Intellectual Property and Domain Names

[parkgirl]

I have a friend who received a letter from a prominent NY atty firm stating that the domain name being used was against the law because it violated trademark registrations.

This letter went on to say that the firm wanted the domain name transferred to the person owning the trademark, an accounting of all revenue earned through the use of the domain and oh, by the way... should this person ever decide to sue you, we reserve that right too.

Luckily, the firm didn't actually know who to contact because the domain name contained privacy protection.

Anyway... an e-mail was sent to the firm stating that there was no malice intended and the use of the domain name has been terminated.

That was on Tuesday. There has not been a response from the firm yet.

Anyone have any similar situations?? Thoughts on next steps??

Thanks so much

 

[Joseph Ratliff]

I have a friend who received a letter from a prominent NY atty firm stating that the domain name being used was against the law because it violated trademark registrations.

This letter went on to say that the firm wanted the domain name transferred to the person owning the trademark, an accounting of all revenue earned through the use of the domain and oh, by the way... should this person ever decide to sue you, we reserve that right too.

Luckily, the firm didn't actually know who to contact because the domain name contained privacy protection.

Anyway... an e-mail was sent to the firm stating that there was no malice intended and the use of the domain name has been terminated.

That was on Tuesday. There has not been a response from the firm yet.

Anyone have any similar situations?? Thoughts on next steps??

Thanks so much

Almost sounds like a scam to me...it would seem the "legal" firm would have provided more "why" it's making such claims.

But check with an attorney, have them look at the situation.

 

[motivebrendan]

checking with a lawyer means spending money, i think you should wait to get another email, or call. If they were real they would have tried to call you already. I have seen this before and i'm easy to get a hold of b/c i never hide my domain reg info - in most cases it is a scam. But keep an eye out. Unless you are using a domain to mislead people you should be fine.

 

[parkgirl]

More information

Thanks for the feedback. The letter from the firm did state that they suspected that the domain name was specifically chosen because of the link to the trademarked name and that my friend was using the notoriety to gain traffic for their own benefit. It also states that the use of the domain name falsely insinuates that there is endorsement for the product being sold on the domain. These activities are in violation of both federal and state statues, the trademark act and the Lanhan act.

I have a pre-paid legal membership so I am having this service look over the documents as part of that membership but wanted to see how much this sort of thing happens. I also wanted to give my friend some reassurance while waiting for the feedback from the pre-paid firm.

I will keep everyone updated.

 

[Joseph Ratliff]

checking with a lawyer means spending money,

Not necessarily true...my attorney does "quick things" like this for me without investment...and in return I bring him a TON of referrals

Ahhhh, the power of affiliate marketing.

 

[jcorkern]

The first mistake was replying by email since the email is an admission of guilt or could be used in that manner. Next, was it a tradename violation? was it really that close, or are they named after a high value keyword search, other than a company name like ebay or bizrate?

Next, they asked you to provide proof of any income, they must be crazy for asking for that. It is their responsibility to prove you guilty, not for you to prove yourself guilty.

I had a guy that owned a mortgage company that had an attorney send me a letter like that (actually, many times I have dealt with this) but in reality they had nothing but the letter.

A "Keyword" can not be copyrighted as it becomes public domain as soon as it is typed into a search engine. The records becomes property of the search engine.

So, like I stated, unless it is directly related to a copyrighted company (registered) it is nothing to be concerned about.

The letter was losely worded to fish information to have something to go on. Like the "should this person ever decide to sue you, we reserve that right too. "

You also reserve the right to sue them also, so that is a scare letter.

Keep us informed.

 

[motivebrendan]

Not necessarily true...my attorney does "quick things" like this for me without investment...and in return I bring him a TON of referrals

Ahhhh, the power of affiliate marketing.

I like that! I need a lawyer who works for free! or on barters i think that is very uncommon but i like it!

 

[Joseph Ratliff]

I like that! I need a lawyer who works for free! or on barters i think that is very uncommon but i like it!

Like I mentioned though, it has to be "quick things"...anything that requires massive research or court time would be coming out of my pocket.

So, this is a semi-barter arrangement I guess.

 

[parkgirl]

Atty.

Quick research for free is a good thing. It can give you perspective to what may be needed. This is where I am patiently waiting right now. Waiting to see if more is neede, but desperately hoping that this was just a scare tactic! Anyway.... still waiting! I should hear something by end of business on Monday.

Thanks!

 

[yollyp]

just a sequel

Nothing to worry about if you did no illegal. The best thing to do at the moment is .. worry-less. It's a BIG SCAM and just one of the sequel of the "scary movie" .

 

[parkgirl]

The Results

Well... got word from the atty today. Good news, so far anyway. The reccomendation was to wait to see if the firm responded to the e-mail that was sent stating that the domain name would not be ussed any more. Also the atty said that it was unlikely that there was grounds for an intellectual prooperty suit as there was no mention of the trademarked items contained within the website itself. The only potiential issue could be and unfair trade practice.

Thanks all for the input!