Legal Question in Intellectual Property in Arizona

Hi,

I have a website that offer free products (for now) and I registered my domain a year and a half ago with a major registrar. My domain is very popular. Another company that has a trademark on a similar name as my domain name has sent me a cease and desist letter to stop using my domain because it is confusingly similar to their trademark. They have their trademark from few years before I registered my domain. Unfortunately we are in the same business too.

Here is a close example to make things clear:

I own myapplebasket.com and the company's website is applesbasket.com and their trade mark is "applesbasket and farming".

According to the Intellectual Property laws in United States:

a) Am I infringing on their trademark or not? Do they have a strong legal case against me in court?

If I am unintentionally infringing on their trademark and they have a strong legal case against me then I will move my website to a new domain and redirect my current website visitors to my new site. I want to keep my old domain for at least 6 months for technical reasons.

b) Can the company contact my registrar and "Legally" transfer my domain to their company even after I complied with their cease and desist letter and moved my website to a new domain but kept the old domain to redirect my old visitors? By keeping the old domain for old visitor redirects am I still infriging on their trademark?

Has anyone had any experience dealing with this type of situations?

Thanks!

Asked on 10/16/10, 7:13 am

3 Answers from Attorneys

Kevin B. Murphy Franchise Foundations, APC
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A franchise attorney or trademark attorney will say you are likely engaged in what is called Cybersquatting. The trademark owner will say you are using your domain name to profit from the goodwill of their trademark.and sue you under the provisions of the Anticybersquatting Consumer Protection Act (ACPA). Consult with a good franchise attorney or trademark attorney in your area for specific advice.

Kevin B. Murphy, B.S., M.B.A., J.D. - Mr. Franchise

Franchise Attorney

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Answered on 10/21/10, 8:34 am
Andrew Lahser Law Office of Andrew P. Lahser, PLC
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Hi,

In order to help you, a trademark attorney would need more facts than you have provided.

a) Trademark law generally protects against a customer's confusion, and, sometimes, dilution, depending on the fame of the trademark. It is not clear whether you have senior trademark rights, or, the company sending the letter. It is also not clear if there is any confusion, or any likelihood of confusion. A lawyer would look at your product, what sales records you have, your website logs, or whatever other evidence you might have. A lawyer would compare this with the rights claimed in the trademark and the sufficiency of the trademark registration. From there, they might be able to give you preliminary advice

b) Mere ownership of a domain name will not rise to the level of trademark infringement. However, you are doing much more. There is a legal process that they can use to cancel your registration or have it transferred to them, however, it is unclear if that is available to them, again, because you have not provided enough facts.

You should immediately call your personal/business lawyer, and, request a referral to a trademark/domain name attorney. I don't recommend posting "close examples" on public websites. Even small changes in the facts can drastically change a legal opinion, especially in trademark law, where different types of items are handled differently: books, t-shirt, professional services, etc. all receive different amounts of protection based on something factors like: similarity of marks, similarity of goods, sophistication of purchaser, likely to continue trade channels, cost of the goods, time that the marks have co-existed without confusion, and other factors. Finally, there is always a chance that your competition will find you post, and, use it against you in a later proceeding.

I don't typically answer questions like this. But, to be clear, I am not your lawyer, I do not represent you just by answering your question. And, finally, I have carefully crafted my answer not to give legal advice, but rather, to show you that need need to talk to a lawyer, disclose the precise facts, and receive some legal advice. Good luck.

Good luck,

Andrew P. Lahser

Attorney at Law

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Answered on 10/21/10, 8:53 am
Donald W. Hudspeth The Law Offices of Donald W. Hudspeth, P.C.
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We would need more information to determine if you are actually infringing. But please keep in mind that if you are offering products for free you don't have much to lose, while they feel they do, as they have clearly shown by contacting you to tell you to stop. Whether or not you are infringing, if they file suit and serve you, you are looking at legal costs and the hassle of the legal process over months or even years, whether you ultimately "win" or "lose". The question may not be so much "Do I have a case?" as "How much money and time am I willing to put into keeping this domain?"

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Answered on 10/22/10, 10:28 am

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