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C&D sent, but is this covered?

Discussion in 'Site Flipping' started by dawala, Oct 2, 2012.

  1. dawala

    dawala Regular Member

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    Hi guys, I received a Cease and Desist order this morning for a domain I own (i-s-c-r-a-p-m-e-t-a-l-.-c-o-m) without the dashes from the company called i.s.c.r.a.p. a.p.p. that makes iphone apps.

    They said that it is confusingly similar and I was using their name for my operation. I was wondering, does it really a trademark violation? Considering that scrap metal is a generic word and I just added the i part?
     
  2. w84it

    w84it Regular Member

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    id-scrap-that-c&d
     
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  3. the_demon

    the_demon Jr. Executive VIP

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    Unless you get a physical letter in the mail or contact from your host I think it's safe to ignore it. Don't reply to it.
     
  4. dawala

    dawala Regular Member

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    But if they do pursue, do you really believe they have grounds for it?
     
  5. reinie

    reinie Elite Member

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    yea i would just ignore it, sounds like BS...they have no grounds
     
  6. THECEO

    THECEO BANNED BANNED

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    It has no relevance and there is no point in worrying about it.
     
  7. judson

    judson Power Member

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    w84it hit the nail on the head.

    Unless you are selling mobile apps in the exact same niche as them, I'd tell them to bugger off.
     
  8. partymarty4870

    partymarty4870 Elite Member

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    I've got a shitload of i-whatevers.com and iwhatevers.com and if apple haven't got a problem with it (or can't do anything about it) then I doubt a little app developer has any right to the i prefix - unless you are pretending to be them, which you obviously are not.

    Remember "i" has stood for "information" long before steve jobs even tasted an apple, let alone designed one.
     
  9. dawala

    dawala Regular Member

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    Thank you guys, I appreciate your feedbacks on this matter. It was a law office that sent me the whole letter and it does sound like bs. But it's not everyday we get c&ds so I wanted to be sure
     
  10. bryanon

    bryanon Executive VIP Premium Member

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    Yeah, as others have suggested you can either tell them to b*gger off or just ignore the letter. Some companies have their reps send out thousands of C&Ds without paying much attention to whether the recipients are actually infringing their copyright or not.

    It's important to understand that purely a similar name (generic word or not) is not grounds for a copyright infringement case. You also have to either be in the same/similar field of business with the copyright holder or gain unfair advantage from using the copyrighted name. It's also important to note that the burden of proof lies on the copyright holder, not on you.
     
  11. dawala

    dawala Regular Member

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    @bryanon thank you so much for the detailed explanation. I feel much much better hearing the details on that.
     
  12. dubious

    dubious Regular Member

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    I never understood why Companies would send random C & D letters if there is no grounds for infringment. If dawala was bitter enough, s/he could create a PR nightmare for them complaining on YouTube, the blogosphere and hurt the integrity of their brand and ruin their ORM.
     
  13. LOL-Blaster

    LOL-Blaster Regular Member

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    More likely you just bring them more customer.
     
  14. Techxan

    Techxan Elite Member

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    In the US, this would probably not be enforceable. One of the requirements for the C&D to be held up is that your website could be confused with theirs, and in your case, I do not see how that could happen.

    I would check and see who had the name first, if you had it before they did, they have no case. If yours is younger, I still doubt they have a case.

    If yours is older, send them a C&D.
     
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  15. OldSchooler

    OldSchooler Jr. VIP Jr. VIP Premium Member

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    Some attorneys "churn" clients, look for every angle to bill them. What they tell their client after filing and going through the process of registering a TM (trademark) is that now you have to protect it. If you don't actively demonstrate that you're protecting your mark then later on you could lose a claim against it. I'm summarizing. Most of the time they'll stop pursing you after sending the single C/D. It's just a way for them to be active in protecting their TM.

    HOWEVER in this case, and I'm NOT AN ATTORNEY - this is SOLELY my opinion - they're probably more serious about this.

    You regged the Domain back in Aug 2009. They filed that TM back on Dec 1st 2010. Now here's the kicker. Did you have the site up and active with content related to scrap metal before their "FIRST USE CLAIM DATE" of 11/15/2010?

    If so - you have nothing to worry about. You're in the clear, they didn't file for TM protection until after you already were using the term. They don't have a claim against you, they're just trying to scare you into handing it over.

    If not - What was up on the Lander during this time - was it parked with scrap metal ads? This is good but not as great as if you had an actual site up.

    Their TM Registration Number - (four)08(nine)8(one)4 btw - I modified the number so it doesn't get indexed.

    Hope this helps.
     
  16. bdman

    bdman Jr. VIP Jr. VIP Premium Member

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  17. senior

    senior Regular Member

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    You can have the exact name and even get your own trademark as long as you are in different industries and can't be confused with each other. Especially with a generic name like that. In the US at least.
     
  18. dawala

    dawala Regular Member

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    Thank you so much guys, I really hate that they're doing this as their app isn't that good and even claimed im taking business away (blaming someone else for a crappy prod.). At least, now I know I have grounds to retain it.
     
  19. OldSchooler

    OldSchooler Jr. VIP Jr. VIP Premium Member

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    The complainant's registered TM covers enough to make a valid play. "scrap metal" is descriptive. "iscr*p" isn't. The domain he has can be viewed as "I" as in I like to scrap metal or isc*p metal - they will simply argue on the one that they claim infringes, the latter.

    It's not about being right or wrong, a UDRP defense still costs $. Ignoring this won't make it go away, most cases yes, this case my gut says no.

    They don't have a snowballs chance in hell of taking it in a UDRP but that doesn't mean they won't try and take it in a reverse hijacking. Even if the use date is after the TM's use date they don't meet all 3 requirements to win. But do you think their attorney is going to tell them that?

    Regardless it's the same cost to file a federal lawsuit (filing fees + attorney fees) to get the ball rolling. To defend this to summary judgement will be a pretty penny. So either way this needs to be taken seriously. They will just gamble the website owner will not fight it and they'll win on default, attach the Registrar, Registry, and ICANN to the suit and the pressure is stacked to transfer.

    A strong response is needed, to show them you're not a push over. To show them you're not going to roll over and let them take it from you. That you know you're going to just give it up.
     
  20. kvmcable

    kvmcable Supreme Member

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    What you failed to mention is iscr*papp.com doesn't sell apps, they sell a app for metal scrapers to find the current scrap metal prices and locate local scrap metal buyers.

    Your website iscr*pmetal also has news about metal scraping industry, ads for scrap metal buyers and ads for current metal pricing. This puts your site in the same industry, same potential visitors and arguably diluting the trademarked iscr*papp name.

    You can argue you have different visitors but I doubt any judge or jury would agree. You can argue you were registered before the trademark but your argument is weak at best.

    Looking at your website and seeing no PR and no Alexa rank I think your best option is to take down the website and let the domain expire. This would be a very expensive legal fight and while principal has importance at the end of the day its a bad business decision to defend a website that has no value.

    Lastly measure the strength of your adversary and I looked at the trademark holder and he certainly has the capital to defend his mark. I wouldn't challenge him personally.

    Good luck
     
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    Last edited: Oct 6, 2012