by brogrammer2018 on 12/11/21, 3:53 PM with 275 comments
I have received a cease and desist letter from a law firm via email.
They claim as they client registered a trademark two years ago for the name, I must handover my .com domain to them for free, otherwise they will sue me.
For them not to sue me, because they have now registered trademark (even though I had the .com domain and was using it 7+ years before them)
They state from their solicitor that I must do all the following (long letter they sent me but here is the title/headings):
1. Cessation of Use of the Mark.
2. Abandonment of Rights
3. Future Trademark Applications
4. Transfer of Domain Names
5. Acknowledgement of Ownership and No Challenge
6. Mutual Release
7. Covenant Not to Sue
8. No Outstanding or Known Future Claims/Causes of Action
9. Acknowledgment of Settlement
10. Confidentiality of Agreement
11. Non-Disparagement
12. Agreement is Legally Binding
13. Entire Agreement
14. New or Different Facts: No Effect
15. Interpretation
16. Governing Law and Submission to Jurisdiction
17. Equitable Relief
18. Reliance on Own Counsel
19. Counterparts
20. Authority to Execute Agreement
"[Company Name] further demands that you provide, by no later than the close of business Pacific Standard Time on December 15, 2021, written confirmation that you will comply with these demands. You are specifically advised that any failure or delay in complying with these demands will likely compound the damages for which you may be liable. If [Company Name] does not receive a satisfactory and timely response, [Company Name] is prepared to take all steps necessary to protect [Company Name]'s valuable intellectual property rights, without further notice to you.
The above is not an exhaustive statement of all the relevant facts and law.
[Company Name] expressly reserves all of its legal and equitable rights and remedies, including the right to seek injunctive relief and recover monetary damages."
If anything I would have thought they should be the ones changing their name, as I was using the name 7+ years before them with a similar product
by bhartzer on 12/11/21, 6:02 PM
As Director of a domain name protection company (and not an attorney) I can offer this:
If you registered the domain name before the other party files for a trademark, then there is no way you would have known that they would file for the mark. So, in most cases you probably don’t have to give up the domain name. It comes down to whether or. Or you registered the domain “in bad faith” or not. And again, how would you know they would start their business and get a trademark? You wouldn’t.
Are you in the same industry and compete with each other? If so, there might be an issue, but I’d your site offers different products and there would be no confusion between companies or websites, then there may not be an issue.
The best way to handle this is to get a domain name attorney to respond to their letter to you, essentially telling them to go away, and that you plan on keeping the domain name.
If you cannot afford an attorney, look for a company that offers domain name insurance or a domain name warranty, if you have an issue like this with your domain name, your legal fees to defend the domain are covered.
As you have described the situation here, you bought the domain before they filed for their trademark, and you’re not pretending to be them. So you should be able to keep the domain. They are just trying to “ strong arm” the domain away from you with a threatening letter. If they do sue you or file a udrp, defend yourself with the help of a good domain name attorney.
by musesum on 12/11/21, 4:59 PM
IANAL; this is not legal advice.
by Someone1234 on 12/11/21, 4:40 PM
I'd evaluate what your endgame is. If your endgame is to keep the domain then I'd get a lawyer in order to make it clear that you will respond to legal challenges (and, yes, the bill is going to run up). If you were willing to sell, for a price, then you should try to figure out how much a legal challenge would cost them and set a price a bit higher than that.
Is it fair? Absolutely not, but the US legal system is set up so that those with the deepest pockets often win. It isn't a fair fight for normal citizens, and even having the law on your side is often not enough because it is a financial battle more than a legal one.
Either way may be wise to lawyer up today, either for a better selling price, cause them to back off entirely, or move it into the "bury you with costs" phase of bullying.
by paxys on 12/11/21, 8:34 PM
Assuming both parties are in the US, this is the key legislation around domain squatting: https://cyber.harvard.edu/property00/domain/legislation.html.
You haven't told us anything about what you do with the domain, but since you registered it quite a bit of time ago I'm assuming it has nothing to do with the company in question that sent you the letter.
Looking at the clauses in the link, it seems pretty clear they they have no real case. Everyone's advice of getting a lawyer is obviously apt, but I'd say you can just save yourself the money and ignore this letter completely. There's a 99% chance that you will not hear back from them. If they do decide to actually escalate it, you can always get a lawyer at that point.
A general piece of advice about the legal system - nothing ever happens within 3 days. They are creating a false sense of urgency in order to scare/bully you.
