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trademark issue. need advice
Hi Community,
I just received this email from a company regarding to a domain I registered.
Question:
- Do I have the responsibility of sending my personal or business information to them?
- If my use of the domain involves something about Information Technology. eg. blogging, CMS site, not about using their trademark at all. Does this offend any trademark law?
Thanks
Comments
Seek legal advice from a lawyer, not some forum
just thought maybe someone had the same issue before and could provide some advice
Not sure if it can help you but someone here recently had a simular situation http://lowendtalk.com/discussion/25180/domain-name-request
thanks
ty~
@kyaky - It looks like you're in Australia, reply asking them if they are trademarked in Australia or if they have a international trademark? If they so no then tell them to get bent.
Trade marks are regulated on a country by country basis, even international marks filed via the Madrid Protocol. In order to have a worldwide trade mark you need to obtain registration in every single country.
Thanks, I thought they might have nothing to do in Australia. However after checking the trademark from AU trademark department, it shows the "keyword" was registered by:
Visa International Service Association
900 Metro Center Boulevard,
Foster City, California, 94404
UNITED STATES OF AMERICA
I have no idea if this means an international trademark agency or sth is involved. looks like it's from an American agency
Call the Australian trademark office, if they have a registered a trademark in Australia then you're toast.
sure, will do. but how can I understand, in the email, they said "Unless you are in the information technology industry, I do not think the use of our trademark in your domain name is a problem."? Does this mean, I might be allowed to use this?
You can always ask for clarification, at this point they're just notifying you. Like a good lawyer would do I would arm yourself with any information to protect yourself.
If you don't respond then they will take that as a "FU" and they will move to litigate against you.
I see...umm...
Nice that they actually acknowledge "Unless you are in the information technology industry, I do not think the use of our trademark in your domain name is a problem" instead of trying to strong arm everyone into giving up the domain.
Unfortunately I'm assuming you are in the IT industry though, so their non-strong-armedness isn't helpful to you.
Is it a common word?
The answer to what should I do is: depends
ignore it.
Yea, like @ree mentioned, no strong arming going on here. they come over pretty cool. I know nothing about the laws but I think it doesn't hurt to contact them and show them what you plan to run from that domain, if they don't mind it then it I see no problem. If they wanted to be dicks they could've taken that domain straight away right?
Perhaps you could sell the domain to them if it doesn't have too much value to you? you never know if they sooner or later change their minds regarding obtaining it.
worst case they will take or cancel your domain, if you are rich then can be more. it does say if IT industry they will ignore it, but you should confirm same with them, seems like they just don want to use name by you in same space as them
That makes the OP a cybersquatter, also known as a dick.
If he pulls that move, the trademark holder would be right to dispute the domain on that basis alone.
weird, it seems fair to me? I mean, they're obviously afraid that @kyaky uses the domain in some ways, they could be sure that it wont be abused if the domain owner proposes/negotiates a fair deal, atleast you'd give them a chance to buy it without lawyers and stuff. I dont see why you would be a dick for offering that option.
He could offer it for a really cheap price. Who says that he needs to charge hundereds?
@kyaky
Yea I would suggest that you contact them back and in a nice way say something along the lines of "Well my site so-so would be used for so-so, but if your client would be interested in buying it just reply back with a price which seems fair"
Something alone those lines would be good I think, You would not come-off as a dick and they may offer to buy it or let you keep it.
As other's had said they did not seemed interested in strong-arm you into submission, so give them a chance so all partys are happy.
That's the most politest trademark notice I've read so far.
Congratulations. You just gave the shittiest advice ever.
Realistically, look into the legitimacy of their claim. Make sure that your site is unambiguously not related to their trademark. If they want to push it further, offer to transfer it to them for registration or a fair-market evaluation, whichever is more.
Also, it's not necessarily what country you're in that matters. What country the registrar is in, the company that manages the TLD is in, et cetera that counts. Wherever they can find jurisdiction is where they can try to obtain.
You have already verified that a trademark exists. If you want to reply, you should first and foremost check if this "Senior Counsel" has anything to do with the trademark owner. It may be a totally unrelated third party that will try to exploit you.
A legitimate company or patent attorney will include complete contacts: phone, street address etc. They will also contact you preferably by regular mail. The wording of the email sounds strange to me (I am not an attorney, but I am professionally involved in trademark issues), and there is no need to ask you any information in the first place.
The trademark purpose is to avoid consumer confusion. A trademark is only valid on specific countries, for specific purposes. The entire matter is regulated in a complex way and a simple email can't grant you any right. The trademark is either valid for the country and business scope (and you are in breach), or is void (and you may do what you want without asking any permission). The key issue is to recognize if the trademark is valid in your case. You may try to read some literature (there are plenty on the internet for free), or hire an expert.
(I thanked you by mistake: fat finger)
IANAL either but as a journalist I can tell you that this isn't a strange letter at all; it's very savvy and follows the American Bar Association's recommendations about resisting sending C&D's whenever possible in favor of a lighter approach. An inquiry elicits a much more positive response than a demand.
Anyways, asking for legal advice on a forum (particularly this one) is a terrible idea. That said, it's hard to even give bad advice when you censored all the important parts. What the trademark is, who sent you the letter, and what company has the mark registered makes all the difference.
search patent or trademark, to see if is true
http://patft.uspto.gov/netahtml/PTO/search-bool.html
Can't you just register the same trademark in say India for like $50 and be ok to use your domain then?
If I were you, I would simply ignore that message until they'll open domain dispute as described in icann https://www.icann.org/resources/pages/udrp-2012-02-25-en
Seconded