When I got into digital photography, I spent a few days brainstorming about a catchy name to host my images in Printroom. At 0200 one morning (4+ years ago) I sat up in bed and said, "Xxxxxx"...that's it!". So, I purchased the domain name "Xxxxxx.net".
I have recently been contacted by an Law Office, stating they represent a company "Bla Bla Bla", that owns the rights and trademark to "Xxxxxx" and the Domain Name "Xxxxxx.com".
I did'nt really care, as I was looking for a change anyway, and this forced me to go ahead and change my name.
I put a message on "Xxxxxx.net", indicating the my site had changed, and where to find me now.
This week, I received another letter from the Law Office, stating the following
"...we have been monitoring your site, and appreciate your cooperation with certain request. It remains our position however, that your continued registration of the domain name is a problem....we hereby demand that you immediately TRANSFER the domain name Xxxxx.net to "Bla Bla Bla".
All of that to ask, am I under any legal obligation to just "transfer" them my domain name
I think this is a case where you want the advice of an IP lawyer - there are lots of little details you are not providing that may make a large difference in how the law would work. A lawyer should know what to ask you and what it all means. In summary - the smart advice is to go get "Legal Advice".
My guess would be that they are blowing at least some smoke - "Their position" "is a problem" "demand" etc. While there have been instances where it seems so names were grabbed up with an intent to squeeze a user who would have a reasonable interest in a particular name, I don't think you did that. And if they had a clear, objective and explainable reason, they should have said so. You catch more flies with sugar, seems they started with vinegar. But that's a guess and it may just be they hired a lawyer used to playing a goon who forgot how to say "Please.". Talk to a lawyer.
As with the other posters, I start with the IANAL bit (I am not a lawyer) so get yourself some real legal advice.
But running ahead of things... The question is: Does their trade mark registration pre-date your use of the domain? If so, they are in their right to demand that you do not use the domain name.
If, however, your use of the name, active use that is, pre-dates their trademark registration then you have no obligation. They should have been aware of the issue when they applied for the trademark. Still, the question would be if this is worth fighting over.
If you have been actively using the domain before trademark was registered you're in your right to use it. Just ask for a refund/compensation of the domain name costs, transfer the domain, and be done with it.
If you purchased the domain name and kepy your ownership up to date, then they can't own the same name. Sounds like they're trying to bully you into giving up the name. If they want the domain name and you own it, sell it to them. See a lawyer and push back.
Tentacle wrote:
As with the other posters, I start with the IANAL bit (I am not a lawyer) so get yourself some real legal advice.
But running ahead of things... The question is: Does their trade mark registration pre-date your use of the domain? If so, they are in their right to demand that you do not use the domain name.
Another part of why it would be go to get "[B]L[/B]egal [B]A[/B]dvice" is that it may depend on the field of business (or the equivalent legal term) of this other company - eg. Apple computers and Apple records. Location may also matter. This is all in addition to the timing issues that have been mentioned. In summary: this is complex and the OP should talk to a lawyer specializing in this area.
It turns out, I have an IP Lawyer, employed by the company I work for. I have shot them an email and am waiting for a reply. Sounds like these folks are trying to bully me into just giving them something I have been paying for, for the past 4 years.
We'll see how it goes...maybe I'll get some "L" out of it
