I got a "turn it over or else" kind of an Email. What to do?

[Allysin]

Hello everyone. I got my first ever threatening letter (please see below) and I was wondering if anyone would know what I should do? Any suggestions are greatly appreciated. I should mention that THEdomainIownDOTonline = ABCXYZ.online

THEdomainIown.ONLINE - Trademark infringement - AABBCCDDEE


Dear Sirs,

On behalf of our client XYZ International we ask your urgent attention to the following matter.

We have been informed that you have registered the domain name THEdomainIown.ONLINE.

ABCXYZ is the trademark of XYZ International. It has been in use for many years already as the name of their businesses in many countries worldwide.

XYZ is the world’s largest retail chain with over 12,000 stores in 42 countries namely Angola, Australia, Austria, Azerbaijan, Belgium, Botswana, Cameroon, China, Croatia, Denmark, France, Germany, Georgia, Greece, Hungary, India, Indonesia, Ireland, Italy, Japan, Malawi, Mauritius, Mozambique, Namibia, Netherlands, Nigeria, Norway, Oman, Poland, Portugal, Qatar, Russian Federation, Seychelles, Slovenia, South Africa, Spain, Switzerland, UAE, Ukraine, United Kingdom, Zambia and Zimbabwe. In many of these countries there are ABCXYZ stores.

See for instance in:
.........

Some of the registrations of the ABCXYZ mark are enclosed for ready reference. Note that there are many more all over the world. All owners mentioned in the enclosed list are partners of and often shareholders in XYZ International.

So with the THEdomainIown.ONLINE domain name registration you are infringing the trademark and company name rights of our client.

You are therefore urgently requested to transfer this domain name to our client.

If you are not prepared to transfer the domain name voluntarily our client shall not hesitate to take all steps that are necessary to have this domain name cancelled and ask for compensation for damages and legal costs for which all rights are being reserved.

We look forward to receiving your confirmation as soon as possible but no later than May 4, 2017.

After having confirmed that you will cooperate with the transfer we will ask the domain name manager of XYZ to contact you for the transfer process.

Yours sincerely,

name of the Dutch person

name of the Dutch person

European Trademark & Design Attorney / Associate Partner

This e-mail message is from N.V. Nederlandsch Octrooibureau or NLO Shieldmark B.V. or NLO bvba and is intended only for use by the addressee. The information contained within this e-mail, including any attachments or previous e-mails, is confidential and may contain confidential or privileged information. Consequently, if you have received this e-mail unintentionally, it is of the utmost importance for your own legal protection to notify us immediately either by telephone (+31-70-3312500), facsimile (+31-70-3527528) or by return e-mail to the sender at the transmitting e-mail address and to delete or erase this e-mail. Warning: In rare cases e-mail messages may not be delivered adequately. Therefore, if your e-mail contains important instructions, please make sure that we acknowledge receipt of those instructions.

All offers from N.V. Nederlandsch Octrooibureau, any requests for an offer and all agreements concluded and to be concluded as well as any other legal relationship with N.V. Nederlandsch Octrooibureau are exclusively subject to the General Terms and Conditions of N.V. Nederlandsch Octrooibureau, see ...... N.V. Nederlandsch Octrooibureau is registered with the Dutch Chamber of Commerce under no. 27263335, their General Terms and Conditions are filed under 27263335.

All offers from NLO Shieldmark B.V., any requests for an offer and all agreements concluded and to be concluded as well as any other legal relationship with NLO Shieldmark B.V. are exclusively subject to the General Terms and Conditions of NLO Shieldmark B.V., see ..... NLO Shieldmark B.V. is registered with the Dutch Chamber of Commerce under no. 24176200, their General Terms and Conditions are filed under 24176200.

All offers from NLO bvba, any requests for an offer and all agreements concluded and to be concluded as well as any other legal relationship with NLO bvba are exclusively subject to the General Terms and Conditions of NLO bvba, see ..... NLO bvba is registered in RPR Gent – Gent department under BE 0633692486.

The General Terms and Conditions can be downloaded or will be forwarded upon request. If applicable our services are regulated by IPReg (UK).

 

[decades80]

so to prove bad faith those TWO must be happening together?

and not just "registering the Name of TM Holder"?

if that's the case why do these lawyers still proceed with such things knowing they don't have both pieces?

