Accusing Me of Unauthorized Use of Trademark - HELP!!

[nsg1000]

(sorry the title should be Accusing me of Unauthorized Use of Trademark)

Me and my partner were considering opening a skin products website. I searched for a domain name and saw that pureskinstore.com was available, and i registered it. We planned to sell skin products on the site.

That was a month ago. Today I received the following email:

From davis&leonard

On behalf of my cleint Salu, Inc., dba SkinStore I am writing regarding your use of the term "skinstore" in connection with the domain name pureskinstore.com. As the date of the letter the web page located at the domain name states that it will soon offer thousands of skin care products

Please be aware that SKIN STORE and SKINSTORE are registered trademarks of Sali, US REG.... As such, your use of the term "pureskinstore", "skinstore", or confusingly similar terms in connection with skin care related products or services constitutes actionable trademark infringement under 15 U.S.C 1114 unfair competition under California Business and Professions Code 17200, and related causes of action under US and california law

Accordingly, we demand that you immediately cease and desist form any use of the terms "skinstore", "pureskingstore" or any confusingly similar terms and transfer the domain name pureskinstore to us.

We look forward to a amicable resolution to this matter, and reserver the right to seek injunctive relief, damages, and all other available relief if such a resolution is not immediately forthcoming.



I couldn't believe this!! We just registered the domain, and basically said were "coming soon", and we get sent this letter. We had no intention of every infringing or breaking any law. What should I do? Should I just transfer the name to them to avoid the conflict? I just dont feel this is right, we never did anything to copy or infrige upon their copyrights. So far we have only sold one product on ebay!!!

[felgall]

Did you check for possible clashes between the domain name and existing company names before you purchased the domain?

How much have you invested so far in creating stationery etc and advertising for the web site?

Are you located in the same country as that company?

Do they have a domain name that contains the text "skinstore"?

The term actually sounds fairly generic/descriptive. Have you verified what rights that they actually have to the name?

If you haven't spent too much so far on setting things up so far the simplest solution might be to offer to sell them the domain for what you have spent so far and start over with a different name.

[croatiankid]

I also think the term is quite generic. Something about the email bothers me though: "immediately cease and desist form any use" "we demand that you immediately cease and desist form any use of the terms "skinstore", "pureskingstore" or any confusingly similar terms and transfer the domain name pureskinstore to us.".

[Lil_Red]

Originally Posted by croatiankid

I also think the term is quite generic. Something about the email bothers me though: "immediately cease and desist form any use" "we demand that you immediately cease and desist form any use of the terms "skinstore", "pureskingstore" or any confusingly similar terms and transfer the domain name pureskinstore to us.".

You've never made a typo in an email?

Salu, Inc of California owns skinstore.com, a website that sells skin care products. Davis & Leonard is an intellectual properties law firm which includes trademarks, etc. If I were you, I'd make an appointment with an intellectual properties lawyer in your area to see what recourse you have.

[Dave Zan]

Originally Posted by nsg1000

Me and my partner were considering opening a skin products website. I searched for a domain name and saw that pureskinstore.com was available, and i registered it. We planned to sell skin products on the site.

Unfortunately this is one time I'm not optimistic. USPTO reports they do have
trademarks for such terms selling skin products online, and their date of first
use is 10 years before you registered the domain name.

Up to you if you want to fight a likely losing battle.

[El Camino]

IANAL but I can't see you winning this one. I'd look for another name.

[nsg1000]

So far there has been no investment, but its very hard to find a good skin domain. I am still surprised that even though my name is different that they can still tell me to transfer the domain name.

As far as the typos, those were made by me when I retyped it into the post.

I guess I have no choice in this matter. I do not want to fight it for a $10 domain name. Do you guys think I really have to transfer the name to them though? Couldn't I keep it and just not sell skin products on it? If I were to transfer it to them, shouldn't they at least pay me the domain registration fee?

[Dan Grossman]

It's unlikely they'll do anything if you keep the domain but don't use it. What damages would they sue for? They can't lose customers and their mark can't lose value if you don't actually use the name you registered...

On the other hand, they can forcefully take it from you despite that since ICANN has a process for trademark owners to do that.

[Shyflower]

Originally Posted by Lil_Red

If I were you, I'd make an appointment with an intellectual properties lawyer in your area to see what recourse you have.

Either do what they suggest (transfer the domain to them), contact ICANN and ask them their views, or do what was suggested above.

[Dave Zan]

Originally Posted by nsg1000

Do you guys think I really have to transfer the name to them though? Couldn't I keep it and just not sell skin products on it? If I were to transfer it to them, shouldn't they at least pay me the domain registration fee?

Well no. You can keep it, but what else can you possibly use it for?

Realistically they don't have to do anything for you except sue you directly if
they felt like it. They might be willing at least to reimburse you the $10 fee if
you "ask nicely".

[felgall]

You could probably use that domain name for something that has nothing to do with skin products since then it would not be competing with their site in any way. Of course it may be hard to come up with something not related to skin products that would make sense to have use that domain name.

[El Camino]

Your realistic options are to give them the name or leave it as blank page and let it expire. The latter gives you time to think of any possible options.

