Urgent Help Required re: TM's

[KingDomainNames]

Please excuse the long post - it is all valid.

I registered a domain last year when I first started buying domains - I was naive about it at the time, not knowing what to avoid etc..

The domain had a 6600 exact match on Google's keyword tool so I got excited I registered it immediately when it dropped.

Anyway - i hadn't done anything with it at all in months. I'd forgotten I had it, as I have quite a few domains now.

Then last week I had a letter out of the blue from a large well-known company saying (and providing evidence) that I had infringed a trademark of theirs. Note: I didn't know I had infringed any trademark at the point of registering the domain last year - partly due to not knowing the basic rules at the time of registering last year, and partly because I have never used the company or its services, and didn‘t know the product existed)

In the letter they asked me to transfer the name to them, AND sign and return a document they have prepared (by 19th April!) saying I will transfer the domain and basically 'not do it again', in order that they will not start legal proceedings against me.

Someone I asked said to me that I should just transfer the name and NOT sign the letter, but I want to avoid any hassle. The person I asked also said to me "why didn't they register that domain name themselves if they are such a big company with a web team of their own?"

Since I first registered the domain name I have learned and read dozens and dozens of articles, etc. to learn more about domaining and also TM issues and have always researched any future domain names since then before registering, so upon receipt of this letter, i phoned the company to say I didn't realise I had infringed any TM, apologised and asked how I can now transfer the domain name to them to avoid any hassle.

They have since emailed me with their TAG name.

My questions are:
1. What do I do next ?
2. If I change the TAG to their tagname, do I also have to transfer the domain via Nominet ?
I'm happy to pay the fee if so - I just want to get rid of the domain name now.
3. Am I right to sign the document they sent me as well ? The document says I declare that I will transfer the domain name, and not register any further domains which may annoy them again.

Many thanks for any help/suggestions - they want the signed document sent back to them by 19th April to avoid legal proceedings against me.

Forgive me not mentioning the domain name in question here - I am embarrassed and am worried about any further comeback against me if i do name it.
All forum threads I have read here on the subject of TM’s have all basically said “don’t fight it - you made a mistake - give them the domain name straight away and forget about it move on and learn from it”
I’m happy to give them the domain name but am scared to sign their prepared declaration in case they use it against me.

Many many thanks in advance of any advice,

Steve

 

[wb]

If I change the TAG to their tagname, do I also have to transfer the domain via Nominet ?

You could just send the registrant transfer request through Nominet to their email address (if you don't know which one to send it to, ask them first). They will be able to change it to their desired tag when they accept the transfer.

Am I right to sign the document they sent me as well ? The document says I declare that I will transfer the domain name, and not register any further domains which may annoy them again.

If you transfer the domain without sending the letter then they probably wouldn't take legal action against you over this one anyway (this is just an assumption, and perhaps they would in future). However, given what you have done it doesn't seem an unreasonable request for them to make so if it was me and the letter states what you say it does, then I would sign it (check over the wording of the letter carefully though).

 

[aZooZa]

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

 

[woopwoop]

The fastest way to deal with this is to delete the domain name. I think it's 'delete' (may be "release").

You can log into your Nominet account and do this instantly.

They contact you in an agressive way to scare the poo out of you (same thing happened to me 10 years ago). But if you delete it you are no longer involved with the domain name. Depending on the size of the company, they may have a solicitor on retainer who is on the lookout for anything dodgy and not someone who is being paid to come after you specifically - so don't be too worried - but still drop the name.

If you haven't done anything with the name you haven't really infringed.

After deleting it you could then email them to say it's free for them to register (this stops you from having to sign anything, gets the domain free for them and stops you feeling like they pwned you).

First time I used that word - pwned!

Edit: I just read WB's advice and it makes sense too. Personally I would delete it and then email them without signing, but it may be safer to transfer and sign.

 

[JMOT]

dont sign anything.... ever.... in relation to a dispute without having it reviewed by your own lawyer first.

 

[Bailey]

saying (and providing evidence) that I had infringed a trademark of theirs.