I guess because it's no big deal to them. just a simple standard C and D email and maybe snail mail.


if a URDP does happen. what's the worse case scenario? if all it means is surrender your domain. I'm ok with that. but there are horror stories like surrender your domain plus Damages.

how are Damages decided? is it up to the court? or the complainant?

if the domain was never maliciously used by the owner just pointed to a parking page or blank page. how can there be damages?

or are the "damages" the lawyer fees of the TM holder?

It really depends. I think when you use Microsoftabc.com even using it in an agriculture section would not bring you the case to defend an UDRP. If the name is at least somehow generic, BUT there is a TM for products under this generic name, its hard to claim that the name is generic like apple and you will use it for escort services. So it really depends upon keywords. Here is the main question why the OP has chosen an .online domain and not something similar which was available in .com?

 

[WhoaDomain.com]

ok ok. say the domain is Cupcakes.com(example only) and for whatever reason it's for mature theme industry?

but then someone owns Cupcakes.World and they haven't developed yet

see these new TLD's really do complicate things as you can secure Generic single word domains that is TM by big corps which the Big Corps haven't reg. probably because they feel "safe" that no one has the guts to register since they own a few TM's for it.

to answer the OP this is why most corps don't registered their TM in all the TLD's as they feel "safe" that it won't be reg.

You can "cry" Generic! but it's an EMD plus single word for the TM holder's .com. yet the word can be used for say a bakery website or other things related.

what then?

 

[decades80]

ok ok. say the domain is Cupcakes.com(example only) and for whatever reason it's for mature theme industry?

but then someone owns Cupcakes.World and they haven't developed yet

see these new TLD's really do complicate things as you can secure Generic single word domains that is TM by big corps which the Big Corps haven't reg. probably because they feel "safe" that no one has the guts to register since they own a few TM's for it.

to answer the OP this is why most corps don't registered their TM in all the TLD's as they feel "safe" that it won't be reg.

You can "cry" Generic! but it's an EMD plus single word for the TM holder's .com. yet the word can be used for say a bakery website or other things related.

what then?

Avatar, actually its not the domain the primary reason for an UDRP but to give a lecture, expensive one if possible. They want your domain at absolutely 0 cost coming from your side. They would rather spend thousands of Dollars in the UDRP than to give the single cent to domain owner.

 

[MapleDots]

I had a similar situation where I got a warning letter. I considered most options in this topic but decided to try something completely different.

I responded back and said I disagree and the registered name does not infringe with my intended use. I also stated the domain was not in my immediate plans to develop and that I had other domains with higher development priority. I stated I could be convinced to release the domain for a token purchase fee of $1000.

I stated that the odds of them successfully fighting me are 50% at most and even then they have to prove I had intent to harm their company to collect any damages. I told them the most cost effective way for them to acquire the domain was to pay a token fee. I explained that this is the equivalent of a couple hours cost for the average corporate lawyer and that it would save the company a lot of money as opposed to litigation.

They sent me another legal letter I had to sign that stated I give up all claims to the domain name for a fee of $1000.

They emailed me back just over two months later and bought the .ca version for the same amount of money when they realized I owned it as well.

Sometimes it is cheaper to go with a small payout and cut your losses.

Worked for me, and quite honestly if they had emailed me I would have sold both anyways because I had them scheduled to drop. I loved playing the odds right to the bitter end.

 

[WhoaDomain.com]

I had a similar situation where I got a warning letter. I considered most options in this topic but decided to try something completely different.

I responded back and said I disagree and the registered name does not infringe with my intended use. I also stated the domain was not in my immediate plans to develop and that I had other domains with higher development priority. I stated I could be convinced to release the domain for a token purchase fee of $1000.

I stated that the odds of them successfully fighting me are 50% at most and even then they have to prove I had intent to harm their company to collect any damages. I told them the most cost effective way for them to acquire the domain was to pay a token fee. I explained that this is the equivalent of a couple hours cost for the average corporate lawyer and that it would save the company a lot of money as opposed to litigation.

They sent me another legal letter I had to sign that stated I give up all claims to the domain name for a fee of $1000.

They emailed me back just over two months later and bought the .ca version for the same amount of money when they realized I owned it as well.

Sometimes it is cheaper to go with a small payout and cut your losses.

