Trademark infringement

[Rave]

I have just received a cease and desist order for one of my parked sites.

Reason 1. The name is too similar. I can not put the site name here but in short mine has an "i" infront of it e.g. iphone.com and their site is phone.com.

In my opinion they dont have a leg to stand on. The name is different, lots of people do this.

Reason 2: Passing off. My site is parked so the registration company has automatically inserted advertising that relates to the site name, which just so happens to be competitors of the site issuing the order.

I have since updated the dns records and have created my own holding page to say the site is for sale. There are no adverts.

In my response to the company I have offered to sell the site to them as a gesture of good will but I do not admit any liability and totally disagree with their cease & desist order.

Am I within my rights to do this? IMO it will cost them more in legal fees to contest. I will just simply cease and desist if it gets out of hand.


Any info would be much appreciated.

Thanks

Rave

[C. Ankerstjerne]

You will need to talk to an attourney about this, if you want a proper evaluation.

A lot will depend on which name it is (if it's a generic word, e.g. 'iHouse', you'll have a much better case than if it's a name or acronym, e.g. 'iIBM').

By having advertisement on the domain name (it doesn't matter whether it was yours or someone elses), you have used it for commercial purposes, and your offer to sell the domain name back to them can be considered proof of malicious intent.

As mentioned, get a lawyer, or just give them the domain if it's not important to you. If you go to trial, you risk loosing a lot of money. By giving them the domain for free, you'll certainly loose a small amount of money.

[Rave]

hanks for responding. I didnt put up the advertising in the holding page, the registrar did I have since created a home page for it now with no adverts.

The site isn't important but out of principal I will see what the other company will have to say. Just because they said "Jump" doesn't mean I am going to do it right away.

Thanx again.

[Ted S]

I have since updated the dns records and have created my own holding page to say the site is for sale. There are no adverts.

In my response to the company I have offered to sell the site to them as a gesture of good will but I do not admit any liability and totally disagree with their cease & desist order.

To be clear, IMNAL, but I do read up on this subject so I've got a few ideas -- you should seek counsel before assuming any of them are in any way actionable or accurate.

Buying a name which is not actively used and then offering it for sale to the company with that name, or a similar name, is generally considered cybersquatting as there is no other descernable reason you have the name (at least not that you can prove).

Whether or not you have infringed is going to depend on a few factors; mainly how unique their name is ("shutterfly" or "apple") and how famous it is ("google" vs "some random company"). If the name you bought is similar to a trademark that is unique or famous within its niche, you may have committed infringement. In the case of famous names, even more room is given to allow for "likelihood of confusion." That you have used it to make profit (ads were up, who put them up is less important unless you can prove you no profit of any sort from their being there) and are now trying to sell it is a bad thing if you did indeed infringe.

That "lots of people do this" does not make it any more or less legal. The law doesn't care how many people speed -- speeding remains illegal.

But as we don't know the name it's hard to have any idea of what really is happening. At this point you've already communicated which always puts you out on the line so I would suggest you contact an attorney, if you want to keep the name.

Keep in mind that they are obligated to defend their trademark and if it's a large enough organization, it may not cost them much of anything to sue you (in house counsel is already paid for). Yes it's sounds easier to buy the domain and make it go away but if you tick off the attorney that may not be what they decide to do.

[C. Ankerstjerne]

but if you tick off the attorney that may not be what they decide to do

Plus, the company may use you as training for newly employed attorneys, or wish to set an example. There can beplenty of reasons to sue you aside from the purely financial ones.