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Domain Names Forum

This 55 message thread spans 2 pages: 55 ( [1] 2 > >     
Big Company Threatening Me Over a Domain Name That Is Also My Given Name
Trademark Foul Play: Spurious Claims of Trademark Exclusivity & Cybersquatting
greenjeyes




msg:3469288
 5:58 pm on Oct 4, 2007 (gmt 0)

Hello, I posted this on another forum but didn't get enough advice.

When I was born I was christened <with a name, that in part, includes the letters of a famous company>. This is a female name of Yoruba origin and sometimes last year, I registered a domain name with my name in it.

Two days ago, <the big company> sent me a threatening "cease and desist letter" about the domain.

I have replied them and I stood my grounds that <snip> is my name so I have the right to hold the domain.

Does anybody know more about the laws in terms of domain names? Do you think I should "cease and desist"? What do you think I should do?
Many thanks.

[edited by: Webwork at 6:52 pm (utc) on Oct. 4, 2007]
[edit reason] It's in your best interest to not "name the name" and that also fits our policy. [/edit]

 

jtara




msg:3469304
 6:11 pm on Oct 4, 2007 (gmt 0)

Send them a copy of your birth certificate. In a lighthearted way, ask if they are willing to bear the cost of legally changing your name...

willybfriendly




msg:3469316
 6:26 pm on Oct 4, 2007 (gmt 0)

Gotta' wonder if htey are getting ready to introduce a new line somehow associated with "ade"

tbear




msg:3469328
 6:44 pm on Oct 4, 2007 (gmt 0)

If you are concerned, then I guess you should contact a lawyer who specialises in internet law among other things.

My 2 cents:
Cease and desist what, exactly?
Are you using the name on a site?
Are you selling products related to Nike?

If no to the last question, then I see no problems, but I am not a lawyer nor specialist in this subject.

Hope this helps.

Webwork




msg:3469333
 6:47 pm on Oct 4, 2007 (gmt 0)

Hmmmm . . we usually avoid specifics and you may not be doing yourself any good making this a public issue . . but allow me to ask: Are you doing anything to make money with the domain?

Just parked it? Not too savvy.

Developing it and having it be about sports, sportswear and equipment? Not too savvy.

A personal blog about your family life, steering clear of topics that might evoke the ire of the sports gods? I'd fight that battle if your birth certificate backs you up.

Moderator's Note: This IS a 1 off. I don't want to start reading about other people's dilemas with family names and domain names. Thank you.

DamonHD




msg:3469347
 7:03 pm on Oct 4, 2007 (gmt 0)

If you are misusing the goodwill invested in a company's name, even if you happen to have been named (say) Iris Bertha Macaroon, then no one is going to be very sympathetic when you flog computer consultancy from your new ibm.<whatever> domain.

But, if this site of yours is personal and not creaming off the company's hard work, then you should resist (nicely, making your case) IMHO. It might or might not win you a case with the registrar/whatever, but barratry/bullying *IAA-style is not legitimate either... Again, IMHO, since IANAL.

Sometimes company lawyers get trigger-happy in the face of repeated scamming attempts...

Rgds

Damon

algari




msg:3469364
 7:53 pm on Oct 4, 2007 (gmt 0)

Give a consideration also to the point:
who was born first you or that '<the big company>'?
the name in question is not that you have changed to in your later years?

When a person is christianed with a name it becomes an inseparable part of his/her existence and he/she has all rights to be known by that name for what ever purpose, selling sports or preaching or .....
(Present remarks are just that of a human being and not that of an expert's legal view.)

Marshall




msg:3469366
 8:01 pm on Oct 4, 2007 (gmt 0)

greenjeyes,

Not knowing what jurisdiction you are in may influence the law, but at least in Pennsylvania, no one can stop you from using your name for whatever reason for business, even if it is a corporation and trademarked. If that was not the case, I guess Marshall's could go after me :)

Marshall

DamonHD




msg:3469422
 9:00 pm on Oct 4, 2007 (gmt 0)

But that still wouldn't be the same as whether someone whose initials happened to be 'IBM' tried to fraudulently take advantage of that fact to milk the goodwill and trust from that other IBM.