If you believe that to be correct then as we all know "ignorance" is not a defence only a "mitigation"

I think you have been fortunate to have found a Company that has gone to some expense but has taken a generally softly-softly approach. I would fulfil their main request and change tag - which gives them the control that they have "specifically requested".

I agree with WB I don't see them following up on the "signed letter" (so just retain that for the time being) providing you hand over control - Any other action in regard to the domain is not what was requested and could just compound the problem

 

[KingDomainNames]

Hi everyone,
Thank you all sooo much for your responses.
I posted another long reply on Saturday morning, to each of you who replied, but for some reason it hasn't worked.
Tried again twice this morning - does it take more than a day for postings to show ?
Sorry if I need to wait longer.
Have to go out now, but if my proper posting isn't showing later, I'm not sure what to do next...
Many thanks all,
Steve

 

[KingDomainNames]

Thanks everyone for your prompt responses - sorry I couldn’t reply until now - was away from the computer Friday and my posting yesterday didn't work, so this is my second [edit: third] attempt.

WB - thank you for your advice, very much appreciated.
Re: Registrant transfer request - I’m guessing that still means I pay a fee ? (which I am happy to do)
If I just do the registrant transfer request as you have kindly advised, I’m guessing that I will no longer have to change the tag name as well ?
(just wasn’t sure, sorry to sound daft, just new to this)

Re: document they want me to sign: I will put the wording of the letter below at the end of this post - any thoughts on whether I should
a) just sign it and just send it back as it is,
b) amend it slightly to tell them I didn‘t intend any bad faith, or
c) just send it back with a covering letter saying I didn‘t intend any bad faith,
I’d be grateful for any feedback, many thanks.

AZooZa - thank you also for your consideration and agreement with WB.

Woop woop - thank you woop woop.
Re: deleting the domain - I saw something about this when I was doing some research.
I did consider it, but am reluctant to do so in case the big company comes down hard on me for doing so, even though I’ve never done anything with the name.
And yes, the letter did scare me !
Re: your advice to delete and email them - thanks again for your advice. I will put the contents of the letter they prepared for me to sign at the bottom of this post.

JMOT - thank you for your advice, I understand what you are saying.
Not sure where to find a lawyer in my area who specialises in this situation, and not sure I could afford a lawyer.
I will put the contents of the letter they prepared for me to sign at the bottom of this post.

Bailey - thanks for your response and advice.
I just wasn’t sure about the letter - I am very nervous that they may take it further, and I cannot afford any heavy costs (forgive me if I am worrying too much, can’t help it)
The evidence they provided was a screenshot of the Registered Trademark page for the name in question, which looks like it came from the IPO.gov.uk website, judging by the format.
The company’s main letter to me was, in fairness, totally fair in its wording - I.e. straight to the point. The lady who sent it was polite when I rang her and she said the terminology in the letter had to be stern from a legal standpoint. I told her I totally understood why her letter was worded as such.

Anyway, thanks for your advice - I will put the contents of the letter they prepared for me to sign at the bottom of this post for you and everyone else to see - I would welcome any feedback from anyone, thank you.
(I wasn’t sure if by signing the agreement, I was agreeing to any fact of guilt/domain name abuse/TM infringement)

Here is what they want me to sign by Wednesday:

---------------------------------------------------------------

“
Dear Sirs,
TRADE MARK INFRINGEMENT & DOMAIN NAME ABUSE - *******.co.uk

In consideration of ******* [Company Name] agreeing not to commence legal or domain name dispute resolution proceedings against me in respect of the acts of trade mark infringement and domain name abuse referred to in the letter from ******* [Company Name] dated 6 April 2011, I hereby undertake that I (whether by myself, through any directors, servants, agents, companies, businesses or otherwise) shall not without the prior written authority of ******* [Company Name] do (or permit to be done or assist the doing of) any act which infringes *******’s [Company Name] word trade marks and logos compromising or incorporating ******* [Company Name] (“******* Marks”), and I further undertake and confirm as follows:

1. I shall transfer the domain name, www.*******.co.uk (“Domain Name”), to ******* [Company Name] within 14 days of the date of these undertakings, including completing all relevant forms to transfer the ownership.

