Advice needed on trademarked content

[ribble-valley]

Hi everyone,

Looking for some quick advice on this notice below.
A clear indication of where I stand with this would be really helpful.

Thanks

P.


It has recently come to our attention in accordance with the Copyright,
Design and Patents Act 1988 that your website www.gibsonlespaul
has developed and is maintaining a musical instrument related website
which possess the complainants trademarked names/logos "Gibson" and "Les
Paul". These, as well as all of their other trademarks and trade names,
are protected pursuant to trademark registrations and relate to an
extensive portfolio of intellectual property rights, that are clearly
associated with Gibson in the mind of their target purchaser. Please
refer to the registration of the name/logos GIBSON - 641,792 Registered
Class 15, 919,908 Registered Class 9. LES PAUL - 1,066,634 Registered
Class 15, and 1,109,467 Registered Class 9. In addition, such names are
protected in many other jurisdictions worldwide.

Your website had not been authorized to utilize the complainants names,
logos, and images in the conjunction with this domain name and website
nor have you been given permission as an authorized manufacturer or
distributor of Gibson family branded instruments. .....

 

[retired_member13]

I'm afraid it looks cut and dried. They have the trademarks and you're infringing, so it is passing off.

There may be other domains that are infringing, but it's up to the trademark holders who they want to chase and who they don't really.

Their trademarks are in your domain name, and the classes that they are held for are covered by your content, which clearly shows that you were aware of their trademarks when you set up the site, so no realistic defence could be mounted I don't think.

Safest route would be to hold up your hands and give it to them, but it might be worth asking about them refunding out of pocket costs for the domain and development. Saying that, they'd be within their rights to sue for damages if they were of a mind to, so it's a tricky one.

 

[blether]

A clear indication of where I stand with this would be really helpful.

IANAL so please don't treat this as legal advice!

You wouldn't have a chance if they took legal action. They have a trademark on the name Gibson, and you're using it in the domain name and prominently on the site. A visitor could easily confuse your site as being an official Gibson site, so an accusation of passing off would probably stick too. The fact that the font is freely available is irrelevant, the fact that it's similar to the Gibson logo is not a good thing.

We have brand sites and domains and it's always a risk/benefit judgement. Be grateful for whatever you've earned from it before now, shut it down and move on.

 

[grantw]

It contains names in the domain but there are other established sites with similar domains.

How many times does it have to be said:

#################
Just because other people are getting away with it doesn't mean that you will too!
#################

By the looks of it they are taking lenient action via your host. Think yourself lucky they haven't come at you direct for damages and legal costs.

Do what they say and forget about it. Just my opinion obviously and not any sort of legal advice.

Grant

 

[ribble-valley]

thanks for the replies, as I suspected

Corporate **c****

Cheers guys

P

 

[Edwin]

Give them the domain name QUICKLY and WITHOUT ANY CONDITIONS.

Otherwise, the next approach might be for them to try and sue you for damages, or at least take some kind of action that is going to cost you time and money to counter, and damage your reputation to boot.

 

[accelerator]

I would like to give a few (unprofessional) thoughts:

- From a legal point of view, you don't have a leg to stand on, as Edwin has said it would be best to say you are prepared to give it up with no conditions.

- Make sure you are confident that you are dealing with a genuine complaint from genuine lawyers. It is highly likely in this case that you are. However, in a small number of cases scammers will pose as lawyers and give transfer instructions to get a domain.

- You might as well help the company take proper ownership of the domain and point it properly to their site. In the past I'm sure I've seen cases where a company has taken action for a domain, only to then leave it unregged and have the same problem from another "squatter".

- If the company does not want to maintain this domain, there may be a very remote chance they'll let you keep it for a fan site or something if you stick to their rules. It's a very slim chance and it will probably mean you can't make much money from it, so this might be pointless anyway.

... just my thoughts.

Rgds

 

[Edwin]

- Make sure you are confident that you are dealing with a genuine complaint from genuine lawyers. It is highly likely in this case that you are. However, in a small number of cases scammers will pose as lawyers and give transfer instructions to get a domain.

In this particular case, ANYONE prepared to take it off the OP's hands (even a scammer) is probably safer than hanging onto it. In general, that's good advice though...

 

[fish]

Hi Paul,

I think you've had some pretty good advice on this one, time to move on to another site for dev!

I had fender.org.uk for a couple of years with the intention to do similar to your site however I never got round to it and when it came up for renewal a while ago I decided that it was not worth the risk in setting up a site selling fender guitars for fear of tm issues, just like you have received.

Of course if we over here used the term 'fender' instead of bumper then it would have been different!

All the best

Fish

 

[ribble-valley]

Cheers for the comments, I returned the domain and dropped the site not long after the legal dept email. Not one to take chances, especially when I can easily replace the site with something else.

@fish, already building signatureguitar.co.uk