Domain Manage

Trademark Infringement

Discussion in 'Domain Name Disputes' started by storebuilder, Nov 20, 2012.

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  1. storebuilder

    storebuilder Active Member

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    WITHOUT PREJUDICE


    Hello,


    We are writing to you because you own the following domain name: templatemonster.co.uk

    As you may know, TemplateMonster is a registered trademark of Jetimpex, Inc and, as such, any use of the TemplateMonster trademark without authorization from Jetimpex, Inc. is prohibited and considered as trademark infringement.

    This domain name you use may create confusion with Jetimpex, Inc’s activity and causes TemplateMonster trademark reputation losses.

    In order to avoid any further confusion, we hereby request that you immediately cease and desist from using aforementioned domain name.

    Please note that trademark infringement is a strict liability offense which means your ignorance or lack of willfulness does not immunize you against possible lawsuits.

    We look forward to hearing from you. Please contact us if you require further information.

    So for 7 years they are happy to pay affiliate commission and now this. Now I've removed the site can they still take up a case?

    Thanks
    Tony
     
  2. Domain Forum

    Acorn Domains Elite Member

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  3. grantw United Kingdom

    grantw Well-Known Member

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    They appear to be just asking you to stop using the domain. As you've complied with that I'd say they would struggle to take it further. That's just my opinion, IANAL!

    Maybe they're going easy on you as you've been using it to make them money.

    Grant
     
  4. gimpydog United Kingdom

    gimpydog Active Member

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    The community tm was filed in 2006 & registered in 2008 (to an individual, not Jetimpex Inc?).

    http://www.ipo.gov.uk/ohim?ohimnum=E5074761

    If you were using it commercially before then, I would tell them to feck off. Although they would be unlikely to let you stay on their affiliate program :cry:

    Have you considered using it with another affiliate program? You could also write back saying that you have been using it since 2005 in the UK & ask for evidence of their relevant tm pre-dating your use. It might "encourage" them to make you an offer. Otherwise it's pretty useless to you.

    ps. It might be wise to edit out the domain name from your post.
     
  5. namealot United Kingdom

    namealot Well-Known Member

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    Uk
    Filing date: 15 May 2006

    Us trademark
    Filing Date April 19, 2005

    Com
    Creation Date: 26-apr-2002
    Co.uk
    Creation Date: 17-Jan-2005

    Registration pre-empts there trademark ( although not registration of name or FIRST USE IN COMMERCE: 2002.04.15) which gives you alot more clout really depends on what your after as to what you do....
     
    Last edited: Nov 21, 2012
  6. devilsrefugee

    devilsrefugee Active Member

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    based on the above I would offer them the domain.. :D
     
  7. namealot United Kingdom

    namealot Well-Known Member

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    To add anyone can send a letter and anyone can try and claim a name there’s a world of difference between claiming and winning though.. There sort of using the trademark route? possibly hoping you make an error? You have prior rights but that’s use of name atm your on firm ground does tend to stop them winning it DRS etc it gets a little tricky with the trademarks doesn’t necessarily give you carte blanche as to what you can use the name for…?
    e.g. you own apple .abc sell apples fine no contest but then decide to sell apple products or similar after there trademark was issued it gets a little less so you may or may not be ok? They’d possibly pursue a different way through courts using the “trademark” as opposed to going through DRS etc,
    This can mean legal cost, not being able to trade during legal preceding, courts can drag on etc you may well win and get cost etc but can be a lot of hassle.. be aware not to give them grounds to do so tread carefully? You need to decide what your after sale to them, sale to another party, different affiliate etc then see the pro’s and cons risk etc of each..?
     
    Last edited: Nov 21, 2012
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