Infringement BigDogs.com Vs BigDog2.com

[meljr]

Some guys that print t-shirts that I never heard of have sent me a nasty letter saying that I am in "Infringement of BIG DOG Trademark". Did I make a mistake in registering BigDog2.com. It looked open to me and I liked the sound of it. I hope I don't have to give up this name.

Any one else ever have a problem like this.

meljr

 

[Jeff]

Is there a ™ at: www.uspto.gov
Is the other party's site at BigDog.com or BigDogs.com?
There may be an issue here with the above information, and your future intentions/plans with the domain name. Was the letter from a guy, or from an attorney representing the site?
Thanks.

 

[meljr]

Looks like from attorney with wording as such here:

"It has recently come to our attention that you are operating a company under the name of “Big Dog 2” at the website address “BigDog2.com.” Big Dog Holdings, Inc. (“Big Dog”), a national manufacturer and retailer of graphic apparel and merchandise, is the owner of the federally registered trademarks BIG DOG®, BIGDOGS.COM®, and a family of related marks (collectively the “BIG DOG Marks”). We have registered the BIG DOG Marks in the United States not only in Class 35 for advertising and business, but in fourteen other international classes for hundreds of products and services (these include, U.S. Trademark Registration Numbers: 2,217,495; 2,000,495; 1,798,361; 2,206,261; 1,842,765; 1,459,306; 2,059,754; 2,078,155; 2,166,733; 2,257,394; 2,295,456; 2,348,494). Your use of “Big Dog 2” is an infringement of our BIG DOG Trademarks and other rights and is likely to create confusion among customers. "

and much more.

They have a site at http://www.bigdogs.com and also http://www.bigdog.com goes to their site. It looks like they are a big seller of t-shirts and clothing, however, my site have nothing to do with t-shirts.

I wonder if this would be the same problem for bigdog3, bigdog4 or bigdog99. I am a little confused at what to do.

meljr

 

[inflames]

i believe bigdog.com and bigdogs.com are owned by the same company my advice would be try to find out as much as you can about the trademarks , because they are just a clothing company whos has been trying to make a "name" for themselves for the past umpteen years. and it looks like they will do anything to gain attention IMO
best of luck to you

 

[Terry]

I'm not an expert on trademarks, but I don't think that your are infringing on a t-shirt companies business by registering domain names. I would think that Big Dog is a little too generic for them to have a case.

What comes to mind is the tons of money a certain toy retailer has spent trying to convince the courts that any body that uses "R us" at the end of a name is infringing on their toy business. The courts have said that as long as the use of "R us" does not deal with toys, then they don't have a case.

Still, do some research. There is a lot of trademark information on the net. Then, go from there.

This is not legal advise. Just my opinion.

 

[slipondajimmy]

well im looking at there trademark and im not a lawyer but im not sure i would sweat it to much. BIG DOG®, BIGDOGS.COM®, and a family of related marks (collectively the “BIG DOG Marks”)

but BIG DOG is listed like this .

Word Mark BIGDOG
Goods and Services IC 007. US 013 019 021 023 031 034 035. G & S: Power operated high clearance self-propelled sprayer for use in the agricultural industry
Mark Drawing Code (1) TYPED DRAWING
Serial Number 78128664
Filing Date May 14, 2002
Current Filing Basis 1B
Original Filing Basis 1B
Published for Opposition November 26, 2002
Owner (APPLICANT) WALKER AG EQUIPMENT, INC. CORPORATION IOWA 999 N. WASHINGTON STREET LISBON IOWA 52253
Attorney of Record MATTHEW KRIGBAUM
Type of Mark TRADEMARK
Register PRINCIPAL
Live/Dead Indicator LIVE

has nothing to do with the bigdogs.com clothing people

Typed Drawing


--------------------------------------------------------------------------------
Word Mark BIGDOGS.COM
Goods and Services IC 035. US 100 101 102. G & S: on-line retail store services featuring clothing, accessories, jewelry, home furnishings, toys, games, sporting goods, gifts and computer products. FIRST USE: 19960500. FIRST USE IN COMMERCE: 19960500
Mark Drawing Code (1) TYPED DRAWING
Serial Number 75677071
Filing Date April 7, 1999
Current Filing Basis 1A
Original Filing Basis 1A
Published for Opposition May 6, 2003
Registration Number 2740896
Registration Date July 29, 2003
Owner (REGISTRANT) Big Dog Holdings, Inc CORPORATION DELAWARE 121 Gray Avenue Santa Barbara CALIFORNIA 93101
Assignment Recorded ASSIGNMENT RECORDED
Prior Registrations 1459306;1798361;1842765;2000495;2206261;2217495;AND OTHERS
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE


my opinion is dont worry about it. but talk to a lawyer just to be safe

 

[armstrong]

I think TMs are relevant only within the same industry. So if you don't go into apparel, then you should be okay. Am no lawyer, so you might want to ask one.

If you search domainsurfer for "BIGDOG", you'll get 660 domains with that term; with "BIGDOGS", its 140. Highly unrealistic for them to go after them all, IMHO.

 

[Jeff]

Originally posted by CoolHost.com
... and your future intentions/plans with the domain name.

Good job with the site disclaimer:

This site is not affiliated in anyway with BigDogs.com or BigDog.com

You may also want to seek competent legal advice from an attorney who specializes in ™ law, as well ... and become familiar with some of the causes for one to potentially lose their domain name under an UDRP.
Link: http://www.icann.org/udrp/udrp.htm

"Confusingly similar" (could benefit the Complainant) and "Legitimate rights" (could benefit the Respondent) are of particular note, IMHO.
PS. I ain't no attorney.
Best of Luck.

