Legal Question in Intellectual Property in California

Re: Domain Name Rights

You need to consult with a good trademark lawyer. Specifically, if your domain name is "likely to confuse consumers" as to the source, sponsorship or affiliation of your goods or services with those of the author of the demand letter, then it will convince a court to order you to transfer the domain name for free. If not, then you can probably keep it.

But whether or not it is "likely to confuse" requires careful analysis.

Re: Domain Name Rights

I'm somewhat less concerned than Mr. Floum. While no competent attorney would ever tell you that you won't be sued, or can't be sued, there seems to be little basis for liability here.

Generally, liability to a trademark owner from registering a domain name that's similar to the trademark arises only when (1) the registrant's intent or purpose is not innocent, e.g. where the purpose of the registration is to hold the domain name for ransom, or (2) the trademark is not only registered, but is famous. A third situation is where confusion results and folks who think they're doing business with one company are tricked into doing business with the other. This would ordinarily require not only that the names be similar, but also that the companies be in overlapping markets.

The bad practices are called "cybersquatting" and "cyberpiracy," respectively.

In my opinion, the names you've registered do not resemble the name of the complaining party. The cautious thing to do would be to respond to the lawyer's letter, asking for a precise explanation as to why their client would be injured or why your proposed use is unlawful or unfair. Ask them to cite the legal principle or statute, and to cite one or more cases upholding their point of view. I would not offer to give or sell them the domain name(s), but if they make the first offer, it's OK to negotiate.

My answer assumes, of course, that you registered the names with a good-faith purpose of using one or both for yourself, and not to commit cybersquatting or cyberpiracy.

Re: Domain Name Rights

Both attorney Floum and attorney Whipple are right, but they miss the mark.

Simply put, anybody can pay an attorney a small sum to write a letter on attorney letterhead in order to scare someone. This was done to you. So hit the ball back across the net. Hire an attorney to write back to the first attorney (on attorney letterhead and in attorney language) telling the attorney to go pound sand, and threatening a big federal lawsuit to have the attorney's client's trademark declared invalid unless they back off. I would be surprised if you are unable to find an attorney willing to do this for $100 or less.