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Received C&D letter for domain trademark..What to do now?

Discussion in 'Domain Names & Parking' started by dantob, Dec 4, 2010.

  1. dantob

    dantob Power Member

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    A friend of mine received a C&D letter from a lawyer representing the site that ranks aove him in the SERPs. He's had the domain name for like 3 years now and for the last 6 months has been ranking #3/#2 for it's main keyword (the url is the exact match of this keyword). The first 18 months or so it was ranking on the 2nd page. Supposedly the site that ranks #1 and #2 has a trademark on words that that make up kw1 and kw2 of the main keyword (which is "kw1 kw2 kw3")..so the domain is "kw1kw2kw3[dot]net".

    They have told him to immediately take down the site so that it does not resolve. And also to remove any references to the "kw1 kw2", and so forth. The letter has given him 2 weeks to comply and to write back showing them that he has take down the site and is no longer the owner.

    Now my question is whether he can do anything to stop this? Any way to work with them and still retain the site? Could he sell the site on flippa and let the new owners deal with it? Or there isn't anything to do but let go of the site and move on? Anyway to make any sort of money out of this situation? The site makes about $15-$25/day Adsense. I think what might have triggered this is that he got many emails daily for this product from people that visited his site, but he actually never responded to any. Later on he got emails of why the company was not responding to any of their emails.

    What if he starts another site, but this time does not use the trademark keywords in his top level domain, but rather as internal pages (so "generickeyword[dot]com/kw1kw2kw3". Would they come after him again or is this mostly due to having the trademark name in the top level domain?

    Anyone have any experience with this sort of thing?
     
    Last edited: Dec 4, 2010
  2. cyrix

    cyrix Junior Member

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    If they truly own the trademarks to these keywords then their isn't much your friend can do. From my experience it would be best to just comply with them and take the site down. Otherwise he takes the risk of being sued. Good luck
     
  3. schrute

    schrute Regular Member

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    TALK TO A LAWYER

    DO NOT LISTEN TO ANYONE ON BHW.

    Seriously, have your friend talk to a lawyer. Yes, they're expensive but most, if not all, will give you their insight and experience (in order to retain your friend as a client) about this experience. Honestly, you do not know the law or how to maneuver while caught in the law. If your friend complies and takes down whatever is asked without going about it properly, they could sue him anyways. Lawyers are extremely sneaking especially when they can make money.
     
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  4. schwagoo

    schwagoo Jr. Executive VIP Jr. VIP Premium Member

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    Lawyer. Plain and simple. A good lawyer is worn it. He will be losing thousands per year of revenue if he shuts it down. Cough it up and get counsel
     
  5. mark0v

    mark0v Junior Member

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    a colleague of mine has dealt with these sorts of situations many times in the past; he won some and lost some (against some of the biggest corps in the world), nobody here is going to be able to tell you what to do, a lawyer might be able to tell you whether it's worth fighting them or just giving up.

    just keep in mind, merely because one of your competitors claims to have copyright and has a lawyer, doesn't mean that their legal claims have any merit.
     
  6. jodys

    jodys BANNED BANNED

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    This is simple enough to deal with. Go to uspto.gov and search the kw phrase and see if the trademark is valid. If it is valid then kill the site immediately. I've sat hundreds of hours in IP Attorney Offices and in Judges chambers during arbitration and/or mediation hearings. If the domain name contains the trademark you're screwed and damn lucky if they don't come after you for penalties. The whole reason for trademark law is to protect your mark and keep it from being diluted or confused. Your admission that your buddy received emails thinking he was the mark's owner shows confusion and don't ever say that again and tell your buddy to never say that to anyone else. Admitting he received emails from people thinking he was the mark's owner builds a solid case for damages because you've admitted by copying his legal mark customers were confused and were contacting you instead of the real trademark owner.

    A good IP Attorney will cost you about $350-$500 an hour. It will cost you a few thousand just to file a response. Seriously for $15-25 a day in adsense which could take a shit at any moment you're being foolish to fight a trademark. Penalties and damage awards could have you broke the rest of your life if they win. You're staring down a tank barrel with only a slingshot in hand. If they have enough money to hire an IP Attorney to file pay for a trademark (about $3000 depending on how many classifications you want to cover) believe me they have enough money to protect it.

    Last piece of advice - do you have business insurance for your business? If you have business insurance then they might pick up the bill for the IP Attorney if they don't already have one on the payroll.

    I'd do a quick search to verify the mark at uspto and if I found it I would build another site without the mark and make a under construction home page and do a redirect for all your indexed links to the new domain so you get some instant juice. If you follow the same structure in web design you can 301 your indexed links right to the matching page on your new domain. Then kick his ass without getting into a trademark battle.

    I settled my last mark case for $80k after paying $40k for legal fees over the course of 2 years. Numerous trips the mark holder's jurisdiction (that's right they sue you in their backyard) and I was happy with the settlement because the original amount was $325k. Don't screw around with marks. I just got another C&D for a mark on a domain. That site is gone and links all point to new site and I've climbed from 500+ to 18 in the last 3 weeks. I should hit page 1 next week.