2. I will not register any other *******-formative domain names.

3. I shall immediately cease and refrain from using the ******* Marks in any form of media whatsoever or infringing the ******* Marks in any other way, including but not limited to, use in respect of marketing material, advertisement, direct mail, leaflet, domain name, any online content, or material similar to any of the foregoing.

I understand that the terms of this letter and the undertakings set out herein are to be governed and construed in accordance with English law, and that the English courts will have jurisdiction to hear matters arising out of breach of these undertaking.

Yours faithfully

For and on behalf of Stephen Moon
“

-------------------------------------------------------------------------------

Thank you everyone.
Again, sorry I haven’t named the domain - I still feel stupid about it.

 

[Bailey]

well done Steve for giving us such a fairly comprehensive picture of events and replies. Thats a good indicator how serious you have taken the matter.

When you said they had "evidence of you infringing their TradeMark" I assumed you ment the domain was parked with competitor Adverts showing.

There's always someone willing to advise in private here on Acorn if you ask. It may just help to clarify the nature of the alleged infringement.

 

[Retired_member41]

Your an absolute numskull if you sign anything. If you don't want to contest it, and most are contestable. Just send them it back.

Never sign anything in these circumstances.

 

[retired_member16]

Steve


Looks like your arse is twitching!

Ignore the letters, delete the domain, go to the pub.

Thats all you need to do.

 

[KingDomainNames]

Wow - thanks again for all your replies.

Bailey - thank you.
The domain just had the name servers set to fast hosts name servers.
So yes, when I look at the domain it brings up adverts showing competitor adverts, but I don’t get any benefit from that, as I’m sure you know.
They sent me a screenshot copy of the webpage as evidence.

Thank also for mentioning that others are willing to help, it is reassuring to know.
I’m going to write at the end of this post what I am going to do next.

CAZ - thanks so much for your advice, it is very much appreciated.
Interesting that you say most are contestable - I will bear this in mind (as a newbie) for future reference. (of course I do not intend to be in this situation again, although I appreciate that some domainers (from what I‘ve seen in the forums) can get a TM letter for the strangest reason).
Many thanks again.

Lee - you’ve made me laugh, which has certainly helped the twitching !
As I am new to this, I think I have worried too much overall.
I’ve had an email from the company in question giving me the tag name they wish me to set.


Summary
Thanks to everyone who has helped with my situation.
From the posts, I can see valid reasons for deleting the domain and leaving it at that, valid reasons to transfer the domain and sign the letter they prepared for me, and valid reasons just to transfer the domain only.

So I am going to:
1) Log into my ukreg account and change the IPS tag to the one the company in question gave me.

2) NOT send the letter they want me to sign back to them, but retain it for the time being
(I will update you if I hear more from them).

I am a bit nervous re: 2) in case they do take it further and charge me with costs, etc..
Maybe I shouldn’t be so nervous - experience counts here, and I am grateful for all yours in your replies.

My last question before I change the tagname: IF I CHANGE THE IPS TAG, DO I STILL THEN HAVE TO INITIATE THE REGISTRANT TRANSFER THROUGH NOMINET TOO ? (I don’t mind paying the fee) OR WILL THE OTHER COMPANY DO THAT THEMSELVES AFTER I CHANGE THE TAGNAME ?

Many thanks again for previous and future advice,

Steve

 

[wb]

My last question before I change the tagname: IF I CHANGE THE IPS TAG, DO I STILL THEN HAVE TO INITIATE THE REGISTRANT TRANSFER THROUGH NOMINET TOO ? (I don’t mind paying the fee) OR WILL THE OTHER COMPANY DO THAT THEMSELVES AFTER I CHANGE THE TAGNAME ?

If it's on their tag then technically they could do the registrant transfer to themselves as they would be able to edit the admin email address. I doubt they would actually bother doing this.

