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).

 

[gilescoley]

@MapleDots

We are not talking about AppleKit or AppleSauce, that would be 100% fine provided there is no TM on the phrase, as it all about usage

I am not assuming anything, you posted the example not me, you already said if you owned "Oogle Glasses" you would fight them, that is the part where you would have any issue (

)

Anybody can see the intent here, so I am not referring to AppleSong, AppleKit, AppleSauce etc etc, they If you have a look, I made it clear in my first post where you would be infringing on a TM. Post it in the legal section and ask the question and there are some highly regarded domain legal experts that make some comments.

Either way you are on a domaining forum and the last thing you want to do is to accuse members of being squatters.

I say it as I see it on here and most members will, if people say they will fight a UDRP when you can obviously see their intent and bad faith, then that how it is. Its just advisable to stay away form names that might be infringing, rather than getting something close to a TM and trying to sell it to the TM holder.

 

[MapleDots]

If Oogle glasses are glasses meant for swimming and not technology based then Google has no claim. oogle as in ogle and glasses as in on your face.

Why would you not fight it? Why would you not ask for a fee to give it up?

Your last statement is also incorrect, what you think is bad faith is not necessarily so. That has to be proven before you can say that. Technically most words in the english language have a trademark of some sorts. It is how you use and combine them that matters.

Sorry but you are wrong, calling it bad faith is not the case, we invest in names specifically to sell and make money. We speculate and hope someone will buy our name. Just because a UDRP is filed does not make it true. Half of the UDRP's are lost and half are won. The claimant must show the name was registered in bad faith and used in a similar fashion as the trademark.

If I owned Oogle Glasses I would not worry for a second that google would win. If Google contacted me I would say its on my list to develop but I have a few projects ahead of that. If they asked me my intention of use I would say no comment because it is a project I am developing.

None of which fits your argument and you are still implying the OP registered in bad faith. I will not draw that conclusion because he invested in the name to resell. If he truly is infringing then he has to decide to give it up or not. If it is only a loose comparison to a trademark then the OP is well within his right to ask for a fee to let them have the name.

 

[gilescoley]

Ok, good luck with that, but we see this all the time on here, anybody can see the intent and I can assure you that using the example I mentioned, you wouldnt win.

 

[Want2learn]

I think it is a tricky/delicate situation. If we aren't careful, as @MapleDots has alluded to, we could find any thing as a TM infringement. Businesses have more resources than most individuals and big businesses have much more than smaller businesses.

I see creativity in what @MapleDots is saying. Isn't that the entrepreneurial spirit?

Take AtlantaRealEstate.com Together lets say it is trademarked. If JohnnyFootball can be trademarked I think anything can. Now some might say that coming along and reg AtlantaReal.Estate is infringement. Maybe it is. Maybe it isn't. Is AtlRealestate.com or AtlReal.Estate actually better?

I see lots of shades of gray in this area.

 

[MapleDots]

Ok, good luck with that, but we see this all the time on here, anybody can see the intent and I can assure you that using the example I mentioned, you wouldnt win.

I won twice, so I speak from experience. Maybe next time not but that is what its all about.
Domaining is a risky business no matter how you put it. I have someone trying to reverse hijack one of my domains as we speak.

 

[gilescoley]

All good, but I bet it wasn't with a name like OogleGlass.com? That's where the issue would be. OoglePlumbing.com or GoggleTours.com would be fine.

It certainly be a risky business

 

[MapleDots]

Mine were direct hits on a business name but I was using them for different purposes, that is allowed under the law.

Example

Prestige Auto Service

Prestige Auto Service 1994

Both are legal and Prestige one lost the case against Prestige #2 even though prestige #2 only uses the 1994 on official legal documents.

Factual in Canada

It all depends, each case is unique. I would bet bottom dollar that a swimwear company that registers a name like OogleGlass and says it is a fog free set of goggles would be in no danger of losing against the google glass trademark. So if I said I was developing a use for OogleGlass I would certainly not mention it to Google. If asked I would say it is under development for a different purpose than what Google is using it for. Only at the very end, when I was presenting my case, would I divulge my information. Anytime you deal with a UDRP the less you tell the claimant the better off you are. Divulge what you need to when the time arrives. Google must build a case against you, if you give them no ammunition they will have a hard time making a case.

So you see, still not cut and dry.

PS. Of course all bets are off when some newbie registers GoogleGlassWear.com

 

[gilescoley]

I would bet bottom dollar that a swimwear company that registers a name like OogleGlass and says it is a fog free set of goggles would be in no danger of losing against the google glass trademark.

As I said from my first post, its about usage, intent and bad faith

 

[maya-zir]

what is the problem?
ask them show you some document proves this is trademark.
check it or ask icann or your provider check the issue.
if it is trademark, so drop it..thats all

 

[Rainmaker-NL]

The name you got is a generic name in Dutch. Every year again we buy them in large quantities around christmas time.

if someone registers red.online, he or she will not be any trouble, unless they start to offer phone deals on the website or have ads on them that have something to do with telecom sunscriptions.

In my opinion you only have to worry if you did or intended to do anything that touched their line of business.
This is isnt any legal advice from my side however, although I am Dutch and somewhat in the legal business.....

 

[skyz21]

Tell them to pay the price and you will happily transfer the domain :P

 

[Pretty]

i happened to register 2 names today UnderstandGoogle.com and GoogleWinners.com which I thought would be great names for seo companies or seo blogs.

