Trademarked Domain Name

[normbaker]

I work for a company as an web administrator for an auto repair facility. I recently received a cease and desist order for a site we purchased a few years ago. It has the manufacturers name in the domain as #####servicelasvegas.com. On the site the title reads Independent #### Service Las Vegas. I called the lawyer for the manufacturer and he told me that we must take down the site immediately and forfeit ownership to them. I had this problem with another manufacturer, and in that situation the lawyer said I can add "Independent" in the title and it would be ok to use. Is it legal to force us to give up the site, or do we have any ground for ownership?

 

[Michael Wechsler]

Cease and desist letters regarding domain names are frequently used as a scare tactic. I don't know that this is the case. Do they have a Federal trademark? Did they refer to any registration? If it is mostly descriptive, e.g. car-service-las-vegas, then it would be extremely difficult to claim trademark infringement since the domain is descriptive. What did your lawyer tell you and why would using the word "Independent" change anything?