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Domain Names Forum

    
Forced to stop subdomains
Lawers at the door
colinf




msg:697024
 9:47 pm on Jan 31, 2004 (gmt 0)

I have registered a very popular country name .de
****xx.de and it is a fully functioning website.

A few days ago i received a "cease and desist" letter from the main airline company of this country saying that they have trademarked airlines-xxxxx.de and, because i could use (if i wanted, which i don't) airlines.xxxxx.de as a subdomain, i would be in violation of their rights. So now i have been forced to ask my ISP to technically de-activate the possability of me registering ANY subdomain under this domain. I have not seen a lawer yet, but surely this cannot be right?. Anyway if that was not enough, i received another letter saying that they noticed the sub domain was de-activated but i had to write a return letter to them saying i would not infringe on any rights of this airline and will not attempt to register any domians or subdomains in the future that may have anything to do with this airline. It beats me! it never even crossed my mind to use the subdomain they mentioned and it never would have...EVER.

I have 10 days to reply before they take any action deemed necessary. I am just a one-man website design business who got lucky registering a name that slipped through the net (xxxxx.de is not the name of the country where i reside but it is a working website not related to the airline).
Should i agree to all this, is everything on their side?

cf

 

IanTurner




msg:697025
 10:56 pm on Jan 31, 2004 (gmt 0)

If your nnnnn.de domain name is a generic term, I think they will not have a case against you.

Especially if your domain registration was before their airlines-nnnnn.de trademark registration. (You may even have a claim against their trademark registration in this case.)

You will of course need to contact a lawyer to get a more formal response to this question, in relation to german law.

colinf




msg:697026
 9:26 am on Feb 1, 2004 (gmt 0)

I think this company could be too big for me.

The actual trademark is air****xx.de, my domain being xxxxx.de i would gladly print the name here if it is allowed on this forum.

I could easily write to them and say i won't be a naughty boy, but it's the principle.

I am sure they cannot force me to give up the name if that is what they intend, i think it really is a generic term.

cf

xbase234




msg:697027
 10:32 pm on Feb 2, 2004 (gmt 0)

If they have lawyers at your door, you should seek a lawyer about your options. Message boards are good for some types of domain problems, but in this case you may be best served by seeking advice from an experienced domain attorney.

union_jack




msg:697028
 7:05 pm on Feb 3, 2004 (gmt 0)

I have been there, done that. Tried to fight it, spent thousands. then gave in.

Unless its making you good money, dump it fast.

Its nothing but touble.

rcjordan




msg:697029
 7:09 pm on Feb 3, 2004 (gmt 0)

In the US, you might get off with the generic geographic defense if you're willing to spend the bucks (I did and won), but in other countries -Spain, for instance- that might not work.

too much information




msg:697030
 7:16 pm on Feb 3, 2004 (gmt 0)

If your material is not related to their industry I would think they are just trying to scare you. I really don't think they can collect damages from you because you "could use" a subdomain with their trademarked name.

Technically I "could" create a subdomain microsoft.mydomain.com so should I expect a C&D as well? If they are so concerned tell them they can buy the domain. Otherwise I just don't see that you have a problem.

bird




msg:697031
 8:06 pm on Feb 3, 2004 (gmt 0)

I think sending you a C&D before you even had the chance of infringing on any of their rights could be qualified as abusive in Germany. You might consider reporting their lawyers to the relevant bar association ("Anwaltskammer") for malpractise.

Unfortunately, you still need a lawyer for yourself in any case.

mep00




msg:697032
 4:17 am on Feb 4, 2004 (gmt 0)

Even if they own airlines-****xx.de, I would think (though I could be totally wrong) that airlines.****xx.de is different. With a "-" it's like a two word name, while with a "." it's like two seperate words. The word "airlines" cannot be trademaked, and the name of a country can't be trademarked either (unless, maybe by the country itself?). Therefor, while I would read "-" as being a name, "." I would read as being about airlines in the county "xxxxx".

As other have suggested, speak to a lawyer; for while I think my point is logical, there is no law which states that all laws are logical.

One more thought (just a thought--not advise): they might be bluffing; it's one thing to file a law suite, but it's a whole different matter to go through with it.

Just my 1 cent worth (not even worth the normal 2 cents).

Learning Curve




msg:697033
 4:53 am on Feb 4, 2004 (gmt 0)

There is also a PR (public relations) opportunity here. "Giant company tries to crush the little guy." (Think of the "free" media generated by the MicroSoft versus MikeRoweSoft domain name dispute.)

