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box-for-tool.com said my boxfortool.org site is infringing on their TM??

Discussion in 'BlackHat Lounge' started by Nakama, Mar 16, 2012.

  1. Nakama

    Nakama Newbie

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    I just received an email from a lawyer stating that I am infringing on the use of a similar GENERIC domain name ie:

    they have trademarked a domain/live site like:

    box-for-tool.com (with the hyphens and the .com)

    and I have a site:

    boxfortool.org

    The funny thing is that although they trademarked 'box-for-tool.com' (with .com) , the letter never discuss the registered TM, as if the lawyer doesn't want to dwelve on this...

    I think that they have no ground. If I am right, should I not even reply to the letter? I am not the confrontational type but if all it takes now is to simply trademark a GENERIC keyword (even with a few hyphens!) and add .com to kill/bully all other similar domain names, that would be too easy...

    Also I was thinking to transfer it to a fake ID at another registrar but I think this would not work as it would imply I deliberately transferred it to a new owner and thus I would still be responsible.

    What do your think please? Thanks in advance guys!!
     
  2. ShadeDream

    ShadeDream Elite Member

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    I understand that this is just an example?

    Check this site for trademarks:

    Code:
    http://tess2.uspto.gov/bin/gate.exe?f=searchss&state=4010:lri36l.1.1
    Either way unless you receive an official mail through the post it's more than likely to be fake. Delete the email and don't reply to it. If you registered your domain before they trademarked it, they can't do anything to you.
     
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  3. assphuck

    assphuck Senior Member

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    I had a company do that to me once. The stupid asses never even bothered to look to see when I registered the domain, which was almost two years before they bought their domain and TMed it. I told them to bob on the knob. Instead of court papers I got a check and handed over the domain with a big smile and fatter wallet. :)

    Check to see when they actually did TM the name. If you owned your domain before theirs, tough shit for them. Otherwise, you may want to consult an attorney. Until they send you a certified letter that you must sign for, I personally would not sweat it. Who's to say you even got the E-mail from their supposed attorney anyway? Those darn spam filters! :D
     
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  4. Nakama

    Nakama Newbie

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    Thanks for replying!

    This was just an example with different words only. I checked the database and they registered their generic-keyword.com before I registered my domain unfortunetaly.

    How come they can bully someone with a generic keyword ie my generickeyword.org ??
     
  5. Nakama

    Nakama Newbie

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    Thanks, I would love to tell them to fuck off but they did TMed before I bought my domain but with the .org extension and without the two hyphens.

    I just got an email with a PDF, no letter in the mailbox, but they did say they represent this CEO (person/company names match with public info) and they did not ask to be handed over the domain, just telling that I should agree in writing not to use it or give/sell it to someone else. So I do not think this is a scam to get my site.
     
    Last edited: Mar 17, 2012
  6. kvmcable

    kvmcable Supreme Member

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    Why did you choose this domain as opposed to millions of others available? Are there any similarities between the websites?

    If they spent the money to TM the domain then they have the money to protect it. Analyze risk verses reward. A good IP Attorney will run you $300 an hour. They obviously already have one.

    How much are you willing to spend to save the domain? If there are any similarities you'll lose the contest. You might lose just based on the name because you're creating what is legally called "consumer confusion". This is a very vague term used in TM law but if a reasonable person might think your domain is affiliated with the original in any way shape or form (similar colors, logos, artwork, text, products, etc) - you lose based on the consumer confusion you created. Like I said the domain name alone might give them good grounds for a CC claim.

    If the site isn't making much money then I recommend shutting it down and saving yourself a bunch of headaches.
     
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  7. Nakama

    Nakama Newbie

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    Thank you for your detailed reply. I chose the domain name because this is an EMD in another extension without the 2 hyphens + the keyword is completely generic like in the given example.

    I understand the consumer confusion part. They are a small ecommerce site selling just 1 type of product (not a brand) and mine is a simple review/affiliate site pushing this type of product hence the generic keyword.

    I honestly thought that simply having a 'generickeyword.org' would protect me as they simply TMed 'generic-keyword.com' (with the .com)

    My question is now: for those like me registering domain names with generic keywords - does it mean that one has to be lucky enough to have registered a generic keyword + .com/.net/etc BEFORE a company is granted a trademark for the generic keyword to be totally safe now??

    The answer seems yes but I am still surprised one can trademark something like redshoes.com and bully anyone with redshoes.net or red-shoes.net/.org...

    I think I will follow your advice as my little site is not worth the trouble (just about $200 per month). Thank you very much!
     
    Last edited: Mar 17, 2012
  8. Getwhatchuwant

    Getwhatchuwant Jr. VIP Jr. VIP Premium Member

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    You might want to keep poking around, I dont know that you can TM a generic Keyword. If so I am going to run right out an TM the words Law, Insurance and any variation such as lawyer New York or Car Insurance
     
  9. AlastairG

    AlastairG Newbie

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    It's the name that gets trade-marked, not any combination of TLDs or punctuation. The date of registration is also irrelevant. If they've been granted the name, you're infringing (unless you want to challenge the validity of their trademark based on your pre-establishment of its use). Why not offer to sell it to them? It'll be much cheaper for them and you'll get something out of it. Good luck either way! :)
     
  10. Nakama

    Nakama Newbie

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    They did successfully registered something like the given example:

    box-for-tool.com (with the .com)

    not simply 'box-for-tool' or 'box for tool'.
     
  11. ShadeDream

    ShadeDream Elite Member

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    That's just a stupid reply. The date of registration is completely relevant. If someone develops a website with a name that they come up with and then somewhere down the line someone else trademarks the exact same name, the owner of that trademark can't do anything to the person that has bought and used the domain before the trademark was granted. If that was the case thousands of people would be out there putting trademarks on website names.

    The best advice you can get is to consult a lawyer. Just because they registered a trademark, it doesn't mean that they will definitely be able to take over your domain, especially if the name is a generic keyword. But then again I don't see how a generic keyword can be trademarked, unless it''s trademarked under a certain category. In which case depending on what they're actually using their trademark for, they may not be able to take away your domain. But then again these are just my thoughts, you will be better of consulting a lawyer as without the full details it is hard to tell whether it would be better to leave or stick to the name.
     
  12. procam

    procam Senior Member

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    Offer to sell it to them for cash upfront. That's what I would do.
     
  13. florflor

    florflor Senior Member

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    Nothing generic about it. This is a phrase we're talking about and not a single dictionary word, in fact it looks far from generic.

    Toolbox would be generic.

    "Box for tool" isn't at all.
     
  14. Lambda

    Lambda Newbie

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    I had the same problem in 2004. I got a call and a letter from a lawyer about a domain. I went to see him and asked him "So what are you after, my millions in liquid cash or my summer home in the Hamptons?". Make me an offer or STFU. A check for $1500 later it was over.