your rights, reading the law and discussing it is a perfectly fine thing to do for everybody.
Sure. I am a former law student (in mid career when I did that), worked in legislative office, spent a large part of my career as a government program analyst that did lots of legal/compliance analysis, and spend huge amounts of reading and discussing the law, legal rights, etc.
But when people have an immediate concrete legal problem with substantial property or other interests at stake, whatever other discussion of my understanding of the involved law involved might be interesting, the only correct advice in ~99.997% [0] of circumstances from anyone who is not a lawyer, or even just not the person involved’s lawyer on the matter, is to get someone who is your lawyer (at least for the length of a consultation) review and advise.
[0] there are situations where the practical context is such that the law and legal advice are irrelevant, though they are quite exceptional.
Is it wrong to try to be informed of the law (when ignorance is rarely an excuse)? To find out what rights a trademark or a domain name confer? Or to list precedent and examples, such as nissan.com? We should just stick our heads in the sand, resign ourselves to total ignorance and helplessness, and let the lawyers do all the thinking?
Lets make this specific. Look at this comment: https://news.ycombinator.com/item?id=29522196
Are you saying every part of that comment, except for "This is probably not DIY territory; consult a lawyer knowledgable about trademark law to help you determine how to respond." is wrong?
For example, is the following statement wrong in the U.S.?
> Just like patents have a concept of "prior art," trademarks have a concept of "first use in commerce."
Speaking as a former law student that left because I got back into technology, and who is a fairly educated layman on the law but not someone with any financial interest in how people approach legal services, this.
1) This is an ex co-worker . I believe she's well versed in such things. I get nothing for this mention.
2) That said, one of the keys to trademark is being in the same industry, such that the public might get confused.
Apple Computer striking a deal with Apple Records, once the former started to sell music, is a good example. Prior to that, there was no (legal or market) overlap of the two.
John Lennon himself described it as: "we've got this thing called 'Apple' which is going to be records, films, and electronics – which all tie up."
Note that this is generally true for trademark law, but there are things like the ICANN/WIPO UDRP that can be used to expropriate domain names that have somewhat of a different standard.
and so the racket continues
This isn't someone trying to rope someone into a racket for their own gain, it's "Our laws and legal system are a clusterfuck that varies wildly from region to region. Get a free (or at least cheap) consult instead of taking a risk trying to navigate this yourself".
There is no situation in which it is worthwhile to take the risk to try and navigate that clusterfuck yourself. Spend the 50USD or so and the hour of your time it'll cost at most to get a consult and go from there. At best you can get something out of this whole interaction but at worst if you don't consult a lawyer you can end up without the domain, without any money from selling the domain, and saddled with legal fees defending a lawsuit against you.
Not that their advice is wrong - you should consult a lawyer over internet advice. But the "everyone else is wrong, listen to me" flavor is a bit heavy-handed.
https://www.legalteamusa.net/trademark-law-first-to-use-v-fi...
There... is no relation between the two?