(As a side note, I get very annoyed when a random question on the internet is met with a hundred responses of "get a lawyer". I'm sure the person who posted it already knows that lawyers exist. What they are looking for is some free advice, not legal representation from HN.)
by hn_throwaway_69 on 12/11/21, 5:12 PM
If you send cease and desist letters without merit you should be forced to indemnify the respondent for the entirety of their attorney's fees and pay exemplary damages.
This would require lawyers to make a careful assessment about prospects of success, rather than hoping to scare the other side into capitulation.
These heavy handed tactics are just dreadful and shouldn't be accepted in any rational legal system.
To avoid doubt, I'm not saying that their claim doesn't have merit. Unfortunately you will need to pay a lawyer to find out.
by chrischen on 12/11/21, 9:02 PM
We ended up litigating and canceling their registered trademark with the USPTO by proving our business and website were setup before theirs. If you have over 7+ years of business and public records this should be a pretty open and close case. The bad news is however even if that is the case it can take 2-3 years (probably due to pandemic)and a lot of money. In our case it cost less than $10k, so the guy’s extortion made no sense.
It also didn’t help their case that the guy lifted verbatim copy from my website, including my TOS with my address! I’m not sure if the judge even looked at this though.
by codingdave on 12/11/21, 4:08 PM
by gumby on 12/11/21, 4:41 PM
If you are in the USA, the law is on your side: just because they registered the mark doesn't take away your rights.
In addition, if they are doing something different from you (or perhaps you're using the domain for non-business purposes) they have no claim. You can open McDonald's garden shop (even if your name isn't McDonald) and unless you made it look like a McDonald's restaurant (trying to cause confusion) it's none of the restaurant company's business.
Best, unfortunately, is to get a lawyer. If your country has a "small claims" court you could even sue them to get back your lawyer costs, but those are likely to be small in any case.
Good luck!
by oliwarner on 12/11/21, 8:29 PM
Well that's a scam.
If they're going to sue you, let them. You literally have prior use of the term and if you have to prove that, you can with comical ease.
They know this… which is why this sounds like bullies trying to scare you into giving up a domain they can't afford to pay for. Scary letters are cheap. Write one back asking they reassign their trademark to you?
But seriously, probably get paid advice first, and don't worry about this 3 day nonsense. Nobody works that fast.
And remember that trademarks are classed. Rarely does somebody get exclusive use of a name in all senses. You might not be able to sell what they sell under their trademark, but they don't have rights to the word in generic senses.
Oh and probably approach a regulatory body about their solicitors. This isn't an appropriate way to conduct business.
by WORMS_EAT_WORMS on 12/11/21, 5:41 PM
This could be the best thing that has ever happened to you. Depending on the price and size here, very little chance / or unlucky for them to go nuclear option. The last thing they want to do is take this to court and then also lose. Devastating for them to lose and only expensive for you to lose.
Settle here and take the bonus.
How deep do their pockets look and how valuable is this domain to them / you?
0. Get lawyer and do everything through them and through their advice first.
1. Draft a response saying basically over your dead body, make it clear and obvious how likely it is they will lose, and tell them you are prepared to take this to courts for a legal judgment.
Tell them you are reasonable though and give them an option to make a serious offer for purchase at 10x whatever you value it at.
2a. Get offer, negotiate to a value of 0.25-4x (not 10x), accept, move on with your life.
2b. Get sued, win, re-offer sale at 20x. Sell domain at 8-12x.
2c. Get sued, lose, sucks.
by harryvederci on 12/11/21, 5:00 PM
- People often mention 0 countries. Where do you operate? Where was your company founded? How about the other company? Etc. How do you know if that helpful comment doens't assume something totally different?
- Are you really going to feel confident about your legal situation after reading comments on a platform like Hacker News?
by dominenames on 12/11/21, 4:34 PM
by jawns on 12/11/21, 4:45 PM
https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-900d1...
Just like patents have a concept of "prior art," trademarks have a concept of "first use in commerce."
If you can demonstrate that you were the first to use the trademark, you have less to worry about (but nothing's guaranteed until litigated).
HOWEVER, if the party that registered the trademark can demonstrate that they used it prior to you, regardless of when they registered it, then they may have the upper hand.
This is probably not DIY territory; consult a lawyer knowledgable about trademark law to help you determine how to respond.
They may, in fact, recommend that you countersue for infringement. Might not be worth your time to pursue, but at least in theory you could claim that they're infringing on your trademark, because the U.S. follows a "first to use" rather than a "first to file" trademark system.
by aalex123 on 12/11/21, 5:04 PM
Let's say I get an email like the one OP got but I don't understand english and I take no action... Will the non-US registrar give them my domain by default?
by therealmarv on 12/11/21, 6:23 PM
by ThrustVectoring on 12/11/21, 9:14 PM
1) "Hobbyists" and the like who are not doing anything particularly valuable with the trademark and domain name. Even if these people can prevail in a lawsuit, the other company is hoping that the owner decides they can't (or won't) risk the time, money, and stress of going through a civil lawsuit.