Worked for me, and quite honestly if they had emailed me I would have sold both anyways because I had them scheduled to drop. I loved playing the odds right to the bitter end.

that's pretty ballzy Maple! you do realize they could have turned around and report you to WIPO and say you tried to offer it to them for a price?

it is a form of blackmail in a way. surprised they caved.

probably because you found the "sweet spot" price.

I wonder if you would have asked for more if things would have gone south?

 

[decades80]

I had a similar situation where I got a warning letter. I considered most options in this topic but decided to try something completely different.

I responded back and said I disagree and the registered name does not infringe with my intended use. I also stated the domain was not in my immediate plans to develop and that I had other domains with higher development priority. I stated I could be convinced to release the domain for a token purchase fee of $1000.

I stated that the odds of them successfully fighting me are 50% at most and even then they have to prove I had intent to harm their company to collect any damages. I told them the most cost effective way for them to acquire the domain was to pay a token fee. I explained that this is the equivalent of a couple hours cost for the average corporate lawyer and that it would save the company a lot of money as opposed to litigation.

They sent me another legal letter I had to sign that stated I give up all claims to the domain name for a fee of $1000.

They emailed me back just over two months later and bought the .ca version for the same amount of money when they realized I owned it as well.

Sometimes it is cheaper to go with a small payout and cut your losses.

Worked for me, and quite honestly if they had emailed me I would have sold both anyways because I had them scheduled to drop. I loved playing the odds right to the bitter end.

This could actually work with some small companies, but large corporations play by different rules.

 

[MapleDots]

@Avtar629 Trick is to keep the amount very low to not make it worthwhile to pursue.
It was not blackmail, they contacted me and I simply stated I had no immediate plans to develop and they could acquire for a nominal fee.

@decades80 - it was a big corporate company

 

[WhoaDomain.com]

@Avtar629 Trick is to keep the amount very low to not make it worthwhile to pursue.
It was not blackmail, they contacted me and I simply stated I had no immediate plans to develop and they could acquire for a nominal fee.

@decades80 - it was a big corporate company

I guess $1000 is the sweet spot huh? lol

 

[decades80]

This is very odd if you look at the previous UDRP decisions.

 

[MapleDots]

This is very odd if you look at the previous UDRP decisions.

A corporation uses lawyers for everything, using my way you have a 50% chance of coming out ahead because for them to file would have cost them significantly more in legal fees.

I did it not once, but twice with the same company.

 

[decades80]

A corporation uses lawyers for everything, using my way you have a 50% chance of coming out ahead because for them to file would have cost them significantly more in legal fees.

I did it not once, but twice with the same company.

Try to do it with Apple, Microsoft, FB, Google, Marlboro or Playboy if you dare

 

[MapleDots]

mike rowe soft - traded for an x box

Trust me it can be done - each situation is unique

If I owned Oogle glasses and google threatened me you are damn right I would try it.
If I owned Goggles glasses I would also try it.

gog·gle
ˈɡäɡəl/
verb
3rd person present: goggles

1. 1.
   look with wide open eyes, typically in amazement or wonder.
   "“What in the world are you goggling at ?”"

noun
plural noun: goggles

1. 1.
   close-fitting eyeglasses with side shields, for protecting the eyes from glare, dust, water, etc.
2. 2.
   a stare with protruding eyes.

If I owned google glassware I would probably give it up.

 

[lock]

If at the time of the trademark there may have been no way possible of knowing what the translation of the name or if one existed. If the translation is just the random site it equated to when it could never have been predicted at the time. It would just mean they will be the end user and you are the seller as they could never predict it would equal? All; pie in sky angles but it may make a difference.

 

[Micklepickle]

Actually its not so complex.

Hmmm...interesting perspective, but in actuality, it's not that simple. Anything to do with IPL is not that simple and many factors are typically in play.

There are so many elements to consider, that any action or counteraction taken on the part of proposed trademark infringement will require a lot of research and reference, meaning it's a very complex area of law. Off the top, you have the Lidham Act, UDTPA and of course the likelihood-of-confusion test (applied by the courts - commonwealth law), among the other treaties such as The Paris Convention, Mandrid Protocol and the Trademark Law Treaty (TLT), followed by example after example of case law.

A simple aspect such as geography has the potential to have massive impact: does the mark have significance in their region, are they a “first to file” country (ref: Toyota vs Prius.), the foundation of the trademark in question (registered products/services: wares), timelines of registrations/filings, and so on.

