Letter of Cease and Desist - please provide your advice

Status
Not open for further replies.
This isn't a cybersquatting case at all IMO
Click to expand...

No it isn't, but it becomes cybersquatting the moment he asks for money.
At least, it becomes likely that some judge will see it that way.
There are plenty of people who fucked themselves up in a similar situation by asking for an offer.
 


That sucks. Was the certified letter to you as an individual? Hopefully you have your sites registered to your llc or corporation.

Give your attorney a call to discuss damage control.
 
It will only cost you a couple hundred bucks to have a lawyer figure this out for you. Don't take any advice you get from WF - seek a professional out.

Shit, go to a law school and ask some seniors. Surely they would even know.
 
I am actually in the same situation and am very knowledgeable on this subject.

Domains act differently than trademarks but they definitely can be directly correlated with one another as well as completely unrelated. Meaning you can have a trademarked name and not the same domain of the trademarked name. This usually happens when a trademark is given and the domain is already taken by someone else.

Does this mean that there is a violation of the Lanham Act because there is a trademarked name and a domain being used with a similar sounding name or identical?

Does this mean I can go trademark domain names in use and just because the current domain holder didn't register the name, than it is mine?

The agency the governs international domain disputes is the World Intellectual Property Organization or WIPO.

This is the law and the 3 tests they must prove in order to win against you that pertains to your legal issues:

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.
Click to expand...


The question is can you beat this? I know in my case, I can.

Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
Click to expand...


The facts are also the lawyers do not know crap on this and to get one that does. Minimum $5k retainer and or $350 an hour.

Go study www.WIPO.int and check out this case with JackAss.

Best of luck!
 
I've dealt with a lot of legal issues and I can tell you right now they have no case. If your layout looks nothing like theirs, they definitely have no case, and even if it is slightly similar, "ubid" and "youbidyouwin" aren't similar at all, seeing as you spelled out the entire "you" and "you bid" is such a generic phrase for your niche. However, I'm not a lawyer and I'm not telling you what to do, I'm just telling you that this is exactly what I'd be thinking if it happened to me.

As far as how to deal with it, I'd dickroll them because I just don't give a fuck. But it's definitely not the best idea because if they really are serious about their little suit, they can add that in there and make up some bullshit about emotional damages or fucking up some shit they had open in another tab or whatever. Basically, just don't reply, and I'm guessing you'll be fine.
 
Blastyourass said:
I am actually in the same situation and am very knowledgeable on this subject.

Domains act differently than trademarks but they definitely can be directly correlated with one another as well as completely unrelated. Meaning you can have a trademarked name and not the same domain of the trademarked name. This usually happens when a trademark is given and the domain is already taken by someone else.

Does this mean that there is a violation of the Lanham Act because there is a trademarked name and a domain being used with a similar sounding name or identical?

Does this mean I can go trademark domain names in use and just because the current domain holder didn't register the name, than it is mine?

The agency the governs international domain disputes is the World Intellectual Property Organization or WIPO.

This is the law and the 3 tests they must prove in order to win against you that pertains to your legal issues:



The question is can you beat this? I know in my case, I can.



The facts are also the lawyers do not know crap on this and to get one that does. Minimum $5k retainer and or $350 an hour.

Go study www.WIPO.int and check out this case with JackAss.

Best of luck!
Click to expand...

blastyourass, thanks for sharing your experience. as for the 3 tests:

(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and - youbidyouwin.com is in no way identical nor is it confusingly similar to ubid.com imo.

(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and - i did have a legitimate interest wrt the domain as i threw up an auction site template, i didnt simply squat it

(iii) The domain name has been registered and is being used in bad faith. - im in no way using the domain in bad faith or damaging the goodwill of their trademark...unless i decide to dickroll LOL
 
Wow this really makes the case for private whois!!
I in no way think the names are similar, I think you should check their website and see if there is the phrase you bid you win anywhere on it I tried and didn't find it anywhere
I googled the phrase "you bid you win" and other companies have the phrase on their website(but not the company that's threatening to sue go figure).
The best advice I can give is wait for a real filing if you cant afford a lawyer right away they are probably just trying to scare you off and see if they have a weak competitor.
 
to the OP,

I, as well, am not a lawyer.

Here - I did find something that a lawyer probably would have charged you $1200.00 for. Here's the search results for the companies patents:

United States Patent: 6202051

(also - they have many patents - you'd have to look them all over)

And also - go to this page and type their domain name in the Search term field. (their site doesn't seem to allow linking to the results page). You'll see all the names and "slogans" they've TM'd.

Trademark Electronic Search System (TESS)


Taking a quick overview, and a quick look at your site - it doesn't seem to jive. (unless they've TM'd a new slogan "You Bid You Win", and it's not available on those databases as of yet.)

You can always ask them to provide you proof on what exactly are you infringing on? If they really do have something on you, they should want to show you - after all, this would really intimidate you to cave in.

It seems the fact may be (if the email you received is legit), they have interest in your domain - as it has similarity which may drive the odd more websurfer. (opinion only)

Sell the domain to them - they're a public company and have tons of dough -- for you to make serious dough with it, will take a lot of time and money, why not cash out now, since you may have a serious buyer at your door. (worth a shot - you'd have to hold your guns)

IMPORTANT - get real legal advice (from a specialist in this particular field). A lot of lawyers give a quick 10 minute free consultation - sometimes over the phone -- for a brief overview. BUT - get 2 or 3 -- because a lot of Vampires, I mean Lawyers, look to make money for themselves if they feel there is a potential large party involved.

Good luck - Be careful.
 
If you're not making any money with it I'd ignore it until they came at you again.

If it's something you want to protect for whatever reason..

John Berryhill

John Berryhill is the guy that pretty much everyone uses when they have a domain worth fighting for and he wins, a lot.
 
Status
Not open for further replies.
Top Bottom