So, on the one hand, if you fight you would have to pay legal fees and public relation company fees. On the other hand, if you fight you may also generate enough media impressions (read: sales) to offset those costs.

This is all very speculative, of course. But, nevertheless, you may want to consider it in your decision-making.

union_jack




msg:697034
 10:15 am on Feb 4, 2004 (gmt 0)

The point is they will keep sending you legal letters till they grind you down. I was quoted upto 500,000 in legal fees to go to court. Solicitors 400 per hour, barrister 500 per hour, court fees ect. I was told I would win but who can afford to take the risk.

Buy a new domain 10, do the maths.

papamaku




msg:697035
 10:38 am on Feb 4, 2004 (gmt 0)

We got bullied by a big SE as our name was too similar (not done intentionally) and the service we provide was also similar.

As we weren't really making much money, we decided to back down and change the name. Didn't want the risk of losing in court due to lack of good lawyers etc, then having my house taken away!

This site was quite helpful though (all about C&D letters): [chillingeffects.org...]

mep00




msg:697036
 2:43 pm on Feb 4, 2004 (gmt 0)

The biggest flaw in this case seems to be that you're being asked to "cease and desist" from something you haven't even started doing. You might be able to even threaten them with legal action if they don't "cease and desist" harassing you. Once again, you need to check with a lawyer, or at least some consumer/business protction group or agency.

Please let us know how this turns out. While it would be understandable if you choose to cave, it could be interesting if you choose to fight. Even if it's not worth a full blown fight, you might be able to call thier bluff for now, and back down at a later point.

moltar




msg:697037
 2:54 pm on Feb 4, 2004 (gmt 0)

Maybe you could offer them to have the subdomain for a small monthly fee ;)

dcrombie




msg:697038
 2:57 pm on Feb 4, 2004 (gmt 0)

...or set up the subdomain as a silent re-direct to their site. That way they can't even explain the situation to a lawyer/judge as it will be their site that comes up ;)

herlaar2303




msg:697039
 6:38 pm on Feb 4, 2004 (gmt 0)

If this is all European based, than I have a strong feeling that there is no case in this 'threat'. They are accusing you for something you haven't done, and maybe even wouldn't do.

Legal advice is nice, but I am afraid that there a not that much lawjers who have experience with this kind of matter.

A subdomain is not a domain, you don't own one. You can make one. But the possibility to make one doesn't imply that you will make _that_ one.

Ric

bird




msg:697040
 7:11 pm on Feb 4, 2004 (gmt 0)

The biggest flaw in this case seems to be that you're being asked to "cease and desist" from something you haven't even started doing.

That was my first thought as well. But I think I understand now what really happened:

- Colinf had a wildcard DNS entry, so that any subdomain *.country.de would resolve to his site.
- The airline owns the domain and trademark on airlines-country.de.
- Some executive there tried to access their own site, mistyped a dot for the dash, and ended up on colinf's site.
- They complained about it.
- Colinf removed the wildcard DNS entry (so that only www.country.de will resolve).
- Now they want a written statement that he won't reactivate it again.

Infringing on a trademark means to use that trademark without authorisation. In general, you can infringe accidentally, even if you don't want or intend to do so, and you'll still be responsible for any damages.

The big question now is what "use" means or doesn't mean. Does the technical accessability of airlines.country.de constitute a "use" of their trademark, even if it's not advertized at all? If so, does it cause any damages to the airline? How big is the risk that people (other than their executives) mistype the airline's URL and get confused?

I don't know if there are any precedences about such a situation. The outcome if it goes to court might entirely depend on the technical understanding of the judge.

mep00




msg:697041
 8:36 pm on Feb 4, 2004 (gmt 0)

wildcard DNS entry
But is that enough for a tm violation? If it is, there would probable have been several famous cases by now. (I know that doesn't hold water legally, since there always needs to be a first, but it is a good basis for an acurate guess.)
The airline owns the domain and trademark on airlines-country.de
Based on my very limited understanding of tm law, this doesn't give them any right to airlines.country.de unless it was used in bad faith. Furthermore, generic words are almost never protectable by a tm. Just because they own the name "airlines-country" doen't give then the right (barring bad faith issues) to pervent someone from making a site about airlines in the country country. I remember reading somewhere (I don't remember where, nor do I remember all the details) about a case where there wasn't protection because of the generic nature of the "violation."
xbase234




msg:697042
 8:50 pm on Feb 4, 2004 (gmt 0)

There are lawyers who specialize in domain related work, and they have a lot of experience. You just have to look for them -

ukwebmaster




msg:697043
 1:50 pm on Feb 5, 2004 (gmt 0)

Hi cf

Until you have infringed their tradmark there is no case to answer. You can't "cease and desist" when you're not doing anything.