The two things are quite separate.

To quote from a somewhat different context: "It's not what you have, it's how you use it."

Rgds

Damon

norton j radstock




msg:3469445
 9:35 pm on Oct 4, 2007 (gmt 0)

Just a thought.....if you were christened with your name before the company came into being, could you serve them with a "Cease and Desist" notice.....presumably not, otherwise half of Scotland might be serving notice on a certain fast food outlet.
;-)

jtara




msg:3469459
 9:52 pm on Oct 4, 2007 (gmt 0)

Er, what was the outcome of the dispute that Mr. Mike Roe had with a big software company?

As I recall, he had a *little* software company, and the big one got bent out of shape over it.

Of course, that was probably stepping over the line, and Mr. Roe should have known better.

davezan




msg:3469590
 1:24 am on Oct 5, 2007 (gmt 0)

Er, what was the outcome of the dispute that Mr. Mike Roe had with a big software company?

Oh, he gave them the name...and the big M gave him a free trip. :)

Greenjeyes, talk to a lawyer who specializes in this. Sorry to say you won't get any specific advice on this matter.

Quadrille




msg:3469601
 1:42 am on Oct 5, 2007 (gmt 0)

You don't say whether or not you have a site at the domain, and whether the site has content relating to the company.

That information is very relevant, and I don't think you'll get much useful advice without it!

While the law, and precedent, varies from country to country, it's often not so much the domain name - as what you choose to do with it.

greenjeyes




msg:3469714
 6:46 am on Oct 5, 2007 (gmt 0)

I never had anything related to the company or the company products products on the site. It was previously parked free with Godaddy and they put their ads on it. The ads were not related to the company or the company products (I just checked with Wayback Machine). I once installed a Social Networking software (Boonex) on it for a few days then I removed it and since then the site has been a "Page cannot be displayed" site. I plan to make it a personal site where I can put my portfolio when I finish at Uni.

@algari, The company was born before me but my name has been given to females from that part of the world before the company was established.

Marcia




msg:3469729
 7:30 am on Oct 5, 2007 (gmt 0)

I plan to make it a personal site where I can put my portfolio when I finish at Uni.

There is no reason on earth not to do a personal site before graduating from the university. There are plenty of high school and college kids (and kids even younger) who have websites and you can start to build up a history for the domain being active before you're actually ready to put up a portfolio.

Incidentally, will your portfolio or the line of business have anything to do with what that company does, in any way?

Adding, did a little hunting around:

The company was born before me but my name has been given to females from that part of the world before the company was established.

Registered with Godaddy which is in the US. You say "that part of the world" not "this part of the world." Does that mean that you're also in the US, a citizen residing here in the US? And where is the company located, here in th US or "that country?"

Incidentally, FWIW here's what ICANN says about dispute over a domain name, in 4C:

c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint.

When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.


[icann.org...]

[edited by: Marcia at 7:59 am (utc) on Oct. 5, 2007]

greenjeyes




msg:3469748
 8:07 am on Oct 5, 2007 (gmt 0)

@Marcia, Sorry for sounding ignorant, but how does the timing of my personal site affect anything? Just a question because I think people register domain names without using them for years.

My portfolio does not have anything to do with the company.

The company has its headquarters in US and they have branches all over the world including UK, I live in UK but not originally from UK.

Thanks for the links.

briggidere




msg:3469755
 8:27 am on Oct 5, 2007 (gmt 0)

Hi Greenjeyes,

I believe Marcia was saying that, as you will have the domain with some content on it, it will be noticed by the search engines and the age factor will not be so much of an issue when you do put your achievements on it. Just one of the factors in SEO nowadays.

Marcia, correct me if I'm wrong.

appi2




msg:3469758
 8:38 am on Oct 5, 2007 (gmt 0)

Even though its your given name what's the point of keeping the domain?

