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

[VapeVendy]

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

What if the trademark is made on a PRODUCT DESCRIPTION? For example, you can place a trademark for "water" but you cannot restrict people from using that in the name of products.

 

[arib223]

Yeah, that sounds stressful. a cease nd desist isn’t a court order though it’s more of a scare tactic sometimes. If your name isn’t confusingly close to their trademark, they can’t just take your domain. Still, worth getting quick legal advice before replying.

 

[hostcay]

What if the trademark is made on a PRODUCT DESCRIPTION? For example, you can place a trademark for "water" but you cannot restrict people from using that in the name of products.

Wouldn’t know. We don’t decide we just comply when the dispute is won we have to push or provide auth code of the domain as any registrar is obligated to do

 

[VapeVendy]

Wouldn’t know. We don’t decide we just comply when the dispute is won we have to push or provide auth code of the domain as any registrar is obligated to do

Pretty sure the trademark is no bueno if used upon a description of a product / general term used. That is the power of owning the domain which is why I would assume they don't have a case.

 

[hostcay]

Pretty sure the trademark is no bueno if used upon a description of a product / general term used. That is the power of owning the domain which is why I would assume they don't have a case.

That is true, but from what I have seen, users who buy domains rarely use general terms in their domains. Those who do are usually protected. However, when it comes to trademark disputes, almost all cases that receive a cease and desist letter are not about general words. I highly doubt the original poster is using a general term in their domain. It is most likely a branded name.

 

[AccountKingdom]

A cease-and-desist letter by itself doesn’t automatically give them the right to your name or domain it’s just a warning, not a legal ruling. Companies use them to pressure people, but whether they actually have a claim depends on trademarks, usage, and potential confusion. It’s pretty common for brands to overreach.

 

[VapeVendy]

That is true, but from what I have seen, users who buy domains rarely use general terms in their domains. Those who do are usually protected. However, when it comes to trademark disputes, almost all cases that receive a cease and desist letter are not about general words. I highly doubt the original poster is using a general term in their domain. It is most likely a branded name.

True, but only if the general term didn't already have an existing organic search volume on Google. (Now it is worth something). I am the original poster, the term is a generic term that they competitor tried to trademark and wants my domain

 

[hostcay]

True, but only if the general term didn't already have an existing organic search volume on Google. (Now it is worth something). I am the original poster, the term is a generic term that they competitor tried to trademark and wants my domain

Then you can ignore. Such letters are scare tactics and they would of opened a UDRP dispute by now

 

[VapeVendy]

**UPDATE**

So I have been going back and fourth and they have agreed to "not fight and let me keep my domain" but they want me to change my product name. It makes me laugh by their demands when in reality they have no power or control. What do you guys think?

 

[hostcay]

**UPDATE**

So I have been going back and fourth and they have agreed to "not fight and let me keep my domain" but they want me to change my product name. It makes me laugh by their demands when in reality they have no power or control. What do you guys think?

Can you PM me your product name if you’d like I may advise.

 

[VapeVendy]

Can you PM me your product name if you’d like I may advise.

Just sent it over, appreciate the tips

 

[theeyeinside]

Most of these posts come from people that have no idea what they are talking about

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?

IT DEPENDS

If they own the Trademark IN THE SAME CLASS AS YOUR PRODUCT

AND

They registered their trademark BEFORE you registered your domain

Then "you copied them" and you cannot use their trademark

HOWEVER

If you registered your domain name and THEN THEY REGISTERED THEIR TRADEMARK
you are "grandfathered in" and you are free to use that domain for whatever you wish
providing that you DO NOT PRETEND TO BE THEM OR INFRINGE ON THEIR TRADEMARK
OF THAT CLASS.

Ask a trademark lawyer on one of their free consultations

Trademark 2019 : legal care for your business & product name​

https://welib.org/md5/07ef60d638e13215827562dacc33dcca

Patent, Copyright & Trademark: An Intellectual Property Desk Reference, 17th Edition​

https://welib.org/md5/d917b8ff83041ca1ba2adfe1bc50ddb0



Sincerely,

The Eye

 

[VapeVendy]

Most of these posts come from people that have no idea what they are talking about



IT DEPENDS

If they own the Trademark IN THE SAME CLASS AS YOUR PRODUCT

AND

They registered their trademark BEFORE you registered your domain

Then "you copied them" and you cannot use their trademark

HOWEVER

If you registered your domain name and THEN THEY REGISTERED THEIR TRADEMARK
you are "grandfathered in" and you are free to use that domain for whatever you wish
providing that you DO NOT PRETEND TO BE THEM OR INFRINGE ON THEIR TRADEMARK
OF THAT CLASS.

Ask a trademark lawyer on one of their free consultations

Trademark 2019 : legal care for your business & product name​

https://welib.org/md5/07ef60d638e13215827562dacc33dcca

Patent, Copyright & Trademark: An Intellectual Property Desk Reference, 17th Edition​

https://welib.org/md5/d917b8ff83041ca1ba2adfe1bc50ddb0



Sincerely,

The Eye

Yea but what is the trademark is a product description. For example: water

 

[VapeVendy]

Wanted to update everyone on this.

So they were bluffing. They challenged me, had a lawyer reach out and threaten to take me to court by telling me "They recommend I hire a lawyer".

My response was basically testing them, laughing in their face and said "let's duel" (While secretly praying they didnt sue me).

Its been dead silent for months. It is clear they only tried to scare me

 

[hostcay]

Wanted to update everyone on this.

So they were bluffing. They challenged me, had a lawyer reach out and threaten to take me to court by telling me "They recommend I hire a lawyer".

My response was basically testing them, laughing in their face and said "let's duel" (While secretly praying they didnt sue me).

Its been dead silent for months. It is clear they only tried to scare me

Yes happens all the time.

 

[VapeVendy]

Yes happens all the time.

Its crazy, I felt like I was being bullied and I laughed in their faces. Felt amazing

 

[Albert Wesker]

They can demand it in a C&D but they can't enforce it. Have to file an ICANN or civil matter to enforce it. This however is a fairly simple process to do unless you challenge it.

The ability to seize or shut down domains is far easier than people realize.

 

[VapeVendy]

They can demand it in a C&D but they can't enforce it. Have to file an ICANN or civil matter to enforce it. This however is a fairly simple process to do unless you challenge it.

The ability to seize or shut down domains is far easier than people realize.

They can't do anything, only try to bully and look big. They are scared, I will bite back