Typo on TM domain

[newbie]

Hi,

I just received a nasty letter from lawyers acting on behalf of Microsoft.

I have some domain names that are typos of their trademark "hotmail".

Should I just hand the domains over? They are threatening to charge me for using their TM fraudulently! The domains are parked with namedrive at present and show up a search for "mortgages" as the keyword hotmail didn't produce anything useful!

They have sent me an agreement to sign that says I will hand the domain names over and pay their legal fees and if I do not agree they will take me to the high court for fraud.

Nominet is not mentioned anywhere in the document. The domain names are all .co.uk domains.

Your opinions on the matter will be greatly appreciated!

Thanks,

NB.

 

[elkanet]

I would assume what they REALLY want is for you to hand over the domains. Paying the legal fees threat is just a way of showing their financial clout and power to test your resolve. Lets face it Microsoft are going to come out the winner whatever the result. Just hand them the domains and move on before it gets messy.

 

[newbie]

The problem is that they have not said what their legal fees are so I am reluctant to sign anything at the moment agreeing to pay them. I would hand the domains over for free but they seem to want cash too!

 

[Alien]

Edited .....................................................
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[elkanet]

The problem is that they have not said what their legal fees are so I am reluctant to sign anything at the moment agreeing to pay them. I would hand the domains over for free but they seem to want cash too!

Let me tell you something... A few years back I owned a variation of a TM .com. The company in question was a multi-million pound organisation. One day I got a rather nasty letter from their lawyers (prob. similar to the one you have), saying the domain name was a pass off of their clients business. They had printouts of my website source code, links and whois records. They obviously wanted the domain name back plus a payment for legal fees. Guess what...no mention of cost for legal fee's in the letter.

I took the site offline immediatley. Then I wrote to the lawyers, stating the website had been taken offline and I await further instructions. No reply.

 

[newbie]

They have succeeded in scaring me!

Oh, they have also asked for full details of the revenue earned from Namedrive on these domains as they wish me to pay it to them together with their legal fees.

This doesn't sound right to me, when does a DRS come into it? From what i've read here a DRS would just hand the domains over to them if they lost...?

 

[eetc]

If it were me, I'd just delete the domains and tell them that they have been deleted. They'll pick them up and thats probably the end of it. They have bigger fish to fry.

I would be afraid of entering in to a discussion about their legal fees as I wouldn't want to say something inadvertantly that compromised me. Just let them have the domains and then speak to a solicitor if they pursue you.

Good luck.

eetc

 

[elkanet]

If it were me, I'd just delete the domains and tell them that they have been deleted. They'll pick them up and thats probably the end of it. They have bigger fish to fry.

I would be afraid of entering in to a discussion about their legal fees as I wouldn't want to say something inadvertantly that compromised me. Just let them have the domains and then speak to a solicitor if they pursue you.

Good luck.

eetc

Thats prob. the best thing to do...

 

[keys]

This is an increasingly important website for checking likely issues with .uk domains,

http://www.patent.gov.uk

 

[retired_member26]

Hello Newbie,

First of all do not sign anything! Second, ask them which TAG they want the domain to be trasferred into and which DNS they want. Then do the necessary changes by yourself or by your TAG-holder.

Third, if the registrant name is your first and surname prepare papers and send them to their address for registrant change. If not, ie something like not-dedectible easly, pass third step.

TurNIC

 

[aquanuke]

"when does a DRS come into it?"

Why would they want to DRS you when they probs employ 100+ lawyers dedicated to just this sort of issue.

 

[elkanet]

"when does a DRS come into it?"

Why would they want to DRS you when they probs employ 100+ lawyers dedicated to just this sort of issue.

And the reason they have not mentioned Nominet in their letter is because billion dollar companies like MS have been and are dealing with issues like this on a daily basis. They know exactly which strings to pull when it comes to dealing with TM issues.

 

[newbie]

Thank you all for your advice. It seems I just need to get those transfer forms off to their lawyers quick smart - which is what I will do! And hopefully all the rest will go quiet. I didn't like the bullyboy tactics that they are using but unfortunately if they are in the "right" then there's little I can do

If I could find a way of making this difficult for them I would :twisted:

 

[elkanet]

Thank you all for your advice. It seems I just need to get those transfer forms off to their lawyers quick smart - which is what I will do! And hopefully all the rest will go quiet. I didn't like the bullyboy tactics that they are using but unfortunately if they are in the "right" then there's little I can do

If I could find a way of making this difficult for them I would :twisted:

Sell them to Steve Jobs at Apple

 

[newbie]

Sell them to Steve Jobs at Apple

That's a great idea, does any know his IPSTAG?

 

[Beasty]

They are entitled to choose whether to sue or to DRS - or indeed DRS and if that fails then sue. If you have made a profit from a TM infringement, they can claim an "account for profits" and/or damages.

They have probably referred to One in a Million and "an instrument of fraud" - which is not the same as real fraud, but does not sound very nice to most people anyway! For once, given that it is MS Hotmail, the reference may have teeth. TM lawyers use it widely, even for rather less famous marks than it was intended - but yours are pretty famous!

Offer to transfer the domains in full and final settlement - and that the settlement should be confidential. They are not obliged to accept - but can only claim costs if they issue proceedings - and if you have offered pretty much all that they want they will be at significant risk as to costs themselves.

NB - The above is not legal advice - since I would need to know far more about the case to give that - but it is what I think you should do having read your post.

 

[grandin]

stay well clear of typos

I think this is a good warning, it is best to stay well clear from typos. Rights holders are becoming educated rights holders.

I would send the transfer forms completed along with a cheque for a nominal amount of £10, stating that the figure is to cover any inconvenience caused.

I am sure typos dont help their search engines so a scary story in the courts would be a good deterrent to other typos buyers, as such make sure you dont become the example!

Lee

 

[aqls]

microbrain do not hold the tm for hotmail in every category. Their argument is probably that of passing off.

Take their threat as a friendly notice that you are possibly passing off, and change the word in the parking page to something non-competitive.

Then get your team of 100 lawyers briefed to face them down in court.

cojones to you!

-aqls-

 

[scooter]

..................

 

[grandin]

joking aside

Given the number of newey domain name buyers out there and the fact that legal representation is not required to buy this tool of trade infringement then I think we should make it clear that its a dangerous game to play with another persons trading rights....for example typos.

The DRS is not cheaper for a complainant if they get a court order for you to pay them damages/court fees. The only reason i see corporates going to the drs is its relatively quick, low profile and unlikely to be seen as big guy versus little guy in the public domain....but with awareness growing re typos I don't think the public are too keen to back a typo buyer over a big corporate if the typo buyer gets slapped with a massive court fee award.

With a lack of UK case law I wouldn't be surprised if a company like msn actually take matters further to make a point.

Lee