The point is that it's not as simple as you claim, but maybe that's just from the perspective of someone who actually studied this discipline (IPL). I found it much more complex than you suggest.

Anyway...it's not a topic I enjoy discussing in a forum, and I always say the same thing...unless people have studied it in a formal academic setting, its a topic best left for the professionals who have. Interpreting law isn't as simple as one might think.

If anyone is having an issue with a potential infringement action, do the right thing and contact an IPL expert. It's the cost of dong business.

In fact, I believe it's prudent that all 'professional domainers' either have a firm on retainer or at the very least signup for a CyberLaw course at your local college or night school. I personally believe that it's just good common sense to have a familiarity with all business law, but at the very least, if you can't afford the time or financial costs to take business law courses, at the very least take an introduction to interpreting cyberlaw and the basics of IPL.

And for you budget minded domainers, North American based, go find a service like PrePaid Legal Services. You can find them with limited monthly budgets (sometimes as low as $25/mo), they provide document review services (so many documents per month), in-person/phone consultations (so many hours per month) and then discounts on their services should you need to escalate matters further. Many larger firms are part of these umbrella services. Prepaid legal are ideal for those of you who can't afford to place a retainer and you don't have a couple of thousand or an extra 5 to 10 hours/week to study IPL. A prepaid legal service would be perfect for you. Due diligence. Be smart. Be prepared.

But what do I know, I'm just a simple chimp enjoying a smoke. It's past my bedtime.

@Avtar629 haha How are you? How's the health? The last we spoke you were in the hospital a few months ago. I hope everything is back to normal with your health and 2017 has started well.

 

[gilescoley]

If I owned Oogle glasses and google threatened me you are damn right I would try it.
If I owned Goggles glasses I would also try it.

This is why us domainers get a bad name, we are already frowned upon by a lot of businesses out there, rather stay away from trademarked names or anything close to TMs. Its just ridiculous and stupid that people go and register Goofle.com or Mivrosoft.com and think its ok for them to do that. Squatters are also frowned upon here at NP, so its just not worth your reputation in this business. Fighting andselling a TMname for $1000 is just silly, you might win but its not the way to do business, you might want to sell a name to them one day, Im sure they will remember what happened.You reputation is everything in this game and because its online and no face to face contact is made, its even more crucial to act with integrity and professionalism in all your dealings

Its really and simple and just a bit of common sense is needed. If its a company name and they have it trademarked, don't register it, and dont register anything similar to it thinking the name will be worth something or you might get typo traffic, it wont be and you will end up dropping it anyway.

Good luck to the OP in whatever he decides

 

[MapleDots]

This is why us domainers get a bad name, we are already frowned upon by a lot of businesses out there, rather stay away from trademarked names or anything close to TMs. Its just ridiculous and stupid that people go and register Goofle.com or Mivrosoft.com and think its ok for them to do that. Squatters are also frowned upon here at NP, so its just not worth your reputation in this business. Fighting andselling a TMname for $1000 is just silly, you might win but its not the way to do business, you might want to sell a name to them one day, Im sure they will remember what happened.You reputation is everything in this game and because its online and no face to face contact is made, its even more crucial to act with integrity and professionalism in all your dealings

Its really and simple and just a bit of common sense is needed. If its a company name and they have it trademarked, don't register it, and dont register anything similar to it thinking the name will be worth something or you might get typo traffic, it wont be and you will end up dropping it anyway.

Good luck to the OP in whatever he decides

Oogle or ogle and Goggles are accepted terms totally different from Google.
Goggles are like glasses

This does not give domainers a bad name, it is a wise business decision to register something that could be put to use. It does not infringe in trademark.

On this one I will have to disagree with you because I think the entire use of the .com database is to get creative when a name is already taken. Sub a "y" for an "i" etc.

I think you need to double check the term squatter because that is more like someone sitting on your identical corporate name and holding out for a big payday. If I have a creative alternative name and you like it then you have to pay me for it. That does not make me a squatter.

Goggles are a prime example... Goggles.com is a resale potential site for swimwear glasses or technology glasses etc. Why would I be a squatter? Just because Google owns Google Glass?

What about OGLE... I can Ogle a pretty woman, or use it for bird watching. I can get creative and go with Oogle Birdwatching and still not infringe with Google.

