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The Question

I own a dot CO (example.co) domain name since August 2010. A certain company using the same name and similar domain name (dot COM) has been in the mark and publicly traded since late 1980s. I bought the dot CO domain name for the intent of putting a blog on it. But since being a student and working and life itself I started a WordPress blog several times, made few posts and then it was taken down or I took it down. All along I had it grandfathered with the free version of Google Apps (50 free users for life) which allowed me to have email, calendar, etc on that domain. In order to avoid missing any stray emails I setup a "catchall" routine which forwarded all stray emails to my main email. For 4 years I filtered, threw away, and replied to many emails intended to the dot COM domain. However, about a year ago I got tired of all the frequent spam and useless emails so I decided to create a WordPress blog and post all those emails there (it is sketchy, but legal to my best understanding).

I just got a "Trade Mark Infringement" and "Cease and Desist" email from someone located in Germany. Telling me that the dot COM company is registered in New Zealand (but originally from the USA and operates here as well, I am from the USA BTW). They wrote:

  1. Our client has recently been made aware that you have registered a confusingly similar domain name: example.co (the “Infringing Domain Name”). Our client is not aware of you having any rights or legitimate interests in respect of that domain name. The Infringing Domain Name links to a site that features emails that were intended to be sent to example.com email addresses (the "Infringing Site").

  2. Your use of the Infringing Domain Name and Infringing Site infringe our client's intellectual property rights. The registration of the Infringing Domain Name and the use of the Infringing Site are also likely to mislead and deceive consumers, in breach of the Fair Trading Act 1986, as they represent that the proprietor of the domain name is associated with our client. Consumers may believe there is a connection between "Example Corp" and your business, or that your use of the Infringing Domain Name and the Infringing Site is otherwise endorsed by "Example Corp".

  3. Our client considers that the Infringing Domain Name has been registered in bad faith to gain some commercial advantage.

    Where example and Example Corp are their name and the domain name. I DO NOT have any ads on that blog. I never made a dime or a penny from that site. The only possible monetary issue is that I used to have (no canceled) an automated email response to all the incoming emails stating that they sent an email to Example.CO and that Example.CO is for sale by me. Couple months ago I added to that automated reply that if anyone is interested in removing any Blog Post, there is a processing "fee" of some $$$.

. .

Does it sound like they have any grounds to a win? They never approached me prior to this.

. .

Dot CO Background

The .CO TLD was originally owned by the Republic of Columbia. The Internet Assigned Numbers Authority (IANA) assigned the .CO to Columbia around late 1991. In 2001 there was shown a public interest in the dot CO as it resembles the well known dot COM. In 2002 the delegated entity for dot CO, the University of Los Andes announced that it abandoned plans to commercialize the dot CO domain. After a long story short, the dot CO was transferred in 2010 to .CO Internet SAS, under the regulatory and policy supervision of the Ministry of Communications of Colombia. As a final step, in July 2010 the dot CO became available to the rest of the world.

Trade Mark Infringement

The United States Patent and Trademark Office (USPTO) offers the following guidance on trademark infringement:

What is trademark infringement?

Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.

What will happen if someone sues me for trademark infringement

A trademark owner who believes its mark is being infringed may file a civil action (i.e., lawsuit) in either state court or federal

court for trademark infringement, depending on the circumstances. However, in most cases, trademark owners choose to sue for infringement in federal court. Even when a plaintiff chooses state court, it may be possible for the defendant to have the case "removed" to federal court.

If the trademark owner is able to prove infringement, available remedies may include the following:

  • a court order (injunction) that the defendant stop using the accused mark;

  • an order requiring the destruction or forfeiture of infringing articles;

  • monetary relief, including defendant's profits, any damages sustained by the plaintiff, and the costs of the action; and

  • an order that the defendant, in certain cases, pay the plaintiffs' attorneys' fees.