2) People with valuable businesses whose rights are worth defending. The other company is already pretty sure you're not in this category, since you haven't vigorously defending your naming rights to date.
Overall, you have prior use, and may be able to "win" if it gets to an actual lawsuit. The strength of your legal claim isn't the problem; if you have to spend high-five figures to keep the rights to your hobbyist website, you have already lost. Your goal is to convince these folks to leave you alone on as favorable terms as possible. If your domain name is not particularly valuable and important to you, this likely means A) hiring an attorney, B) using their services to convince the other company that you're in the second category, and then C) selling them your domain name for significantly more than it's worth to you. If your domain name is valuable to you, the only thing that changes is that you may need to pay the stochastic taxes that businesses have to pay to have access to the legal system for dispute resolution, and you might have a hilarious "thank you for informing us of your clients' violation of our trademark rights" demand letter sent back at them.
by darrenwestall on 12/11/21, 6:18 PM
by Terry_Roll on 12/11/21, 4:42 PM
TM's are cheap so its an easy trick and a lawyers letter doesn't cost much either, but its a legal game you may well be forced to play, because they might go to the domain registrar and try it on with them to get your domain.
Unfortunately these are the additional cost we can be forced into playing if someone with more money wants something from you like in this case your .com name. You could also see if your domain registrar as some sort of arbitration which could keep costs down or lower than using a lawyer. I think divorce lawyers best typifies some of them thrive on disputes. Good luck!
by stevenalowe on 12/11/21, 5:57 PM
In the USA, if there might be customer confusion between your two businesses then there is grounds for a cease and desist, but you have precedence. Might consider turning the tables and sending them a cease and desist :) perhaps they’d like to give you the .net domain as an apology
by scrollinondubs on 12/11/21, 6:36 PM
But agree with all comments: get a lawyer before you do anything.
by elmerfud on 12/11/21, 4:41 PM
First use is a strong defense, but you will need to defend it. If you have similar products and can show first use, as you claim, perhaps negotiating a sale of your entire business including the domain would be something to offer them.
Usually this kind of tactic happens because they've looked at you and guessed you don't have financial capital to defend yourself. Unfortunately, because it's very difficult to prove they're acting in bad faith, there's likely no way to recover your costs of defense.
by JohnHaugeland on 12/11/21, 5:51 PM
All they're doing is losing their trademark here. If you were using it before them, it shouldn't have been assigned to them.
GET AN ATTORNEY.
But to calm down, read about "stop and go" in Pittsburgh in the 90s. There was a store called that about an hour's drive outside the city. Then a gas station convenience chain merger tried to take on that name for 150 stores. About two years later the original store found out and said no. The 150 store behemoth tried to sue.
The 150 stores are now called CoGo's.
by bshep on 12/11/21, 5:56 PM
I own MY_LAST_NAME.com, me and my family use it for email, ( i.e. firname@lastnane.com ) should we register a trademark to protect ourselves from this type of bullying? Are we safe since its our own last name?
by netengineer1 on 12/11/21, 6:02 PM
This has happened to me. Ignore them until WIPO claim shows up. Which they probably tried and were denied. A good example is nissan.com
by marckohlbrugge on 12/11/21, 4:36 PM
My suggestion would be to either A) ignore and see if they go away, and/or B) have a domain name lawyer send a reply showing you won't roll over. That's usually enough for parties like these to back down.
If you need a lawyer recommendation send me DM me on Twitter (@marckohlbrugge). More than happy to help.
FWIW, some people might mention a procedure called 'UDRP' which is typically used by TM owners to quickly and cheaply get a TM-infringing domain name. However, one of the requirements for a successful UDRP case is that the TM needs to have been issued BEFORE the domain name was registered. Which is not the case here. So a UDRP approach would fail for them.
The other way for them would indeed be to sue and try to claim TM infringement in court. I don't have much experience with TM law, so I'm not sure what your odds of winning are. But there might even be a way to get their TM invalidated.
TL;DR: Talk to a lawyer.
P.S. If they have money for lawyers, they might also have money to buy your domain name. I wouldn't propose a purchase until you've talked to a lawyer (as it could hurt your case), but it's something to consider for later on.
by justinc8687 on 12/11/21, 6:50 PM
by throwsdfsf on 12/11/21, 8:23 PM
There is a huge community of domainers on Twitter. There will be blowback. You will get tons of support, and recommendations. (as well as guidance on lawyers...etc).
by radley on 12/11/21, 5:51 PM
by toss1 on 12/11/21, 7:40 PM
Meanwhile, also look up that law firm that sent you the letter and see what you can find out about them (e.g., are they even legit, what kind of other cases do they handle, etc).
