Cease and Desist from Competitor while Demanding I give them my Domain... WHAT?!?

[VapeVendy]

So I recently received a formal-looking letter demanding that I change my product name and hand over my domain — or else they’d “pursue legal action.”
I’m not naming the sender, but the whole situation raised a question for me:

Can a business actually force another business to give up a product name or domain just by sending a cease-and-desist letter? They own the trademark but that doesn't give them a right to my domain, right?

Curious to hear from people who have gone through something similar.
Has anyone else dealt with someone trying to “claim” your brand or domain through threats instead of actual rights?
How did you handle it?

 

[moonshine7000]

Yes they can,that is why you should do a background check on the trademark

 

[ZeroDefects]

I had a similar situation happen. They can pursue Trademark infringement actions. They won't necessarily win but it will cost significant lawyer fees to defend. Not to mention, if they push for discovery, they'll go through your business related details (email, text messages, list of domains etc...) with a fine tooth comb.

In many cases strategy isn't to win, it's to bully you to willingly back out.

It's a time consuming process.

Note: I'm not a lawyer.

 

[VapeVendy]

Yes they can,that is why you should do a background check on the trademark

No, they cannot keep my domain. They are not entitled to it, I just got confirmation.

Just because you own a trademark does not give you rights to the domain.

 

[kalpana007]

Is this Microsoft?

 

[moonshine7000]

No, they cannot keep my domain. They are not entitled to it, I just got confirmation.

Just because you own a trademark does not give you rights to the domain.

Meta and Amazon does the same thing.If you want to pay thousands in legal fees and misery that is up to you.

 

[Deleted member 731332]

No, they cannot keep my domain. They are not entitled to it, I just got confirmation.

Just because you own a trademark does not give you rights to the domain.

Trademark holder absolutely can seize your domain if you are actively using a domain name that violates their trademark. Doing that is illegal.

 

[N604]

If you own the domain the only thing they can do is make an offer to buy it. You are the legitmate owner of the domain, even if you were owned "Google.com", google wouldn't be able to do ANYTHING about it except of buying it off you as it's their problem that they haven't purchased it beforehand.

Do not get chicken legs by it and tell them to simply, F off or make a generous offer.

In real life having a business name similar to another business name (legit and licensed) is allowed, for example "Meatbar" and "Sandwitch Meatbar", however the owner can claim in court that it "ruins" his reputation. In real life, without a domain, it works and the legal actions might get you to change the name. In the internet world, you don't own shit unless you own it.

 

[moonshine7000]

Trademark holder absolutely can seize your domain if you are actively using a domain name that violates their trademark. Doing that is illegal.

Drill some common sense in to this guy's head

 

[hostcay]

No, they cannot keep my domain. They are not entitled to it, I just got confirmation.

Just because you own a trademark does not give you rights to the domain.

Yes they can take it.
UDRP complaint and it’s handed over proving the trademark was registered before the domain name. We get these cases every 1-2 months and we are forced to it over by ICANN. A UDRP dispute takes couple weeks. This is in regards to ICANN TLDs. Same goes to ccTLD country code each registry has its own procedures we did have couple ccTLDs registry disputes but not many.

 

[ZeroDefects]

Also, if your profile pic and the website are related to your questions, there are significant changes happening in the USA that could be causing unrest and odd business behavior.

Also: 1 pound of each product for review copy?

 

[hostcay]

If you own the domain the only thing they can do is make an offer to buy it. You are the legitmate owner of the domain, even if you were owned "Google.com", google wouldn't be able to do ANYTHING about it except of buying it off you as it's their problem that they haven't purchased it beforehand.

Do not get chicken legs by it and tell them to simply, F off or make a generous offer.

In real life having a business name similar to another business name (legit and licensed) is allowed, for example "Meatbar" and "Sandwitch Meatbar", however the owner can claim in court that it "ruins" his reputation. In real life, without a domain, it works and the legal actions might get you to change the name. In the internet world, you don't own shit unless you own it.

Yes they can it’s called a UDRP dispute by ICANN. We get these cases every couple months and are forced to hand them over if the trademark owner wins.

 

[ZeroDefects]

Yes they can it’s called a UDRP dispute by ICANN. We get these cases every couple months and are forced to hand them over if the trademark owner wins.

https://www.icann.org/en/contracted...-name-dispute-resolution-policy-01-01-2020-en

 

[moonshine7000]

Out of curiosity is this domain an expired domain

 

[hostcay]

https://www.icann.org/en/contracted...-name-dispute-resolution-policy-01-01-2020-en

Yes that’s it. A ccTLD country code has its own registry (not icann) a list of registries websites for each TLD can be found on Iana DB website https://www.iana.org/domains/root/db
It will show you website, contact of that specific tld. On the specific tld website it will contain procedures for its own dispute resolution in regards to trademarks.
Copyright in other words a whole different scenario, if the website contains copyright material then the owner must contact the hosting provider where the content is hosted leaving the domain unaffected as long as no trademarks in the domain name itself.

 

[hostcay]

Oh I forgot to mention that trademarks are only valid in the country or region where the registry is based. For example, if a trademark is registered in the United States and the domain name is dot com which is controlled by ICANN, a United States company, then they can take action UDRP dispute. If the domain name is registered as dot ro, the Romanian root zone, then the trademark will not apply unless they have a European Union trademark. The same applies for Asian, African, European Union, United States regions and so on in both directions.

 

[ZeroDefects]

Yes that’s it. A ccTLD country code has its own registry (not icann) a list of registries websites for each TLD can be found on Iana DB website https://www.iana.org/domains/root/db
It will show you website, contact of that specific tld. On the specific tld website it will contain procedures for its own dispute resolution in regards to trademarks.
Copyright in other words if the website contains copyright material then the owner must contact the hosting provider where the content is hosted leaving the domain unaffected as long as no trademarks in the domain name itself.

This is high level but:

As it relates to trademarks, the accuser has to be able to prove there is harm or conflict being done to there business or trademark by using their brand/trademark (trade on their name).

eg:
Trade Mark Owner of something like: "Great Apples" and sells apples and does business as "GreatApples.com"

Are not entitled to claim stake through trademark infringement for:

GreatApples.me
A blog about the Sally and Tom Apples and their family vacations.
However, if they change their blog to be focused on selling crappy apples but calling them "great apples" there is cause for cease and desist infringement

 

[hostcay]

This is high level but:

As it relates to trademarks, the accuser has to be able to prove there is harm or conflict being done to there business or trademark by using their brand/trademark (trade on their name).

eg:
Trade Mark Owner of something like: "Great Apples" and sells apples and does business as "GreatApples.com"

Are not entitled to claim stake through trademark infringement for:

GreatApples.me
A blog about the Sally and Tom Apples and their family vacations.
However, if they change their blog to be focused on selling crappy apples but calling them "great apples" there is cause for cease and desist infringement

Once a dispute is filed, both parties receive access to a portal managed by a neutral third party where they can present their case and submit evidence via the portal. From all the disputes we have received, I do not recall a single one being won by a domain registrant, and that is out of more than one hundred thirty disputes filed but I cases are different by each and good chunk may have not even tried submitting any evidence.

 

[ZeroDefects]

Does the disputer have to show legal claim (judgement) or does the process offer a window for court/mediation proceedings to take place or is it mediated solely through ICAAN?

 

[hostcay]

Does the disputer have to show legal claim (judgement) or does the process offer a window for court/mediation proceedings to take place or is it mediated solely through ICAAN?

There is no such thing as court/mediation proceedings. Solely done via ICANN. Company presence, trademark application documents etc