 

[meljr]

Well, I have to tell you that I really appreciate this feed back.

It is kind of scary to get a really legal sounding letter via email.

This feedback gives me some hope that I might be able to keep my BigDog2.com name. I am not sure what I will do here, but at least these comments have given me some reason to think that I do not necessary have to just give into these guys.

Thanks again

meljr

 

[Jeff]

Note these decisions, as well!

Link: http://cyber.law.harvard.edu/cgi-bi...d=and&format=long&config=icann_udrp&restrict=

 

[Dr.Pepper]

I am wearing a big dog shirt. :p

 

[armstrong]

From the UDRP text ...
5. Respondents have registered at least fifty [50] domain names, including the domain name "bigdog.com" here in issue. Respondents utilize these names to funnel Internet traffic to its own website located at www.cyberlinks.com without regard to trademark registration.

This part makes me mad. If owning more than 50 domains (and using these for traffic) makes one look bad in UDRP, then serious domainers don't stand a chance.

 

[redhippo]

i shouldnt worry too much:tri:

 

[meljr]

Armstrong,

I checked the registration for BigDog1.com to BigDog20.com

and found that:
BIGDOG1.COM is not available.
BIGDOG2.COM is not available.
BIGDOG13.COM is not available.

I would guess that BigDog21 to 500 + are also untaken. I guess I wonder that if anything with a "BigDog" in was taking traffic from their site, wouldn't all these 500 + also do the same thing. If that is the case then, no one could rightly resister these names.

I know awhile back I check on IBM1.com to IBM500.com and although many were taken, there where a lot of IBMxxx.com names still unregistered. But I wasn't too interested in IBM319, and who would be?

I guess my question or observation here is, just what constitues a different name. It's like if someone with a lot of money owns part of the name, they get to call the shots. It's like if I registered the name MelvinConley.com and somebody else registered the name MelvinConley2.com, what the hell would that mean, that I just got a clone. The "2" to me is an open admission that you are not claiming any of the rights that belong to the #1. "2" is like second place or something.

Anyway I am trying to understand how to stay out of trouble when registering names, and am feeling very disappointed at the anrgry feeling of the guys who already got #1, and also want #2, and #3, and so on?????

meljr

 

[identity_00]

You always could just show pictures of "Big Dogs" literally.

 

[Zulfi]

If domain is not used for the same 'Class' of products or services, there is no breach of law. Mind it, various companies start such legal fights to get cheap fame. Depending upon the facts of the case, this is also called 'Reverse Domain Name Hijacking'.
There are 'Three' situations where serious claim can be proved under UDRP:
1) Domain is identical or confusingly similar to a trademark or service mark in which the complainant has the rights;
2) Complainant has no rights or ligitimate interests in respect of the domain name and
3) Domain name has been registered and is being used in bad faith.
In the administrative proceedings the complainant MUST prove that EACH OF THE THREE ELEMENTS are present.

Now, in this case element (1) is proven. Second and third elements shall be proven by the registrant's behavior. If he is using the domain for the same Class of products or services, his 'Bad Faith' would be proven. OR if he offered the domain for sale to the TM holder, Bad faith is proven.
As I referred above, if ANY OF THE THREE ELEMENT is absent, complainant can not claim the domain and it would be treated as 'Reverse Domain Name Hijacking' as prescribed under the ICANN rules.

NOW another side of various disputes:
Many registrants register domains for Trademarked names to sell them to TM holders. Since complaint filing fees is US$ 1,500/- so in many cases many TM holders offer price to that extent to DN registrants to get the domain and settle the case mutually. But when registered DN is a twisted form of their registered TM, they often go for case to avoid such situation with other registrants. By mentioning this I'm not doubting about 'Good faith' of meljr, but I'm simply mentioning the fact because in 2001 I defended one of my portal domain name on the same grounds and refused to accept US$ 1,500/-
(Please not I'm not an attorney but simply a domainer..)

Regards

 

[meljr]

Well, I have to give another double thanks to you all. I am not sure how this will all turn out, but it is certainly an interesting learning process. I have composed a "To Whom It May Concern" letter and emailed it to bigdogs.com. If you are interested in see the content of the letter, I have also published it at:

http://www.bigdog2.com/ToWhom.html

Thanks again everyone for the input.

meljr

 

[Jeff]

Excellent letter, Melvin.
Please do keep us posted with any response.
Excellent (non-legal and opinion only) comments posted here, as well.
-Jeff

 

[Grrilla]

Right on Melvin! Good response. Anyone can plainly see what you mean by 2BigDogs by simply looking at the photo.

 

[Terry]

Great letter. Maybe it should be copied to FAQ, with a disclaimer, of course.

 

[meljr]

Thanks all for the kind words about the letter.

Actually I am scared to death that I will get eaten alive and lose my site and all my hard work. Hopefully I will not have to come crying to the NamePro's crew to figure out how to recover in the event of a loss.

Terry, this letter is certainly less than a work of art, but if FAQ has any use for it, they are welcome to use it.

I don't think I could have come close to writing anything that even slightly resembled a response, with out the help of those that contributed to this thread.

meljr
meljr

 

[MSX]

[offtopic]
A friend of mine's dad was getting sued for naming his tree trimming/lawn service company Trees 'R Us....the company suing didn't get any money and paid court fines hehe, because they had no case .
[/offtopic]

You don't have anything to worry about mejr!

Best of luck,
Nate

 

[jj2ii3344]

Keep me posted as well!
Good luck!