And search for any information you can find about this other company and the people. What have they done? do they own property? What other businesses? Criminal records? etc. etc. etc.
Also gather all your own records - business formation, original site registration and registration history, logs of any marketing and advertising you have ever done, etc.. Anything that shows you actively using this trademark over time and as far back in time as you can establish.
Bring this data to your new specialist attny.
by xivzgrev on 12/11/21, 6:59 PM
Consult with a lawyer. Intuitively their case makes no sense, but actual law is not always intuitive
by aartav on 12/11/21, 7:41 PM
Its easy to prove you are not acting in bad faith because your ownership precedes the trademark. I personally own and use several domains that others hold trademarks on, but all of mine were registered before those companies established trademarks.
by DaveExeter on 12/11/21, 4:43 PM
It is ridiculous, and the only reason for this is because they have no legal right to the domain name.
by goatherders on 12/11/21, 7:11 PM
by tmaly on 12/11/21, 4:36 PM
by stanislavb on 12/11/21, 9:03 PM
by infotogivenm on 12/11/21, 6:35 PM
1. Do not reply to the email yourself. 2. Get yourself a lawyer and keep a full accounting of all legal expenses.
by randomdata on 12/11/21, 6:16 PM
Not sure how to interpret this free legal advice.
by dctoedt on 12/11/21, 7:09 PM
1. A bit of Google-searching suggests that you're in Australia. I couldn't find any U.S. trademark registration for $NAME, where your .com domain is $NAME.com as listed on (what I surmise is) your Twitter header.
2. If the facts are only as you say — always a big "if" — the letter you describe would be ... let's just say, groundless, at least in the U.S.
3. If you own $NAME.com; AND: For seven-plus years you've actually been using $NAME as a trademark "in commerce" in the U.S. by shipping goods bearing the mark (or rendering services under the mark) in interstate- or foreign commerce; AND: You're being threatened with a U.S. trademark registration, AND: The registration hasn't been made "incontestable" by the passage of five unopposed years; THEN: In theory you could petition the U.S. Patent and Trademark Office (USPTO) to cancel the other company's registration, on grounds that you're the senior user. That would not be cheap, and I think this would require hiring a lawyer to represent you in the USPTO. https://www.uspto.gov/trademarks/ttab/initiating-new-proceed...
4. You might find amusing the precedents at https://www.oncontracts.com/monster-cables-picked-the-wrong-... (response to a threatening letter from Monster Cable) and https://lettersofnote.com/2011/02/14/regarding-your-stupid-c... ("some asshole is signing your name to stupid letters"). In a similar vein, one of my late former law partners reputedly had a big BULLSHIT rubber stamp that he would supposedly apply to such letters and return them to the sender. (I don't remember ever seeing the stamp so it might have been a story that "evolved" over time.)
5. The title/headings that you list are mostly gorilla dust that unsophisticated lawyers throw up to try to get opposing parties to agree. There's no way you'd want to agree to all, or even most, of that without a BIG, buyout-type payday in return.
Again, don't rely on the above as legal advice; when in doubt, consult a lawyer who's licensed in the relevant jurisdiction.
EDIT: If you want, email me (see my HN profile); if this is a U.S. matter and it's not from one of my existing clients (extremely unlikely), maybe I can write and send an "appropriate" email response for a purely-nominal fee (but I wouldn't be able to take on anything more than that).
by scosman on 12/11/21, 9:07 PM
by pwg on 12/11/21, 4:10 PM
by eevilspock on 12/11/21, 8:19 PM
by FigmentEngine on 12/11/21, 9:44 PM
check your registration rules, and reach out to them to explain what is happening, stop any end run on your registra.
by benatkin on 12/11/21, 11:41 PM
This isn't in what you quoted. I wouldn't be surprised if they didn't demand you give them the domain but hinted that you should give it to them because you won't be able to use it for the purpose you wanted anymore.
You can most likely keep the domain, even if the trademark holds water - in that case you just can't use it for what you're probably wanting to use it for. If you were actively using the domain, the trademark might not hold water, but from the way you describe it, it seems like pretty passive use of the domain. It's also bad to let them register a trademark you wanted. I don't know too much about it, but presumably there's a way to get something like a Google Alert if your brand is going to be trademarked, and you can oppose it if you know about it in time: https://www.gerbenlaw.com/blog/filing-a-notice-of-opposition...