If, say, I develop a guide on Google Searches on the domains, would this be infringement on Google's TMs too? If so....the big corps, by registering a TM, basically have automatically secured all domains with their name in it, registered or unregistered........................

that doesn't seem too fair to me hmm

 

[gilescoley]

@FrankSchillingStatue

That is correct..you cant register names with "Google" in it.

Read through the legal section to get an idea in TMs

 

[Pretty]

@FrankSchillingStatue

That is correct..you cant register names with "Google" in it.

Read through the legal section to get an idea in TMs

Thank you.... but I did quite some searches, most keywords used with Google have already been used. You know...such as KnowGoogle.com LearnGoogle.com GoogleMasters.com etc. I don't believe every single one of them are registered by Google. In fact, I think most of them are registered by domainers.....

 

[gilescoley]

Yeah...unfortunately there are a lot of people that infringe on trademarks because they dont know any better..it doesn't make it right..just do the right think and keep your reputation in tact..regging trademarked names is frowned upon in the domain industry..it gives us all a bad name.

You have indicated bad faith already by putting "Make an Offer" pages up on your Google names, that has given them enough ammunition to come after you, I would take those down asap, its asking for trouble, could you mess with a bigger fish?? lol

Have a look at the those other "Google" names, none have been sold or are being used, just sitting there doing nothing, because people wont touch them. You cant even list them on Godaddy or Sedo because of the TM issues, its a waste of time and money and your reputation.

 

[Pretty]

gilescoley, i would take down the offer page right now. Thanks for your insights, your reputation talk was really well-said. :D

 

[gilescoley]

gilescoley, i would take down the offer page right now. Thanks for your insights, your reputation talk was really well-said. :D

Wise choice, its just not worth it for a name nobody will purchase from you, not for decent money anyway..good luck

 

[Micklepickle]

Yeah...unfortunately there are a lot of people that infringe on trademarks because they dont know any better

Interesting...without diving deeper into this subject, I'm curious to know your opinion on say... Buy-A-Lexus.com or; BuyorLeaseLexus.com? Could someone other than Lexus register these domain names?

 

[Kate]

Possibly, if you run a dealership for example. Some TM holders allow affiliates to use their brand names in domain names, others disallow it. It's better to have prior permission though.

 

[gilescoley]

Pretty much what @Kate said above

 

[Micklepickle]

Possibly, if you run a dealership for example. Some TM holders allow affiliates to use their brand names in domain names, others disallow it. It's better to have prior permission though.

Pretty much what @Kate said above

What if it's nothing that has been directly contracted from Toyota/Lexus? What if it's somebody who just decides one day to start an independent business, not part of the franchise, where his primary activity will be in general automotive brokering? One of the makes he wishes to broker will be Lexus, but again, not under a franchise or Licensed agreement.

 

[gilescoley]

where his primary activity will be in general automotive brokering?

This is the problem, its in the automotive industry? This is a blatant infringement on the Toyota TM

 

[Micklepickle]

This is the problem, its in the automotive industry? This is a blatant infringement on the Toyota TM

The industry has little if anything to do with it.

As to the specific idea of TM violations: One might think so when trying to generalize the concepts of IPL, but in this instance: Toyota Motor Sales, USA v Tabari (9th Circuit, 2010), Toyota had lost. They also lost a big decision in the use of Prius in India, which many found surprising due to the international recognition that the Toyota Prius enjoys. In each of these two examples, the decisions were completely unrelated but have provided outstanding case study examples.

The point is that we can't and shouldn't try to generalize TM law. I think that in a forum such as this, at the core reasoning behind the purchase/registration of a domain it should be understood whether the domain is being purchased as part of an Entrepreneurs endeavor to build a specific business venture/model, or if it is, in fact, a simple transaction of cybersquatting (infringing on a tradename for the purpose of bad intent).

To label all domains under a general blanket of potential TM infractions, simply because they share a similar name, is insufficient to proclaim it an infraction and define it as a bad domain name.

To label a UDRP as the all knowing throws away all reasonable legal challenge, and opportunity for a broad and fair market.

There's much more at play, but I think understanding the differences between buying/registering to sell or buying/registering to build something is a great place to start since it significantly contributes to successfully utilizing the domain name vs positioning yourself towards imminent failure and substantial monetary loss.

After reading the many threads on this forum, I've come to realize that both entrepreneurial mindsets (domainers and concept builders) are on this system, which is why I suggest approaching the heavily opinionated TM issues, delicately. It's not as black and white as the majority of inexperienced try to persuade.

But what do I know, I'm just a simple monkey trying to enjoy a smoke.

 

[gilescoley]

The industry has little if anything to do with it.

Usage (the industry) has everything to do with it, have a look at past UDRP's and see the winners and losers in those cases and that will give you an indication on how TM laws work. You have picked out 1 or 2 exceptions and used them as examples but there are always exceptions to the rule, 99.9% of these blatant cases are won by the TM holder..I can show you a lot of similar cases where the domain holder lost the domains....try starting an Automotive business using the word Toyota and see how it pans out, also ring Toyota and ask them if they mind...I can tell you their answer already.

To this day, I still cannot understand why anyone would want a domain with the word Toyota, Honda or Ferrari in it? (or any other TM for that matter)

 

[Micklepickle]

Usage (the industry) has everything to do with it, have a look at past UDRP's and see the winners and losers in those cases and that will give you an indication on how TM laws work.

haha I've studied IPL in a formal academic environment. Funny.

But what do I know, I'm just a chimp enjoying a smoke.