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Just got a cease and desist letter - Canadian Trademark - What to do?

Discussion in 'Domain Names & Parking' started by microgrinder, Nov 21, 2012.

  1. microgrinder

    microgrinder Newbie

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    A company has said that they own the trademark of a domain I own and has provided official documentation. The thing is that the trademark claim is something very generic and descriptive of the product. I thought that you could not get trademarks for things that were 'clearly descriptive'. For example, I wouldn't think you could trademark something like: "Juicy Apples" or "80s Halloween Costumes". At any rate, this is what they are requesting:



    Any information or advice on this matter is greatly appreciated. Thanks!
     
  2. chris1025

    chris1025 Regular Member

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    ignore it they cant do anything about it, or sell it to them
     
  3. GreenGoblin

    GreenGoblin BANNED BANNED

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    cease and desist
     
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  4. steelballs

    steelballs BANNED BANNED

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    I would play them along as the often pays if it escalates the issue generating free publicity for you and what you always need which is more money!
     
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  5. yesiamj3ff

    yesiamj3ff Newbie

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    They can either buy it from you or they can leave you alone. You're right, they can't really fight it because it is descriptive. Also check the date that they trademarked it and compare it to the date of purchase of your domain. If they trademarked it after you purchased the domain they can suck a fatty even more. Either way, it isn't something to really worry about in my opinion. I'm no lawyer though, if you really want to do the right thing consult with a lawyer pro-bono unless you have the money for it.
     
  6. ub3rst4r

    ub3rst4r Junior Member

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    The internet is all about freedom. I would not even reply to these scumbags and wait until they start offering real money for it. A good example of a domain name dispute, is with Google and the domain name "oogle.com". Since Google didn't register it, they are SOL. The same goes with this domain name, they didn't register it and they can't make you give it to them. I'm not sure what the domain name is but if you can make a variation of it (by adding a dash or registering the .com, etc) then register that to just be a even more of an asshole. ICANN would be probably say the same thing and that the responsibility for the domain name is the registrars which usually are protected against domain name disputes (see http://www.out-law.com/page-5700). If you want to come to a agreement with this dispute (and talk to them), then you can offer them a backlink from your domain name to their website.
     
  7. criticalmess

    criticalmess Regular Member

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    I get these letters every now and then.. keep your domain private and try to use bogus information, they will have a hard time reaching you.

    any domain dispute involves thousands of dollars just to kick off the process, chances are that they will not play chicken with you.
     
  8. LVScott

    LVScott Registered Member

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    Depends on the trademark, since they contacted you they have to act. If they don't they can lose the trademark, so be careful what you do.
    For example if google sues google.ca and says we want it back and then does nothing. 5 years go by and they sue another company like google.co.uk, google.co.uk can use the defense that they knew of past infringers and did nothing and win the suit. If it's a large company, best thing to do is settle.
     
  9. tejsin

    tejsin Power Member

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    well, sell it at a good price or sell it to someone else and change the who is :)
     
  10. ShabbySquire

    ShabbySquire Power Member

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    Re providing bogus info, I'm sure the complainant is able to approach your hosting service via the sites' IP address. Could be argued that they could approach the registrar (as in cases involving DMCAs).

    But whether there is a valid case against the op is another thing.
     
  11. Stizerg

    Stizerg Power Member

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    1. change domain registrar with fake info.
    2. if it hosted in Canada change hosting to other country (not USA).
    3. do business as usually.
    under no circumstances transfer this domain to them. Remember: it belongs to you.
     
  12. InternetMayhem

    InternetMayhem Regular Member

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    Move to Indo
     
  13. OldSchooler

    OldSchooler Jr. VIP Jr. VIP Premium Member

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    This isn't true. They don't have to "act" since they contacted you. I'd venture to say 90% of C/Ds never go any further. I'm speaking from considerable experience on this. Protecting ones mark doesn't involve "having" to go any further, the act of sending a C/D is being active in such regard - in these cases.

    The question that needs asked - Did you check and see if the company actually has a TM on the mark in question? In some cases these C/Ds are fishing expeditions, just trying to scare you into handing over the address without a true basis.

    If the company actually has a registered TM the term isn't descriptive/generic as you thought. In this case just ignore them. If it escalates into another letter and/or a copy of a UDRP they promise to file offer to sale them the Domain for $950 USD. This will be cheaper than filing a UDRP against it.