website name problem

[smanna]

I own a website called mymilano which is an online magazine for expats in Milan registered in sept 2008.The trademark is not registered however.I recently received a demand to cease the website from my-milano as they have been trading since 2007.
They say my site is causing damage to them as people confuse the two.The only people who see my site are the ones on my mailing list so I fail to see how this is possible
I just wanted to ask if I have a leg to stand on as I am unsure I can afford any legal proceedings.
I have uploaded a copy of the legal letter they sent if anyone wants to see it.

 

[Michael Wechsler]

Apparently mymilano.com is a domain for sale. I think their "likelihood of confusion" argument is a stretch and I'm more confused why they haven't removed that site for the same reasons. Quite frankly, I think that the letter you received is presumptuous and some might find it insulting. They can make their arguments to a court but to send it to an individual? I'm very unimpressed with their web site's design!

You might want to look up their alleged registration and see whether the mark is registered or just pending. It looks like they only filed a few months ago. I know that in the US they have to be aware that nobody else is using the mark and that it qualifies for registration, etc. He says "registered" and it doesn't say approved... odd. Check that out with the registry in the UK as I'm guessing my hunch is correct.

With regard to WIPO, they would need to prove bad faith. I think that the barristers writing the letter somehow want to make their case for themselves by making a stretch - that their company started just a year and change ago and everyone must know who they are? I don't know. Perhaps that is the case here and I don't know how you came up with the concept but, without more knowledge and given the generic nature of the domain name, I think it's presumptuous.

Anyway, those are my thoughts - it's not legal advice telling you what to do, just my take on this for the moment.

 

[smanna]

thanks but...

the domain is my-milano and not mymilano.it isnt for sale.It was registered a year before my site but they didnt file for trademark until a month after my site was opened and it hasnt been accepted yet.

 

[Michael Wechsler]

If I were you, I'd dispute the filing. They filed for a trademark after you opened and there are considerable number of players already in the market.