    Best regards
     
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    Last edited: Dec 4, 2010
  7. Mr Ex

    Mr Ex Regular Member

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    If you have balls, there's another way of going around this. And believe me not many people are aware of it. Your friend can change that website to a non profit and talk all day about how they suck. He can get a new domain, 301 redirect the old one. Probably he will still rank for the same keywords as long has he doesnt make a dramatic change on the wording on the landing page. Freedom of speech is your constitutional right and that lawyer can't do shit about it.

    There are many examples to this including p*yp*lsucks com etc. Or, the lawyer can leave the fck your friend alone and both parties can live happily ever after. Laws are both ways. It applies to your friend as it applies to the lawyer.

    P.S: I am not a lawyer, therefore my post is not a legal advice. It has to be treated as a personal opinion. You should seek legal council from a lawyer who has experince in this field. I accept no responsibility for any result positive or negative.
     
    Last edited: Dec 4, 2010
  8. chrisis4ever

    chrisis4ever Regular Member

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    this is complete bs to me. I heard facebook is trying to trademark the word "face" so if I owned faceEbooks.com I would claim that my site was pronounced "FAH-SEE BOOKS" and tell them to shove it or buy the domain and compensate me for my losses.
     
  9. schrute

    schrute Regular Member

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    The law may see it differently or they'd be willing to drag out a nice long expensive trial that you likely can't afford.

    The most important thing is part of the 4 test and two of those that are important is whether it was register in good faith or if its confusingly similar.

    If you are making money off of it and if a competent person would find it confusing to the social network - You lose. Facebook is after big judgments not little settlements. Honestly just having an e between face and book I would strongly say is not much of a defense. But roll the dice and let's see how the law decides :)

     
  10. chrisis4ever

    chrisis4ever Regular Member

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    OK How can facebook claim trademark infringement against Fah-see Books or face-ebooks? They should atleast buy the domain and compensate me right?
     
  11. RedWolf

    RedWolf BANNED BANNED

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    1st option is "talk with lawyer"

    second option is "make domain offshore"

    third option is "give that domain to me"
    Posted via Mobile Device
     
  12. RedWolf

    RedWolf BANNED BANNED

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    also you can sale domain to that company

    some time before i was using amazon trademark doamin and i recived letter from their laywer and after long conversation i sold that domain to amazon ($100)
    Posted via Mobile Device
     
  13. chrisis4ever

    chrisis4ever Regular Member

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    What if you were the Florida Aviation Center Earning Education = F.A.C.E.E. and you started out by talking about "F.A.C.E.E. books" until your site evolved? Tell them you want $50k for the domain
     
  14. schrute

    schrute Regular Member

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    They don't need to in order to file a lawsuit. They own the trademark to facebook and I would say over 90% of faceEbook is confusingly similar. Now if you are in the business of selling eBooks with pictures of faces, you may have a valid defense against it.

    But it doesn't matter because you have to go to court to do that. And

    COURT IS EXPENSIVE
    so even if you think you're right, you still have to defense against this claim. People put the deed to their houses up for these types of gambles. An attorney will sway a jury. This is how juries award $20 million for coffee spills. This would be all over 2 lousy letters.

     
    Last edited: Dec 4, 2010
  15. schrute

    schrute Regular Member

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    Look up the cybersquatting act. By asking for "$50K" you just lost the lawsuit because you registered the domain name in bad faith in order to profit from it. Laws have changed ALOT in the 10 years when people used to do this.

     
  16. RobBanks

    RobBanks Junior Member

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    do not listen to any legal advice from anyone except a lawer.
     
  17. chrisis4ever

    chrisis4ever Regular Member

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    Could I get a public defender for a civil suit? What facebook is doing sounds like extortion.
     
  18. schrute

    schrute Regular Member

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    lol no, public defenders are ONLY FOR CRIMINAL LAW. In a civil case you have to hire a lawyer or defend yourself. In civil law you don't get the 5th amendment either. So you will be asked to testify against yourself in a deposition.

    How is this extortion? You are deliberately trying to confuse faceEbooks with facebook. Then by saying "gimme $50K" you're trying to profit from it. Any judge/jury will let Facebook win the case. Another thing, if you decide not to defend yourself or hire a lawyer you will have to answer the complain (an answer to a complaint costs a non-refundable $350). You will easily spend a minimum of $5,000 in court fees (filing fees) and conservatively $40,000 on a proper defense lawyer.

     
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    Last edited: Dec 4, 2010
  19. chrisis4ever

    chrisis4ever Regular Member

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    No I should have the right to open face ebooks .com and not worry about who might site resembles. If my site isn't a social network it shouldn't matter. The op said the person in this situation was making money from their site until the c&d letter. He should be entitled to at least $50k for what he is going to lose since facebook is overstepping its bounds.
     
  20. bertbaby

    bertbaby Elite Member

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    Before you go lawyering up there are few options you have before you make any rash decisions. Lawyers are expensive and in a civil case their expertise will cost you.

    That said it's easy enough to research any Trademark claims so you can rule out somebody bluffing you out of your domain. Go to TESS, Trademark Electronic Search System at http://tess2.uspto.gov/ and do a free trademark search. Anybody can do a search on words and design trademarks and you can learn if the claim is valid and what were the filing dates. I do this all the time with my work to rule out a lot of crap.