Swedish Company Demands Control Of My Domain

1yerrot

1yerrot

An Inglorious Bastard
Jul 20, 2010
3,499
27
0
Dominican Republic
Check this out, I have a website that uses a company name, the company is in Sweden. I have the .org of their name, it's an affiliate site for one of their products. I don't mimic their site in any way. They sent a paper letter in Feb that I didn't get because I live in the Caribbean now and didn't get the mail to my old house. But anyway, here is the email I got today....

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**SECOND DEMAND**

Dear Mr. ********,

As you know from our previous correspondence in this matter, this law firm represents the legal interests of *********************. On February 4th, 2011, we sent you a letter demanding that you immediately transfer the domain name ************.org to our client (see copy attached). Your unauthorized use of our client’s registered trademark *************** in the domain name is likely to cause confusion among consumers and is a clear case of cybersquatting, actionable under e.g. the Uniform Domain Name Dispute Resolution Policy (UDRP).

Our client would prefer to resolve this matter informally. However, if we do not receive confirmation that you will transfer the domain name to our client within ten (10) days of this email, we will advise our client to use whatever legal means necessary to protect its rights, including initiating formal proceedings against you.

If you have any questions, please contact the undersigned directly.

This correspondence is not intended to be a complete or full statement of the facts or law relevant to this matter and is being forwarded to you without prejudice to our client’s rights and claims, all of which are expressly reserved.


Sincerely,

[FONT=&quot]Groth & Co[/FONT]


[FONT=&quot]-----------------------------------------------------------------------------------------------------------------------[/FONT]


[FONT=&quot]So do I really have no choice but to turn the domain over to them? Anyone else dealt with a similar situation before? If I surrender it, it won't be a huge loss, but I'd like to keep it.
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they-mad-they-so-mad.jpg
 
Scare tactics. Talk to a lawyer if you really value it. There are some other guys here who have dealt with this
 
Unfortunately if you are using the domain to advertise their products that is considered being used in bad faith and they legally have a good shot at taking the domain from you. Especially if they have it trademarked. It's basically like dangling it in front of them. My advice would be to take the site down that you have on it as soon as possible and put something up totally unrelated. If you need more information on this shoot me a pm and I will get a few links to you that help you understand this situation better.

John Berryhill is one of the best domain lawyers available if you need assistance you should contact him.
 
SinfullySweet said:
Unfortunately if you are using the domain to advertise their products that is considered being used in bad faith and they legally have a good shot at taking the domain from you. Especially if they have it trademarked. It's basically like dangling it in front of them. My advice would be to take the site down that you have on it as soon as possible and put something up totally unrelated. If you need more information on this shoot me a pm and I will get a few links to you that help you understand this situation better.

John Berryhill is one of the best domain lawyers available if you need assistance you should contact him.
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This x1000.
 
SinfullySweet said:
Unfortunately if you are using the domain to advertise their products that is considered being used in bad faith and they legally have a good shot at taking the domain from you. Especially if they have it trademarked. It's basically like dangling it in front of them. My advice would be to take the site down that you have on it as soon as possible and put something up totally unrelated. If you need more information on this shoot me a pm and I will get a few links to you that help you understand this situation better.

John Berryhill is one of the best domain lawyers available if you need assistance you should contact him.
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So do you have a legitimate source for this? The case below is one of many where people used a registered trademark in a domain to push the company's product and won when the company demaned the domain be transferred. There are many examples of this. Of course it does not mean they won't sue so I personally stay away from trademarks to not have to deal with the grief. Probably worth talking to a lawyer if you want to keep the domain. Someone who knows how decisions are going these days.

http://www.wipo.int/amc/en/domains/decisions/html/2004/d2004-0481.html
 
I can browse through a few if you like to see if I can find some. Basically if taken to court the decision could go either way but the fact of the matter is when stepping onto trademark territory it's playing with fire. Unless the domain is worth enough that you care to pay lawyer fees to fight for it then its not worth it. It's less likely for a company or individual to win a domain that isn't being used for anything related to the trademarked company such as a site on toilets if the domain is for newspapers. Again that is why I posted John because he would be the perfect person to talk to about it. He has an outstanding history in challenging cases like this.
 
Are they actually still paying you for commissions?

IMO, domains with trademarks in them just aren't a good idea and the odds are clearly stacked against you.
 
