Discussion:
What is the name of your state?I am located in New York. I have received a letter from a lawyer regarding the fact that the United States Trademark Office issued his client a Certificate of Registration for 2 generic terms that he has in a domain name. I happen to own domains with the same generic terms. Here is one paragraph:
If you do not transfer the subject domain names voluntarily, my client may be forced to file suit seeking an injunction, your profits, any damages sustained by my clients, the costs of the action, triple damages and attorneys’ fees under the Lanham Act, as well as mandatory statutory damages (up to $100,000.00 per domain name) for registering, trafficking in, or using a domain name with a bad faith intent to profit from my clients’ trademark.
His are (NOT THE REAL TERMS IN QUESTION- just using these as examples):
working-tips.com and workingtips.com while mine are
working--tips.com and workingtip.biz
The letter gives me 10 days to surrender the domains. I also feel the terms are incredibly generic and I shld not have to do this. Please note my domains are parked right now, and were parked before I received the letter.
Should I be worried? I dont want to spend money on a lawyer. This lawyer has a website about domain law so he is legit. Also, I never received a hard copy of the letter. Just emails. Are emails binding?
Thanks much for any help.
Answer:
His are (NOT THE REAL TERMS IN QUESTION- just using these as examples):
working-tips.com and workingtips.com while mine are
working--tips.com and workingtip.biz
The letter gives me 10 days to surrender the domains. I also feel the terms are incredibly generic and I shld not have to do this. Please note my domains are parked right now, and were parked before I received the letter. Have you checked the trademark database to see if the person actually does have a trademark registration? You can search at , use the search function under "Trademarks."
If he does have a registered trademark or trademarks, and those trademarks are "standard word marks," then it is unlikley that you would prevail if he were to actually sue you, or try and sieze your domains via the ICANN procedures. Although the words themselves may be generic, the combination of the words may not be generic, and if the USPTO issued a registration, then a court will presume that the trademark is NOT legally generic.
Should I be worried? If he has a registered mark, then you should be worried about losing your domains, or facing a lawsuit if you don't hand them over. If he doesn't have a registered mark, well, that doesn't mean that he still can't sue you -- there are other ways to obtain trademark rights other than via registration, although it can be harder to show common-law trademark rights, and it's more costly to sue under a common-law trademark.
Also, I never received a hard copy of the letter. Just emails. Are emails binding? What do you mean by "binding?"