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Infringement of US trademark letter, What to do?

Discussion in 'Domain Names & Parking' started by sweetiepie, Mar 12, 2012.

  1. sweetiepie

    sweetiepie Newbie

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    I have just had a letter from an attorney demanding I take down my site and transfer the domain over to them by March 16th or the will commence litigation if the infringing activity continues thereafter.

    My domain is an exact match dottcom for a branded product and was first registered in 2008 before the product was even invented. The brand owner registered the trademark in 2010 and I won the domain on godaddy auctions in 2011.

    I currently have the site live earning revenue from amazon referring the branded product in question and they have stated I have breached the four following points:

    1) You acquired the domain name in bad faith after the branded product was launched.
    2) You have set up a website that mimics the colors, styles and images.
    3) You are using the same trade name in your content and infringing the brand.
    4) You have used the brand name as a keyword to direct traffic to your site.

    I am not a US citizen and I am based in SE Asia and currently the site is registered at godaddy and hosted at host gator.

    If anyone has any experience, advice or can even recommend me any attorneys who may be able to help. Will be much appreciated. Thanks.
     
  2. mrsix

    mrsix Power Member

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    hand it over. pretty sure both your host and registrar would comply with anything the trademark holder sent them
     
  3. classifiedcaptain

    classifiedcaptain Regular Member

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    hmm.... well considering your in SE asia you *might* have a chance at being hard to impact , although I'm really not familiar with thy law.
     
  4. steelballs

    steelballs BANNED BANNED

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    This is one way shall we call it the Asian Way -

    Change the host to offshore out of the states

    Change the domain name owner to a new account name you create but still owned by you

    Pay for a WHOIS guard

    When working on the site use a Proxy

    That's It get back on the beach in SE Asia :)
     
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  5. kvmcable

    kvmcable Supreme Member

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    Well now you know why the domain was available last year. :D

    They have you by the balls and the legal jargon tells me they know wtf they're doing. They will get a court order and get a GD takedown. Then they'll file a UDRP complaint and secure the domain.

    You're lucky you don't live in the USA or they'd make you pay for all their trouble. If you want to end the headache then just take it down. They can grab it when it expires. No sense seeing how long an arm they have to slap you. They have you by the balls and know what they're doing. The more you fight it the more it might cost you.
     
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  6. kvmcable

    kvmcable Supreme Member

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    Naw that's all a waste of time. Dot coms are on USA soil so a UDRP complaint will get them the domain from Verisign no matter where the hell it's hosted or by whom. You can delay the inevitable but they'll take it down.
     
  7. hypefrenzy

    hypefrenzy Junior Member

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    this is your best shot but there's a slim chance you'll get to keep the domain. might be worth giving it a shot to hide it away but you should probably give it up if they persistently come after you

     
  8. infoasian

    infoasian Supreme Member

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    just give it up. Risk reward ratio is not in your favour imho.
     
  9. g@m3r8700

    g@m3r8700 Registered Member

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    if the domain is registred, BEFORE there product, you should be able to keep it, but you will need a lawyer, so it depends on how much you will make on the domain, if its a good investment or not. but you will properly have to rank for other keywords. Best thing you can do is sell the domain quick, to make a few bucks
     
  10. sikandar

    sikandar Senior Member

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    If the attorney send a letter to godaddy, godaddy will take down your site. Better to change your registrar and hosting to a Panama based company. It costs little more but the attorneys won't trouble you afterwards.
     
  11. spmcnerd

    spmcnerd Regular Member

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    Amazon will probably not stand up for you either.

    If they haven't already done so you could buy the trademark in your country but you couldn't sell to the US and they couldn't sell in SE Asia.

    Toy with them. Have some forms for them to fill out in ultra fine print j/k Good Luck
     
  12. ExecutiveCloser

    ExecutiveCloser Regular Member

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    switch to overseas hosting and get out of US for the site as mentioned above. You are in asia, wtf are they going to do. Fuck them.

    If moving it is worth your trouble (because the site makes money) then do it. If not, offer them a settlement of $2500 for your trouble and see if they go for it.

    If they say no, tell them to fuck off and put porn on the site with a guy humping their logo.
     
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  13. Sahil25903

    Sahil25903 Registered Member

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    This^ :) Wish you the best of luck though!
     
  14. ADHD-Dude

    ADHD-Dude Power Member

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    Fight, fight don't let them win. Destroy them don't let them win
    :firedevil
     
  15. Amsterdammer

    Amsterdammer Power Member

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    To keep it short and simple:
    You acquired the domain after the brand name was founded.
    You are selling their product on it and thus costing them money.
    .com is US property. Period. US laws apply.
    You are effectively impersonating the brand and even use their brand name to get customers.

    Result: You just lost your domain.

    Just my two cents.
     
  16. mrtwister_65

    mrtwister_65 Regular Member

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    Yea, sell the domain to whoever will pay the best price.
     
  17. BLACKHAT1984

    BLACKHAT1984 Regular Member

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    They will seize the domain no questions asked. Get out soon as u can. It's a nightmare but I've been in this position so many times. In the UK it's a little easier to figure out loopholes but they still come after you.
     
  18. kvmcable

    kvmcable Supreme Member

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    I guess that's an option. Toss it on Flippa and let some other sucker deal with it.
     
  19. kvmcable

    kvmcable Supreme Member

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    Yes, I've been through this many times too. The most recent was an importer that I've had an account with for more than 10 years. Nobody was using his unknown brand and the domain was available. I purchased the domain and promoted it, sending all the sales to him. He still had a trademark Attorney serve me papers. I called him and put it to rest but even if you work with the business they still go ape-shit about their trademark. He didn't see the win-win so now the domain is unclaimed and dormant again until someone else buys it and he chases them. Not sure why trademark holders don't buy their own domains but would rather sue people that pick them up. Silly really.
     
  20. sweetiepie

    sweetiepie Newbie

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    Thanks for the input, the attorney has contacted godaddy (Domainsbyproxy) now also and they have required me to contact the attorney by tomorrow deadline or they will give them my contact info, so much for 100% privacy.

    Anyway I replied and said I want some compensation and I will then hand over the domain asap with no hassle. So lets see what they say.