I think you are oversimplifying it with your response.

 

[Dondomainer]

If is real, ask money for transfer.. i means, for you time ,like $100 for dedicated time in good faith..

 

[Hypersot]

Oogle or ogle and Goggles are accepted terms totally different from Google...

You are right about those particular names but, what I think he's trying to say is about the case when one registers similar domains in bad faith, ie. to take advantage of a mistype or for the similarity of said names to a huge brand (like Google in this case).

 

[gilescoley]

Ok good luck..im talking about obvious infringements like Goggle Drive or Goggle Search etc..if you had Goggle Plumbing then obviously that would be ok ...as I said...its just common sense here

You need to read through the legal section on here to get a grasp of what TMs are about and how they work.

 

[MapleDots]

Ok good luck..im talking about obvious infringements like Goggle Drive or Goggle Search etc..if you had Goggle Plumbing then obviously that would be ok ...as I said...its just common sense here

You need to read through the legal section on here to get a grasp of what TMs are about and how they work.

HeHe

Hopefully you are not directing that at me, I assure you I am completely aware of what is and is not trademark infringement.

 

[MapleDots]

You are right about those particular names but, what I think he's trying to say is about the case when one registers similar domains in bad faith, ie. to take advantage of a mistype or for the similarity of said names to a huge brand (like Google in this case).

A mistype is not trademark infringement unless used for similar purposes where it implies a relationship similar to the trademark holder.

Facebook and Facelook can only be argued if I use it similar to a social media site, even then it would be a 50/50 type of argument. These situations are quite complex and I have seen people win where I never thought they would and I have seen people lose who I thought had a clear case.

Again, just because someone wants the name does not give him a right to it. Just the same as anyone registering a name does not have a right to it if he does so in bad faith.

Always complex and my motto is I will give up a name if I had no bites in a year but I will usually ask for a small amount of compensation. Then again, I do not register trademarks but variations thereof are fair game.

 

[gilescoley]

@MapleDots

It certainly was..you are one that said its ok to sell a TM but keep the price low enough to stop them filing against you..you shouldn't be encouraging people to do that in here...that's the last ill post here...good luck

 

[MapleDots]

@MapleDots

It certainly was..you are one that said its ok to sell a TM but keep the price low enough to stop them filing against you..you shouldn't be encouraging people to do that in here...that's the last ill post here...good luck

See that's the problem, that's not what I said...

There are limited words in the English vocabulary and a trademark is only a trademark depending on that application. If Apple wanted my domain called AppleKit for their health kit launch then I would not be afraid. I would tell them they need to compensate me. If I owned AppleSauce I would tell them to take a leap but if I owned AppleSongs I would let them have it. I would never register Apple Songs to start with that is where you are assuming.

Now if I had one that was 50/50 like AppleKit then I would probably ask them for a small fee to acquire the name.

That is what I said... and meant. If it is a straight full trademark issue then the game changes.

And I stand by my remark that you can sell a domain if someone asks you to give it up. I have done it twice so there is no denying that it can be done.

Trademarks are not as cut and dry as you think, each case is judged on its own merits. I simply stated if you have a similar domain, and they want it, instead of fighting it ask for a nominal fee. That is good sound advice and does not make one a squatter.

You need to be careful who you call a squatter until you get all the facts and the OP has not revealed the domain, to assume squatter is a bit presumptuous at best. If you were implying that I am a squatter then you need to look at my portfolio before making such a comment. Either way you are on a domaining forum and the last thing you want to do is to accuse members of being squatters.

 

[Want2learn]

A corporation uses lawyers for everything, using my way you have a 50% chance of coming out ahead because for them to file would have cost them significantly more in legal fees.

I did it not once, but twice with the same company.

And quite frankly we as people get up in our feelings a lot! The bottom line to a business is the bottom line. Spending thousands of dollars to acquire the domain through the courts seems bad if the other option is acquiring the domain for less money.

 

[Want2learn]

Avatar, actually its not the domain the primary reason for an UDRP but to give a lecture, expensive one if possible. They want your domain at absolutely 0 cost coming from your side. They would rather spend thousands of Dollars in the UDRP than to give the single cent to domain owner.

If that is true then as a stock holder in the company I would be extremely upset. Business is business. I don't want my businesses that I have invested in going on moral crusades to prove their point.