Do you want this sort of hassle?
nissan.com website [nissan.com].

callivert




msg:3469759
 8:42 am on Oct 5, 2007 (gmt 0)

how does the timing of my personal site affect anything

it demonstrates good faith in registration. It shows you're not just sitting on it waiting to sell for the right price.
(of course, you know that already, and we know that, but... you know how it goes)
As an utter non-lawyer with absolutely no legal training, the ICANN guidelines that Marcia quoted seemed pretty clear cut to me.

Marcia




msg:3469766
 9:01 am on Oct 5, 2007 (gmt 0)

Each and every time you take or renew a domain, in the Godaddy interface you are URGED to take the domain with your own name in it to protect it for your own use in the future.

Yes, longevity of having an active site on a domain name helps to build a profile of trust over time.

Logically speaking, if it's my given name and I take a domain called pepsismith.com and have been in university studying with a specialty in mallard duck photography, you bet I'd be putting up my best duck photos while still in school.

In the case of Nissan it's a one word domain and was at one time used for a car business. Being one word, even though it's unfair it could lose type-in traffic for the Nissan company, looking at it from a household word and branding POV.

Is the domain name in question here just one word, and if so, how widespread is the branding for that one word for the complainant? Is the domain in question here, or has it ever been, used for anything related to what the complainant's business is known for?

[edited by: Marcia at 9:11 am (utc) on Oct. 5, 2007]

Quadrille




msg:3469831
 10:47 am on Oct 5, 2007 (gmt 0)

Also, if you have a personal domain and are using it for personal things, then it's harder for anyone to accuse you of anything else. If you were using the domain with 'their name', you can see their POV - and if you do not use it at all, then their imagination can get out of control.

Don't forget Quadrille's Oft-Quoted 9th Law: "If you own a quality domain name, then use it - or you may find the quality was an illusion"

It really is the best defense. And in this case, it may be all the defense you need.

[edited by: Quadrille at 10:48 am (utc) on Oct. 5, 2007]

jimbeetle




msg:3470000
 2:22 pm on Oct 5, 2007 (gmt 0)

Is the domain name in question here just one word, and if so, how widespread is the branding for that one word for the complainant?

I saw the name before it was snipped, it's one very unique word that just happens to contain a short string of letters that just happens to be a company name. To my thinking, it would be very hard to imagine that there would be any confusion with the company.

And I just want to point out that in the Nissan case the little guy won.

anallawalla




msg:3471383
 11:02 pm on Oct 7, 2007 (gmt 0)

There have been cases where a "reputation management" company uses a tool to find the client's name within a string and then sends a nastygram automatically. I believe that a big search engine does this but is reasonable about it if you place a disclaimer on the web page saying you are not connected with them.

This name falls into the same category except that different lawyers are involved. More pertinent is the situation that while parked, the site in this thread showed/shows (via archive.org) contextual ads for that company's products, although I cannot see them from Australia. I see ads about Nigeria. Not being familiar with this name, I could have added 2+2 and got 5.

Legal advice is the best course. Perhaps a friendly tradeoff for a lifetime supply of the said products would be good publicity for both? :)

oddsod




msg:3471687
 11:00 am on Oct 8, 2007 (gmt 0)

With respect, I don't believe it has anything to do with local law. Or who came first.

Under ICANN rules you own the domain. To get it from you they have to prove three things:

They have a right to the name
You don't have a right to the name
You are using the name in bad faith

If they fail to prove even one of those they don't get the name. The first is easy to prove. The second is a bit fuzzy but they may still prove it. Only you can prevent them proving 3. And you can do it by the simple expedient of putting some personal info on the domain.

I don't see the problem.

Habtom




msg:3471697
 11:18 am on Oct 8, 2007 (gmt 0)

And I just want to point out that in the Nissan case the little guy won.