If they did demand the domain, see nissan.com. I don't think it necessarily hurts them to demand the domain. Nissan hasn't gotten the domain but they haven't got in trouble for demanding it either. No lawyer has been disbarred over it. ICANN stops short of transferring domains because of trademarks alone, but it isn't with prejudice.
A trademark isn't a domain, but a domain also isn't a trademark. If it were, a lot of YC brands would have been squatted, because plenty of had to settle on not having the .com at first, and many have ended up getting them later.
I wonder what it was like when codeacademy.com got codecademy.com. Perhaps it was something like "Hey, you guys can't use codeacademy.com for much, mind selling it to us for cheap?"
by andrew2984 on 12/11/21, 9:22 PM
by gostsamo on 12/11/21, 4:53 PM
by temp8964 on 12/11/21, 7:50 PM
by philprx on 12/11/21, 7:24 PM
They have no right to their claim and are using abusive language to make you do something under threat.
You can get quite some money out of it I believe.
IANAL and this is not a legal advice.
by thesuperbigfrog on 12/11/21, 4:00 PM
by dragonwriter on 12/11/21, 5:21 PM
Is it correct that they will sue you if you don't comply? Maybe, that's up to them.
Is it correct that your use of the domain name violates their trademark? Also, maybe. That depends on the market you are in, the market they are in and that the trademark is registered for, and other things.
If you aren't willing to just hand over the domain, and don't want to just roll the dice on liability, you should seek professional legal advice, and not respond in any way until you have received and considered that advice.
by rolph on 12/11/21, 6:49 PM
thats a big hunch, and i dont see that going in a good direction at all, for anyone, if my hunch is actually fact, rather than hunch
by derekpankaew on 12/13/21, 7:10 PM
There's a really interesting episode on the Tim Ferris podcast, where Drew Houston shares the story.
by kstrauser on 12/11/21, 10:42 PM
by jacknews on 12/12/21, 2:37 AM
Of course you need to get a lawyer if they do sue, but it sounds as though you should be the one suing, demanding they cease and decist, etc.
by hugoromano on 12/11/21, 6:49 PM
by wyldfire on 12/11/21, 7:28 PM
FWIW this is the kind of protection you could get by registering your business/product's mark. I'd say it's still possible but probably slightly harder to do now.
by paulschreiber on 12/11/21, 7:15 PM
by niij on 12/11/21, 8:23 PM
In any case: asking for legal advice without even providing a the jurisdiction(s) or details is a waste of time.
by smorgusofborg on 12/11/21, 5:49 PM
by nprateem on 12/11/21, 4:52 PM
by emteycz on 12/11/21, 3:58 PM
by arrty88 on 12/11/21, 5:36 PM
by PaywallBuster on 12/11/21, 4:39 PM
get in touch with lawyers dealing with IP/trademarks
you can have a brief talk w/ them to discuss options before making any decision :)
by iommu on 12/12/21, 8:23 AM
by ashwinipatankar on 12/12/21, 2:28 PM
by trentnix on 12/11/21, 5:32 PM
We had evidence of first use in commerce and offered not to sabotage their pursuit of a trademark. They immediately agreed, backed down, and signed a document allowing us to use the name unrestricted irrespective of whether they successfully obtained the trademark. As we expected, the trademark application was denied (the name was descriptive, not unique) and it was all behind us quickly.
TLDR: get a lawyer. Trademark law is weird.
And don’t be mean - the other business is now your first call if you ever decide to sell.
by Trias11 on 12/12/21, 8:08 AM
by syntaxing on 12/11/21, 4:53 PM
by MentallyRetired on 12/12/21, 6:03 AM
by firekvz on 12/11/21, 5:07 PM
UDPR is your friend
by eh9 on 12/11/21, 7:23 PM
by rblatz on 12/11/21, 4:46 PM
by unreal37 on 12/11/21, 7:01 PM
Don't ask for money. Being seen as "domain squatting" them will work against you in a tribunal.
by danlugo92 on 12/11/21, 10:59 PM
by theartfuldodger on 12/11/21, 4:52 PM
I usually would go straight to the throat and very personal.
Publish their letter on the domain they seek, capture all lawyer and company details and publish to site.
Use opsec for phone numbers, call them at terrible hours ( at home) to discuss offers of payment.
They are trying to bleed you with superior resources so guerrilla tactics are best ( legal of course)
They act different when they realize they are exposed and you don't care about normal processes.
Lol, I should make my own David v Goliath service.
Depends on the size of Goliath. No one scary came for me and a few 2am calls led to crickets.
by otterley on 12/11/21, 4:45 PM
by imglorp on 12/11/21, 4:34 PM