You don't intend to infringe their trademark in the future- so there's never going to be a case to answer.

If it makes you feel safer to keep corresponding, you can write to confirm that you have no intentions of infringing their trademark, but I'd report them to the legal authorities for harassement instead.

No need to hire lawyers, this is an open and shut case.

ps..
Sticky me the url!

colinf




msg:697044
 5:19 pm on Feb 5, 2004 (gmt 0)

Thanks for the info all.
Firstly i have to correct the domain,
their trademark is not airlines-country.de... it is both: aircountry.de and air-country.de(my domain being country.de)

Mep00 wrote:
The biggest flaw in this case seems to be that you're being asked to "cease and desist" from something you haven't even started doing. You might be able to even threaten them with legal action if they don't "cease and desist" harassing you.

Absolutely right. I still do not understand it. I have been forced to de-activate my sub-domains so now i cannot use ANY subdomains no matter what kind of name i might want to use, which means basically that ALL subdomains everywhere would be illegal if they won..or not?

Moltar wrote.
Maybe you could offer them to have the subdomain for a small monthly fee.

My ISP said do not even think about going down that road because i may be admitting something which their laywers would have a field day with!

bird wrote:
Colinf had a wildcard DNS entry, so that any subdomain *.country.de would resolve to his site.
- The airline owns the domain and trademark on airlines-country.de.
- Some executive there tried to access their own site, mistyped a dot for the dash, and ended up on colinf's site.
- They complained about it.
- Colinf removed the wildcard DNS entry (so that only www.country.de will resolve).
- Now they want a written statement that he won't reactivate it again.

You got it exactly!
the point being that if i cannot reactivate it, i cannot use ANY other subdomains. So i can trademark colin-webmasterworld.com and force this website to de-activate all their subdomains!

Anyway, i have 3 days left to reply, maybe i will...maybe i ...

Colinf

robert adams




msg:697045
 8:51 am on Feb 9, 2004 (gmt 0)

ok, I will send out cease and desist orders to everyone on this forumm, to not ever rob me at my home and to never even think about it. If you don't file a letter with the court swearing you will never rob me at my homeand never even think about it,you will be sued and loose all your money.

that makes just about as much sense as what they are trying to do to you.
It is stupid , what is that movie, where the police are arresting people for crimes they haven't committed yet?

dumb, don't worry about it, tell them to sue away,

just my 1.5cents and not legal advice
I am not a lawyer and never played one on TV

robert

mep00




msg:697046
 10:46 am on Feb 9, 2004 (gmt 0)

what is that movie, where the police are arresting people for crimes they haven't committed yet?
Minority Report, based on the story of the same name, by Philip K. Dick.

My guess is that the country is Swistzerland--because this case has as many holes as Swiss Cheese. :)

And I still think you need to speak to a lawyer, if for nothing else but to find out how much you can sue them for!

johannamck




msg:697047
 7:27 pm on Feb 9, 2004 (gmt 0)

> the point being that if i cannot reactivate it, i cannot use ANY other subdomains. So i can trademark colin-webmasterworld.com and force this website to de-activate all their subdomains!

Considering how expensive lawyers are. Can't you solve this by activating this one subdomain and pointing it to their site? So that if they type in ****.yourdomain.de it will go to their xxx-yourdomain.de

This combined with a friendly letter that you understand their concerns, and that you took every precaution that a typo doesn't lead people to your site.

That's how I would do but then I'm a wuss and would do anything to prevent having to correspond with lawyers (other than my brother). :)

Drewbert




msg:697048
 5:31 am on Feb 14, 2004 (gmt 0)


If you let these people suceed in this little scam, then microsoft.com can then lean on soft.com and oft.com claiming that they COULD set up domains at micro.soft.com and micros.oft.com

You need to find the equivalent of eff.org in Germany, and ask them for some help.

Fight for your rights, or one day you won't have any.

mep00




msg:697049
 5:51 pm on Feb 14, 2004 (gmt 0)

Fight for your rights, or one day you won't have any.
I think it was Ben Franklin or Thomas Jefferson who said something to the effect: "Those willing to trade their liberty for security will have neither."

On the other hand, Sun Tzu, in [i]The Art of War[i], suggests, when possible, to avoid battle.

If you balance the two pieces of wisdom, the advice you end up with is to fight for your rights, but try your best to avoid going to court.

One addition thing to bear in mind: "The threat is more powerful than the exectcion."

For the rest of us (myself included), let's not forget that it's very easy to be a Monday morning quarterback.

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