I couldn't believe the big nissan doesn't hold nissan.com and .net

The big companies think they can swallow the small ones without any specific reason, as in the example of nissan. And the bad news is, they usually do.

Webwork




msg:3471784
 1:42 pm on Oct 8, 2007 (gmt 0)

There have been cases where a "reputation management" company uses a tool to find the client's name within a string and then sends a nastygram automatically.

I've reviewed and responded to such "nastygrams" on behalf of others. The nastygrams, themselves, are a bit problematic.

The nastygrams/notices (email or letters) are couched in legal terms, asserting that certain law(s) apply, setting forth a legal analysis and threatening legal action.

But wait . . It's not a law firm writing the letter. It's some company.

Can non-lawyers sue or threaten suit? Yes, but non-lawyers typically act only for themselves. When non-lawyers start taking on diverse "clients", on whose behalf they assert all manner of distinct legal claims against a diverse public I'm inclinded to call that practicing law without a license, which in many jurisdictions is a criminal offense for which people go to jail. When a non-lawyer starts contacting people to assert claims against them I start reaching for a red card.

What if a lawyer signs his or her name to the many many letters that the automated trademark tracking firm issues? What if those letters are far more "form letters" relating to "strings of letters" than letters by a lawyer manifesting a thoughtful legal analysis of facts and law - as might be applied to those strings of letters?

Well, despite public sentiment, lawyers have an ethical and professional duty to act with a degree of circumspection and respect for the law. Lawyers are expected to act like a professional, schooled for years in the law, and not like a machine that simply responds to strings of letters in domain names. A lawyer who acts like an arbitrary and capricious machine - by endorsing his or her name to "machine decisions" - risks his or her license to practice law. When I see a lawyer's name endorsing what is clearly a machine decision I start reaching for a yellow card.

An automated legal threat system creates a great deal of unjustified anxiety, expense and grief. These systems can, in their own way, be as bad as the people they are supposed to be tracking and catching. They need to be reigned in.

[edited by: Webwork at 2:00 pm (utc) on Oct. 8, 2007]

oddsod




msg:3471795
 1:54 pm on Oct 8, 2007 (gmt 0)

Can't you just cut your finger on the letter they sent you and sue them for personal injury? ;)

Why does owning* a domain prove so much more complicated than owning a flat?

(I appreciate you never actually "own" a domain)

Webwork




msg:3471814
 2:14 pm on Oct 8, 2007 (gmt 0)

Oddsod, it's a matter that I have considered and continue to consider. If the examples I've seen are indicative of quality control I suspect there are far more false positives - notices issued in reference to domains that are entirely innocent or defensible - than there are notices that would correspond to eventual domain turnover orders.

Someone will likely file a lawsuit against such a firm, choosing the worst example of a groundless and thoughtless threat of action, name that person as the "class representative" - which would likely call forth a few more folks in his/her shoes - then demand the company's list of past notices sent, scan that for other egregious examples, join those folks . . .

Cybersquatting is wrong.

Indiscriminate assignment of claims of legal wrong to mere strings of letters in a domain name is another wrong.

appi2




msg:3471833
 2:37 pm on Oct 8, 2007 (gmt 0)

And I just want to point out that in the Nissan case the little guy won.

As they say its not the winning that counts but the taking part. And that's the bit that you have to question whether its worth the fight.

Domain names are cheap get another.

If the OP fought and won she would still (probably) not be able to use the domain for anything related to the trademark owner.

Why have a domain that's limited to what you can put on it?

For anyone interested in the nissan case US Court of appeals Ruling [ca9.uscourts.gov] 135KB PDF

ecmedia




msg:3471859
 2:57 pm on Oct 8, 2007 (gmt 0)

There is a very interesting case still undecided about musician Keith Urban and a painter by the same name. The musician has sued the painter - and painter then countersued the musician. I think if my name is Britney Spears I have a right to have a domain name reflecting my name but it would be clearly a bad idea to make it a music (or child custody) related website.

This 55 message thread spans 2 pages: 55 ( [1] 2 > >
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