Conversely, a court may find instead that

  1. you are not infringing the trademark,
  2. a defense bars the plaintiff's claim(s), or
  3. other reasons exist why the trademark owner is not entitled to prevail.

How do I know whether I'm infringing?

To support a trademark infringement claim in court, a plaintiff must prove that it owns a valid mark, that it has priority (its rights in the mark(s) are "senior" to the defendant's), and that the defendant's mark is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services offered under the parties' marks. When a plaintiff owns a federal trademark registration on the Principal Register, there is a legal presumption of the validity and ownership of the mark as well as of the exclusive right to use the mark nationwide on or in connection with the goods or services listed in the registration. These presumptions may be rebutted in the court proceedings. Generally, the court will consider evidence addressing various factors to determine whether there is a likelihood of confusion among consumers. The key factors considered in most cases are the degree of similarity between the marks at issue and whether the parties' goods and/or services are sufficiently related that consumers are likely to assume (mistakenly) that they come from a common source. Other factors that courts typically consider include how and where the parties' goods or services are advertised, marketed, and sold; the purchasing conditions; the range of prospective purchasers of the goods or services; whether there is any evidence of actual confusion caused by the allegedly infringing mark; the defendant's intent in adopting its mark; and the strength of the plaintiff's mark.

  • A lot of this is going to turn on why you registered that particular domain, and whether your reason for registering the domain sounds plausible. PS. What jurisdiction are you in? – Nick ODell Nov 19 '15 at 8:26
  • Unites States OfA. – KingsInnerSoul Nov 19 '15 at 12:14
  • They didn't even bother finding my contact info. They simply emailed the proxy email that the domain's privacy uses. – KingsInnerSoul Nov 19 '15 at 12:15
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Yes it sounds like they have a case they could possibly win

Assuming their trade mark is valid it clearly pre-dates your usage. All that remains is for them to prove that a reasonable person might be confused by your usage - that will turn on the facts.

You have 3 options:

  1. Comply
  2. Wait until they start legal action and then comply
  3. Lawyer up!
  • Well, their only domain is the dot com one. The dot net, org, info etc are all up for sale by others... How can they prove infringement? – KingsInnerSoul Nov 20 '15 at 4:30
  • The trade mark is in the "example" part - the master domain is irrelevant. – Dale M Nov 20 '15 at 5:04
  • But in order to infringe on their trade mark I have to "cause confusion in the minds of consumers about the source or sponsorship of the goods or services offered under the parties' marks." I don't sell anything, don't offer any goods or services. I don't have any ads. I don't monetize on the website in any way. How can they prove that there is an infringement? – KingsInnerSoul Nov 20 '15 at 5:41
  • You are not providing any useful answers! – KingsInnerSoul Nov 20 '15 at 15:16
  • 3
    "Law Stack Exchange is for educational purposes only and is not a substitute for individualized advice from a qualified legal practitioner." He doesn't have to provide useful answers. You should see a lawyer. – Tofu747 Jan 30 '16 at 6:56
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It doesn't seem like they have a case for straight trademark infringement. 15 USC § 1125(a)(1) says (emphasis mine):

Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

They would have to show how your use is "in commerce" to have a case under this subsection, and it doesn't seem to be.

However, there is also a law against cybersquatting, and they may have a better case there. Take a look at 15 USC § 1125(d):

A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person—
(i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and
(ii) registers, traffics in, or uses a domain name that—
(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;
(II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or
(III) is a trademark, word, or name protected by reason of section 706 of title 18 or section 220506 of title 36.

Those auto-replies offering to sell the domain were probably a bad move on your part. From the law:

In determining whether a person has a bad faith intent described under subparagraph (A), a court may consider factors such as, but not limited to...
(VI) the person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct;

I have to say, if I were on a jury, I would look at the evidence - that you registered a domain with the same name as an established trademark, did almost nothing with it, set auto-replies that you would charge to sell the domain, published emails intended for the original company, and set auto-replies that you would charge for taking them down. I would probably find a bad faith intent to profit there.

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