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Got a cease and desist order that also demanded transfer of domain - seeking advice!

Discussion in 'Domain Names & Parking' started by fhilosophy, May 13, 2014.

  1. fhilosophy

    fhilosophy Newbie

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    Hello folks,

    Seeking some advice.

    I created a site called etsyfy.com, now taken offline due to a request from Etsy legal. The site sold services to etsy shop owners that would help them spiff up their shops.

    Here is part of the email I received from etsy:

    Your Domain makes unauthorized use of the "Etsy" marks on both the website itself and in the domain name, and is likely to cause confusion for customers seeking Etsy's website. This activity is actionable under many laws including various U.S. federal and state laws, including but not limited to trademark and trade dress infringement, unfair competition, and false designation of origin under the Lanham Act. Etsy demands that you and any of your affiliates, officers, employees, agents, or other persons or entities acting in concert with you or at your direction, immediately cease and desist from using the "Etsy" marks and relinquish and transfer the Domain to Etsy.


    My questions is do I have to transfer the domain to them? Is the domain not my property since I paid for it? Sorry for my ignorance on this subject - any advice would be greatly appreciated. Thanks.
     
  2. FutureProofSeo

    FutureProofSeo Jr. VIP Jr. VIP Premium Member UnGagged Attendee

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    I think just remove the etsy branding, and clearly state you are not officially the etsy site (maybe link back to the original), and you should be good.

    After that see what they say, probably depends on the trademark agreement.
     
  3. fhilosophy

    fhilosophy Newbie

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    Yeah it seems like they have an issue with the word etsy in the domain name itself, I don't mind transferring it to them but at the same time I did buy the domain and own it.
     
  4. partymarty4870

    partymarty4870 Elite Member

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    as someone who has never heard of etsy, that domain sounds to me like a site about aliens and science fiction
     
  5. fhilosophy

    fhilosophy Newbie

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    haha its like ebay, but for handmade goods.
     
  6. pr0ject

    pr0ject Power Member

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    Maybe transfer it to them but ask them to pay registration fees. Maybe you'll have some luck...
     
    Last edited: May 14, 2014
  7. fhilosophy

    fhilosophy Newbie

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    Is there any scenario where I could sell it to them?
     
  8. Theodore

    Theodore Power Member

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    I was thinking the same haha et syfy :p.
     
  9. potential

    potential Registered Member

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    try something along the lines of
    "I am prepared to put up a disclaimer on the website to make it clear to consumers that the website is in no way shape or form associated with etsy.com. I will also link bank to etsy.com"
    incase they don't respond too well to that, you can tell them to pay you monies + small "processing fee" to transfer the domain back to them.... alternatively you just put up a parked domain page ridden with ads...and possibly an monetized link shortner like link (like adfly) back to etsy.com
     
  10. fhilosophy

    fhilosophy Newbie

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    Thanks for that advice, I am just a student and don't want to get sued or anything like that.
     
  11. squark

    squark Junior Member

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    You can certainly try negotiating with them. But be aware that they can forcibly take your domain from you for trademark infringement. If they're willing to go so far as to file a UDRP claim (I have no idea if they are... but I would guess yes), you'll lose the domain.

    If you decide to keep it and go the disclaimer route, you likely won't get far because you're still doing business off their trade property, regardless of whether you disclaim association, or not. The only real shot you would have at keeping it *and* doing business on it would be if your line of business was totally and completely unrelated to anything to do with etsy or their primary type of business.

    I have done battle with Google and Amazon multiple times over trademark issues and domains. They have forcibly taken many domains that I had parked and was not doing any trade on. But they take it seriously when you're doing any kind of business on their trade names (in my case it was the Android trade name). Google takes it *very* seriously. Amazon takes it *very* seriously. I think eBay does, too (no first-hand experience for me). I have no idea where etsy falls in the spectrum. But if they push it, you'll lose it.

    Note: IANAL! Agree or disagree at your own risk.
     
    • Thanks Thanks x 2
  12. aa33030

    aa33030 Regular Member

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    No the domain does not have to be transferred; just simply taken offline and not monetized in any way
     
  13. Izzma

    Izzma Regular Member

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    That is a big no-no. Asking for the registration fee makes it seem you are willfully infringing on their mark and therefore are Cyber Squatting.

    Just take the domain down and you don't have to transfer the domain to them. It is your property, not theirs. But, if it makes you sleep easier at night, then by all means transfer the domain to them and be done with it.

    Companies like this take their TM rights too far and see if they can get away with it or not. A lot do but if you raise a big enough stink one could a trademark revoked.
     
  14. sn0rt

    sn0rt Elite Member

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    Don't transfer the domain. How do you know that's not one of your competitors trying to take you offline?

    Or even someone that wants to start what you've already started but saw an opportunity to take what you built instead?

    Shut down if you'd like, but you don't have to transfer over the domain. I'd find another domain and just use a redirect if you have recurring clients.
     
  15. noseo

    noseo Regular Member

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    This.

    Legally, you can't use it.

    Legally, they don't own the property.

    It's like you made a sign for your shop that said "Etsy Wares." They can tell you to take down the sign, but they can't demand that you put it in a box and ship it to them so they can put it on their building.
     
  16. fhilosophy

    fhilosophy Newbie

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    Thanks for all of this advice. I really appreciate it!
     
  17. NiNJAONE

    NiNJAONE Registered Member

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    Hmm interesting, it depends on your business plan for your site. I understand the trademark laws, no issue there, but if you're in the US you clearly have a free-enterprise right based on US laws to make a living, however you see fit as long as it is under the legal auspice of the law.

    That said, there is the court of public opinion, you can play the game and get social media attention to you keeping your domain, but again like the previous BHW members mentioned, battling a large company will have its consequences.

    Personally, Fuck Em. Keep your domain, do something else with it, but I will be dammed if I gave up a domain I thought of without a fight. Google, Game companies, Major companies have teams that simply work on identifying and PURCHASING for YEARs at a time, domains which may cause them trademark issues. ETSY is not a noob, but made a noob mistake, they are just mad that they didn't think about it first.

    Either way, we're all just providing our opinions, in the end you should decide what you do, whether you fight or stand is up to you.

    Good Luck My Friend.
     
  18. gamingmaster42

    gamingmaster42 Regular Member

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    I have been in a similar situation with both Chase Bank and eBay.
    They do.

    In regards to Chase, that was a few years back, I did not even try to fight because I was kind of scared lol.

    eBay, I did try to put up a fight, especially because I made it clear that I wasn't affiliated on the site. But since the domain had ebay they took it away.

    So it depends on the company imo - I have some international company trademarked domains, and it seems that they do not care that much.
     
  19. fhilosophy

    fhilosophy Newbie

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    At this point it seems like I should just give it to them. I am a student and rather not get involved in something that will cause stress. Although I might get a free consultation from a law firm to see what they say.
     
  20. gamingmaster42

    gamingmaster42 Regular Member

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    Indeed - I am also a student so I know what you mean. You can get the free consultation to make sure, but I think legally, the domain is theirs. Sorry :p