[BlazeMiskulin]

If you decide to fight it, there's a Supreme Court precedent in your favor:
MOSELEY V. V SECRET CATALOGUE, INC.

From another lawyer's description of the case:

Under the FTDA, the owner of a famous mark is entitled to injunctive relief against another person's commercial use of the mark only if that use "causes dilution of the distinctive quality" of the famous mark. A mere likelihood of dilution is not enough under the federal statute.

The Supreme Court agreed that evidence of actual lessening of the capacity of a famous mark to identify and distinguish goods may be difficult to obtain. "Whatever difficulties of proof may be entailed, they are not an acceptable reason for dispensing with proof of an essential element of a statutory violation," the court concluded.

-- Richard C Balough

This is by no means a magic shield, it's just a tool to push back with. Just "sounding similar" isn't enough, the "victim" has to show some sort of actual damage (e.g., dilution or tarnishing). But standing up to them means lawyers, legal proceedings, and possibly even a court battle. Honestly? Not worth it for a $10 domain.

My advice would be to do what the "big boys" are doing and come up with a nonsense word as your company name (e.g., Verizon, Google, etc.) Call yourself something like "NuVenti -- Your Pathway to Pure Skin" (that domain happens to be registered by Noventi LLC, but you get the idea).

[felgall]

Google isn't a nonsense word - it is actually a number.

10,000,000,000,000,000,000,000,000,000,000,000,000,000,000,000,000,000,000,000 ,000,000,000,000,000,000,000,000,000,000,000,000,000


Possibly they named their company after the number in the hope that they would eventually havethat many pages listed in their results. The still have a very longway to go though as they are so far about 0% of the way to that total.

[rainmakr]

Maybe you could just sell relatives of Pure:

Pure's Kin Store.

[El Camino]

Originally Posted by felgall

Google isn't a nonsense word - it is actually a number.
10,000,000,000,000,000,000,000,000,000,000,000,000,000,000,000,000,000,000,000 ,000,000,000,000,000,000,000,000,000,000,000,000,000

Google is a made up word derived from a googol (=1*10^100).

[El Camino]

You could change the suffix from 'store' to something else: ie PureSkinCentral, PureSkinNet, PureSkinWebsite, PureSkinShop(?)

[exodo]

I am not in the US and my country obviously has a different legislation but if I were to use common sense... For me it sounds ridiculous that a company is able to register a generic term like "skinstore". Does this trademarking apply to the entire US or just to California?

"Skin" and "store" are two very generic words. It is not like you are launching an online software store and calling in "Mikrosofft" or a search engine called Goooglle and thereby trying to profit from someone elses good reputation (and unique name).

Also, in some countries these issues are also determined by how well known a brand/trademark is. If no one has heard of the product/brand/trademark you cannot really be accused of infringing upon it. I have never heard of the the skinstore and judging by your surprise it sounds like you haven't either.

Last but not least, consider getting a different name anyway. I am female and supposedly interested in buying your products but I am really put off by the name. To me it sounds like a site that is selling dead cowskin or something like that.

[Dave Zan]

Originally Posted by exodo

I have never heard of the the skinstore

Maybe because you're not in the US as you said?

Micro and soft are also two "generic" words. When used together, however, it
forms one of the most uniquely famous trademarks on the planet. (hint)

Then again, it's not a question whether a domain name is generic or not, but
how it's intending to be used. Apple is generic for the fruit, but it isn't if it's
for computer products.

The OP's bad luck (if one can even call that) is it just so happens a party has
managed to secure a registered trademark at the relevant office first. Unless
you're a risk taker, it might not be worth dealing with someone unreasonable
but might have the law on their side.

[BlazeMiskulin]

Just out of curiosity? When you chose the name pureskinstore.com, did you do a websearch on "pure skin store"? skinstore.com comes up as the top listing on Google, as well as a paid ad at the top of the page and an AdWords ad. #2 in the ranking is Pure Skin (a major seller of skin care products).

[Dave Zan]

Originally Posted by BlazeMiskulin

Just out of curiosity? When you chose the name pureskinstore.com, did you do a websearch on "pure skin store"? skinstore.com comes up as the top listing on Google, as well as a paid ad at the top of the page and an AdWords ad. #2 in the ranking is Pure Skin (a major seller of skin care products).

And there you go. Practically end of story.

[cranial-bore]

Doesn't sound like it's worth fighting to me. I'd ask them for a $50 fee to reimburse yourself for the registration and handling costs and transfer the domain to them. Mention that you've acted in good faith with no intention of infringing their intellectual property.

[exodo]

Originally Posted by Dave Zan

Micro and soft are also two "generic" words. When used together, however, it
forms one of the most uniquely famous trademarks on the planet. (hint)

Haha, you are so right. Didn't think about that.

Is skinstore a wellknown brand in the US?

[hughesa]

I think it's ridiculous. Pureskinstore.com is different to skinstore.com. Tell them it's a different name and they should f*u* off :-)

[kaethy]

Do you think that would fly if you tried pureamazon.com, or puregoogle.com?