AddisonDomains said:
Did you register this domain before the company was created/trademarked?
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Unfortunately that doesn't always matter. That is why I stated "using it in bad faith". However, if they were fully aware that he was using it for their affiliate program for an extended period of time and didn't say anything that makes them look retarded. A judge would be wondering why they didn't say something earlier. Then again if it's just been a few months and they just now noticed it then it could work against him.
 
I think before I turned it over I'd turn it into one of those "Paypalsucks.com" type of sites just to spite them.
 
There's no contention in their claim since you're even selling their product which is the primary use-case of the UDRP.

Without hiring a lawyer, you're pretty much betting they won't actually file a complaint. You should definitely seek a lawyer's advice, but if push comes to shove, it's not worth fighting for a domain you're using as a company-name match for affiliate products. They could just yank your ability to sell their products.
 
@ Mahzkrieg

That is kind of what I was thinking. If the domain wasn't really that expensive I would just take down the site and continue advertising their products on another domain especially if he is doing well with it. No point in risking revenue over a $10 domain.
 
There is a doubt in my mind. There can be hundreds of companies registered with the same name in different countries/State. Eg: You register a company in Delaware and then someone else registers with the same company name in UK. Well, that's possible to what I have known.

Now, there's a 3rd person from South Africa who owns a www.companyname.info domain name. Which company will legally own it? The one from Delaware or the one form UK ?
 
jr_sci said:
There is a doubt in my mind. There can be hundreds of companies registered with the same name in different countries/State. Eg: You register a company in Delaware and then someone else registers with the same company name in UK. Well, that's possible to what I have known.

Now, there's a 3rd person from South Africa who owns a www.companyname.info domain name. Which company will legally own it? The one from Delaware or the one form UK ?
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It doesn't matter. All you need to do is prove that somebody is profiting off of your company's mark by creating confusion with their domain name. In this case, OP is selling their products.

It's a much different case if ACME-Inc.com is selling Dallas-based ACME, Inc. birdhouses and ACME, Inc. the lawmower company from Jersey, files a complaint.

As internet "common law" develops and globalizes, the precedent for honoring foreign company claims is only growing.
 
jr_sci said:
There is a doubt in my mind. There can be hundreds of companies registered with the same name in different countries/State. Eg: You register a company in Delaware and then someone else registers with the same company name in UK. Well, that's possible to what I have known.

Now, there's a 3rd person from South Africa who owns a www.companyname.info domain name. Which company will legally own it? The one from Delaware or the one form UK ?
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The one who trademarked it first. However, there are always different companies with the same name but a different use. I have three companies in my city (which isn't that big) that has the same name but they sell different products or services so it's different.

If a company named Handy Households sells housing appliances while another company sells house insurance there is no similarities. However, if Handy Households that sells insurance trademarks the domain and then the other company tries to build their company with the same name and same service then they are going to have problems.
 
SinfullySweet said:
Unfortunately if you are using the domain to advertise their products that is considered being used in bad faith and they legally have a good shot at taking the domain from you. Especially if they have it trademarked. It's basically like dangling it in front of them. My advice would be to take the site down that you have on it as soon as possible and put something up totally unrelated. If you need more information on this shoot me a pm and I will get a few links to you that help you understand this situation better.

John Berryhill is one of the best domain lawyers available if you need assistance you should contact him.
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Thanks for the info. I could put something unrelated on it, but I nothing I could see really profiting from which would make the domain useless to me anyway.

pocketrockets said:
Are they actually still paying you for commissions?

IMO, domains with trademarks in them just aren't a good idea and the odds are clearly stacked against you.
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The commisions aren't paid through them it's paid through CJ.com, I was also considering just turning the domain over because I don't want them to get my CJ account in trouble.

AddisonDomains said:
Did you register this domain before the company was created/trademarked?
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Nah bruh...

Mahzkrieg said:
There's no contention in their claim since you're even selling their product which is the primary use-case of the UDRP.

Without hiring a lawyer, you're pretty much betting they won't actually file a complaint. You should definitely seek a lawyer's advice, but if push comes to shove, it's not worth fighting for a domain you're using as a company-name match for affiliate products. They could just yank your ability to sell their products.
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I'm not going to go throught the trouble of hiring a lawyer, I rather just turn over the domains if a lawyer is needed. That just will be more money spent.
 
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