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:
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").
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".
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 $$$.
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Does it sound like they have any grounds to a win? They never approached me prior to this.
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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 federalcourt 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
- you are not infringing the trademark,
- a defense bars the plaintiff's claim(s), or
- 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.