If you sent them the Nominet transfer first then they would be able to choose the tag when they complete the transfer anyway, so would seem pointless changing the tag before doing the transfer?

Obviously this isn't legal advice, but the domain probably has no worth to them anyway and they only want it to stop you from having/using it. It may be simplest just to delete the domain, learn the lesson (which it sounds like you already have) and ignore letters as others have mentioned.

 

[Bailey]

As wb has pointed out, a tag change gives them access to change any details on the domain anyway - I still back that choice purely as it what was requested by the complainant.

I don't share the thoughts that a 'Deletion' serves the purpose due to somebody else being foolish enough to grab at the drop - then from the companies perspective you are still part of the same original problem - possibly even in collusion.

lets not forget they have gone to a fair bit of effort thus far and apparently a Company with their own tag tells me they know the what's and why-for of their request

 

[Pred]

Steve


Looks like your arse is twitching!

Ignore the letters, delete the domain, go to the pub.

Thats all you need to do.

Lee nailed it

you have obviously learned a lesson. almost everyone has regged a tm by mistake or on purpose. theyre best avoided obviously
don't waste time or energy dealing with the scum lawyers. just delete the domain. end of. don't try and transfer or pay for tag changes. just hit delete

never sign a letter. ever

big companies and lawyers can take ages to sort things. you do a tagchange they may not change registrant details or accept transfers, you gotta communicate etc, it drags on

delete. it doesnt exist anymore, you don't own. end of

stick to generics and read lots of advice all over this very forum is best advice

 

[KingDomainNames]

OK, forgive this newbie everyone - I’m a little torn here.

I’d read wb’s and Bailey’s latest posts today, and this is what I had prepared to post back at the time:

“Thanks again wb and Bailey. Very kind of you to reply again.

Reading your kind, comprehensive and helpful replies, I am thinking this:

1. I will just change the TAG. (The tag name they have asked me to use is “MarkMoniter”)
2. Email them back to confirm I have done so.
3. Do nothing else, and move on.

Wb - you’re right - I have learned a huge lesson here.

Forgive me everyone for not mentioning the domain name.
I just want rid of it.

Have I been foolish for not mentioning the domain name in question ?

Many thanks,
Steve”

Have just now read Pred’s post (thank you for your reply Pred, much appreciated), and am a bit confused.

I can see what Pred and Lee are saying, but also what wb and Bailey are saying.

2 questions:
1) Pred - taking what Bailey said about “I don't share the thoughts that a 'Deletion' serves the purpose due to somebody else being foolish enough to grab at the drop - then from the companies perspective you are still part of the same original problem - possibly even in collusion.” I’d be grateful for your thoughts relating to this and possible collusion, as my concern is that they will then still come after me.

2) Everyone - have I been wrong not to mention the domain name in this thread ?

3) Everyone - if I do delete it, should I inform the company in question by email that I have deleted it ?

Sorry again about all this, only I have two sets of great advice, yet am concerned that one day the company will come down on me.

Many many thanks everyone,
Steve

 

[KingDomainNames]

p.s. The company in question have just tried to ring me, as they wanted the domain by the 20th April.

I missed the call but checked the number and it is them.

I'm going to change the name tag to what they wanted, but not sign or send any letter to them.

If they call again, what should I say to them ?

Many thanks,
Steve

 

[Retired_member41]

p.s. The company in question have just tried to ring me, as they wanted the domain by the 20th April.

I missed the call but checked the number and it is them.

I'm going to change the name tag to what they wanted, but not sign or send any letter to them.

If they call again, what should I say to them ?

Many thanks,
Steve

This is becoming a bit silly now. What is the domain and who are the company?

 

[aZooZa]

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

 

[KingDomainNames]

Forgive me Caz, not intended to mess anyone around.
It's only continuing as I'm having good advice from members but some say do this and some say do that. I am new to this.

The domain is skytalk.co.uk, and the company is Sky.

What do you think Caz ? What would you do ?

Many thanks.

aZooZa - I wish I had, ha ha ! :smile: