Trademark Infringement Advice, Please

CoolDog · #1 () 09-18-2008, 06:41 PM

I need advice on a name trademark infringement.

I registered a .TV domain way back in 2002, and it is an adult trademarked name. I received a FedEx letter today stating they want the domain transferred to them ASAP.

They were very friendly in the letter and said that they allowed me to use the domain for the last six years, but now they want it.
It's a very good domain for them and I can see why they want it.

They will even reimburse me the transfer fees (big deal).
They say their name is trademarked in the U.S., but I am in Canada. Would that still affect me? The domain is hosted in Canada and it is registered with some .TV registrar.

Is there anything I can do to try and keep this domain, or do I give it to them since they own the trademark? Would it be ok of me to ask for more money for it?

I don't know what to do.

Any advice would be greatly appreciated. I have until 5:00 PM tomorrow to contact them.

CoolDog

Graham · #2 () 09-18-2008, 07:39 PM

Thats a tough one. If you have put a lot of work into the site you could try and ask them for some kind of compensation. I think the best thing for you to do would be to contact them and tell them that you need to speak to a lawyer about this first, but will get back to them as soon as possible. Say that you have put a lot of work into the site and you feel it is unfair that you are being forced to just hand it over to them.

If you originally registered it to be sneaky, then you might just have to hand it over.

*NOTE: I have no legal background, so this could potentially worsen your situation so take what I say with a grain of salt.

haynesey · #3 () 09-18-2008, 07:43 PM

Also,

I'd say, it wasn't nice of them to let you keep it for 6 years, like they seem to be saying.

In 6 years you could build the site up, spend $1000's on promotion, when they could and probably should of asked for it right away.

LadyHoldem · #4 () 09-18-2008, 07:49 PM

I'd talk to a lawyer, and they don't get to choose what time you have just because they said so.

the27offsuit.com · #5 () 09-18-2008, 07:54 PM

William Hochberg, Attorney at Law
Re: What is the statute of limitations on trademark claims

Infringement of a federal trademark does not have a specific statute of limitations. Instead, courts often apply the most analogous state law, and so if you are several years (say, a decade or more) past the event, you won't have much of a case. There is also a legal doctrine called "laches" which, again, says you have a reasonable period during which you must take action. So, if you knew, or should have known, of a right, but didn't take action, your right becomes void. "Use it or lose it", as they say.

As you say they admitted letting you use it for 6 years and did not take action. I think any Judge would throw this out.

CoolDog · #6 () 09-18-2008, 08:19 PM

Quote:

Originally Posted by Graham

Thats a tough one. If you have put a lot of work into the site you could try and ask them for some kind of compensation. I think the best thing for you to do would be to contact them and tell them that you need to speak to a lawyer about this first, but will get back to them as soon as possible. Say that you have put a lot of work into the site and you feel it is unfair that you are being forced to just hand it over to them.

If you originally registered it to be sneaky, then you might just have to hand it over.

*NOTE: I have no legal background, so this could potentially worsen your situation so take what I say with a grain of salt.

I never did register the domain back then thinking that I could sell it to them down the road. I promoted their business at the time and figured that the site/domain was a good way to get more affiliated business. I even made sure to host in Canada just in case something like this came up. Not that I know that will really help!

Quote:

Originally Posted by haynesey

Also,

I'd say, it wasn't nice of them to let you keep it for 6 years, like they seem to be saying.

In 6 years you could build the site up, spend $1000's on promotion, when they could and probably should of asked for it right away.

Yeah, that seems a bit crazy... six years is a long time, and to come out of the blue now? I am pretty sure that the domain is better suited now for them with the adult video craze happening now.

Quote:

Originally Posted by LadyHoldem

I'd talk to a lawyer, and they don't get to choose what time you have just because they said so.

I'll phone them up tomorrow and see what they say. My big question is can they do anything with their U.S. TM if I am in Canada and the site is hosted in Canada? I just checked the Canadian TM database and there is no TM on that name.

Quote:

Originally Posted by the27offsuit.com

William Hochberg, Attorney at Law
Re: What is the statute of limitations on trademark claims

Infringement of a federal trademark does not have a specific statute of limitations. Instead, courts often apply the most analogous state law, and so if you are several years (say, a decade or more) past the event, you won't have much of a case. There is also a legal doctrine called "laches" which, again, says you have a reasonable period during which you must take action. So, if you knew, or should have known, of a right, but didn't take action, your right becomes void. "Use it or lose it", as they say.

As you say they admitted letting you use it for 6 years and did not take action. I think any Judge would throw this out.

Good quote. This may be the ammo I need. I will have to look into this more.

Thanks for the replies folks, more suggestions would be welcome!

CoolDog

the27offsuit.com · #7 () 09-18-2008, 08:38 PM

Be sure you save the letter they sent stating that they let you use it for 6 years.

CoolDog · #8 () 09-18-2008, 08:43 PM

For sure.

Here is an excerpt of the letter...

"Since 2002 we have permitted you to use the #### trademarks in conjunction with the domainindispute .tv domain to further your participation in the #### Affiliate Marketing Program. The purpose of this communication is to advice you that we are now revoking permission for your continued use of the above-stated domain name."

CoolDog

Quote:

Originally Posted by the27offsuit.com

Be sure you save the letter they sent stating that they let you use it for 6 years.

PPP · #9 () 09-18-2008, 08:58 PM

They certainly can revoke your ability to be an affiliate. That's normal and sensible. But the six year thing makes the trademark thing very problematic for them.

Get a decent attorney and you probably have no worries -- although the domain may be close to useless if they don't let you affiliate with them.

mypokercorner · #10 () 09-18-2008, 09:10 PM

Quote:

Originally Posted by CoolDog

I just checked the Canadian TM database and there is no TM on that name.

I am no legal expert. My take on this is simple, if you don't own it, you're screwed.

Quote:

Originally Posted by CoolDog

I just checked the Canadian TM database and there is no TM on that name.

Perhaps you should do something to change that so you're not screwed... Comprende? (I don't know if this is doable because of the US trademark, but I would certianly look into this first, and if you can register it, do it ASAP).

If that doesn't work and you really have no choice but to hand it over, try to sell it. Pick a price range that would cost less for them to buy it vs their costs of a lawsuit to take it from you.