Corporate Law Tradmark infringement help needed

[EVW_]

We recieved a letter today stating that our company is being accused of trademark infringement, unfair competition and dilution. We have a registered domain name that this organization feels we are infringing on. They are requesting that we cease and desist from any and all existing or planned used of the name, website etc., and take the steps necessary to transfer the ownership of the name to the organization in complaint. I have no problem with the first, we weren't really using it, but did have plans to use it. The second is what I have a question about. This "transfer of ownership" of the name. Can we request payment for the domain name even if it uses two words that are included in their trade marked name? We bought and paid forit, and had the insight to do so. Even if we don't use it, we still own it, and feel that we are giving them a valuable thing by just turning it over. Any help would be appreciated.

 

[NYClex]

This is hard to answer without the exact details. But usually those companies are willing to compromise as long as the compromise is fair. So I would approach them and tell them: Look, this was my cost, I am willing to give you the rights t o this domain, if I come out of this without any costs." Probably we are talking here about a couple of hundreds of Dollars, which is peanuts to most big companies. Their cost to pursue legal action against you would be much bigger. Therefore they should be willing to compromise.

This whole subject is still very much litigated. Nobody really knows where a trademark infringement starts until a court has decided. It is clear in cases like this: if you sell hamburgers and open a domain like: www.macdonalds.com (though, what about if your name is Shaun MacDonalds?) or www.verybigmac.com. But if you are Donald Rumsfeld and open a site www.donaldsburgers.com? Can McDonald's keep you from that?

 

[EVW_]

Thanks for your help

Thanks for the advise. Do I have to sell the domain name to them? Even if we never use it I still think it will be worth more to us if they don't get to use it.

 

[NYClex]

This is an even murkier issue. I am not really up to date on trademark law, but I remember there were some lawsuits a couple of years ago where companies sued people who were simply "sitting" on domain names they wanted to use. Sometimes they won, sometimes they lost. As far as I remember it depended on what the court thought were the ulterior motives of the owners of the domain name: if they thought they just wanted to push up the price for the inevitable sale, the owners usually lost.

But again, it depends on the details. The cases I mean involved pretty clear situations like this: Joe Sleazy some day was talking to his nerdy neighbor Billy Gates about some crazy dream Billy had: that people would one day buy things by computer, going to shops that would be known by domain names. Joe does not even own a computer but he can see that some Dollars could be made this way and, before anyone else knows about Billy's crazy ideas, he goes and reserves 300 domain names, such as www.mcdonalds.com www.sears.com www.seveneleven.com etc., names of all the shops he can think of. A year later Al Gore invents the internet and all those companies suddenly find that their names are owned by Joe, who demands $ 10 million from each company for the sale of their domain name. The companies sue him.

You need to decide if you rather want to keep the domain for your own business or want to sell. If you want to keep it, you will have to consult a trademark attorney or IT attorney for the probably coming legal battle. If you want to sell, you should start negotiating. Even then a consultation might be helpful.