Domain name trademark violation

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Raevinn

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So I recently registered the domain in my signature and setup a blog where I basically post motivational stuff from time to time to bring some inspiration to peoples lives. It's still a pretty new site but it was a project I was really psyched for because I really dig some of the awesome motivational stuff out there.

Anyways, I got an email two days ago from my registrar who forwarded an email telling me that I am violating someone else's trademark. Their website is thewillpowermethod.c0m (o not 0). They are some kind of exercise company and use the term "got willpower?" on the clothing they sell or something like that.

So I wanted to check whether they actually have the trademark and went to http://tess2.uspto.gov/ which is the database of all the registered and pending trademarks in the US since they are US based. Typed "got willpower" in, nothing found, typed "got willpower?" in nothing found, typed "gotwillpower.com" in, nothing found, even typed "the willpower method" in, nothing found.

So I can't see any evidence that they have actually registered any trademark and feel these guys are trying to scare me into just giving up the domain. To be honest I'm not really that attached to the website yet so I wouldn't mind walking away if I had to, but I do also feel that it could be a pretty cool blog and don't just want to let it go that easily especially if they are BSing me. Like at least some sort of compensation to make up for the pretty sweet domain name they want me to sacrifice.
 
I would do a bit more checking up, but I assume that if your domain is hosted locally and not in the US then there is not much they can do.. even if it is a registered trademark I don't think they have a right to stop people using that as a domain name.. Not sure would love it if someone could clarify if they know whats what in this area..

www.inta.org
 
The lady emailing me now has told me that I have 2 weeks to transfer my site before she lets her legal department take control of the matter. Shes basically threatening me.

My site is hosted in the US though, i could always transfer it here but don't know how that makes any difference.
 
Why not reply, reserving all your rights and in no way acknowledging the validity of their claim, tell them to make you an offer anywhere north of $50K.
 
Yeah that's what I was thinking, like I know groupon had to pay $250k just to get groupon.com from some dude who registered it before them.
 
Arthur said:
Why not reply, reserving all your rights and in no way acknowledging the validity of their claim, tell them to make you an offer anywhere north of $50K.
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Its not a good idea to sell the domain to the trademark holder, read below.

This is what I got from Google , Link

I registered someone else's trademark as a domain name. What should I do?

If you registered in good faith and intend to use that domain name for a legitimate web site that has nothing to do with that other party's business, it's best to sit quiet and go ahead with your plans, they may not contact you. If you intend to sell it to the trademark owner for profit, DON'T. Approaching them with the domain name is taking the fast track to losing a legal battle. Basically, it's best not to get involved in a trademark dispute.

Okay, but the company's lawyer has sent me a threatening "cease and desist" letter. Now what do I do?

Get professional legal advice. Don't do anything at all until you have talked to a lawyer. You may be in the wrong here, but there's a small chance that you can protect your rights to the name. Don't contact your registrar, chances are the lawyer has already done so, and there's nothing your registrar can do to protect you. Talk to a lawyer.
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Raevinn said:
So I recently registered the domain in my signature and setup a blog where I basically post motivational stuff from time to time to bring some inspiration to peoples lives. It's still a pretty new site but it was a project I was really psyched for because I really dig some of the awesome motivational stuff out there.

Anyways, I got an email two days ago from my registrar who forwarded an email telling me that I am violating someone else's trademark. Their website is thewillpowermethod.c0m (o not 0). They are some kind of exercise company and use the term "got willpower?" on the clothing they sell or something like that.

So I wanted to check whether they actually have the trademark and went to http://tess2.uspto.gov/ which is the database of all the registered and pending trademarks in the US since they are US based. Typed "got willpower" in, nothing found, typed "got willpower?" in nothing found, typed "gotwillpower.com" in, nothing found, even typed "the willpower method" in, nothing found.

So I can't see any evidence that they have actually registered any trademark and feel these guys are trying to scare me into just giving up the domain. To be honest I'm not really that attached to the website yet so I wouldn't mind walking away if I had to, but I do also feel that it could be a pretty cool blog and don't just want to let it go that easily especially if they are BSing me. Like at least some sort of compensation to make up for the pretty sweet domain name they want me to sacrifice.
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If they own the trademark they will have to own it in the country wehre it is registered in ie. co.za , co.uk , .com etc ....

To be honest this will be tossed out of court, I deal on a daily basis with trademark disputes for domains and trying to get a domain from poeple that is violating my clients trademark.

To start the trademark dispute procedure in south africa it will cost you R25 000 and even more in first world countries. I doubt they will fork out that much just to get the domain from you an they could just make a offer for much less and you would probably go for it.

Tell your registrar that you will not release the domain as you are using it for personal use and are not willing to release it. They are using scare tactics trust me they will disappear in a few days.
 
bigkahuna said:
Its not a good idea to sell the domain to the trademark holder, read below.

This is what I got from Google , Link
Click to expand...
Google aren't giving legal advice, only saying you should get some.

That's why I prefaced my suggestion with "reserving all rights" and not acknowledging their claim.

If you were to go back and merely say "OK, provided you pay me $x" this can be interpreted as amounting to an acknowledgment of their claim to the name, which would be folly. You need to make it very clear that you are in an entirely unrelated business, etc and that any similarity is entirely happenstance and unrelated to them and any claim they might make. You need to very careful in how correspondence is worded, so it's advisable to get professional legal advice from people who understand the issues in the applicable jurisdiction.
 
The only email i have sent back to them basically said: Hi, how would you propose we resolve this issue.

So I haven't admitted that I am wrong, merely stated that there is an issue at hand.

Getting a lawyer now is gonna cost me a lot of money though which is what I can't afford.
 
What not to do,...

Raevinn said:
So I recently registered the domain in my signature and setup a blog where I basically post motivational stuff from time to time to bring some inspiration to peoples lives. It's still a pretty new site but it was a project I was really psyched for because I really dig some of the awesome motivational stuff out there.

Anyways, I got an email two days ago from my registrar who forwarded an email telling me that I am violating someone else's trademark. Their website is thewillpowermethod.c0m (o not 0). They are some kind of exercise company and use the term "got willpower?" on the clothing they sell or something like that.

So I wanted to check whether they actually have the trademark and went to http://tess2.uspto.gov/ which is the database of all the registered and pending trademarks in the US since they are US based. Typed "got willpower" in, nothing found, typed "got willpower?" in nothing found, typed "gotwillpower.com" in, nothing found, even typed "the willpower method" in, nothing found.

So I can't see any evidence that they have actually registered any trademark and feel these guys are trying to scare me into just giving up the domain. To be honest I'm not really that attached to the website yet so I wouldn't mind walking away if I had to, but I do also feel that it could be a pretty cool blog and don't just want to let it go that easily especially if they are BSing me. Like at least some sort of compensation to make up for the pretty sweet domain name they want me to sacrifice.
Click to expand...

I'm not a legal eagle but I was on the receiving end of a dispute with Lonely Planet. I registered a .co.za and did a write up on their absolutely pathetic guide, where not only did they endanger tourists' lives, but had recommended over 20 places that was already closed 3, 4 and 5 years before printing.
They came at me for about 2 years
1st they tried defamation, and though my write up was defamatory, it was true, so they lucked out.
They then came claiming I registered it so I could sell it to them, basing it on Harrods? vs Million in One i think, a company that registered Harrods etc and tried to sell it to Harrods (judgement was for Harrods). As this was not the case, they got nowhere
They then offered me 20 k, and I refused. What I wanted was a fair write up on my establisment. They refused. In 7 years they never even visited, but I had a ****ty write up, and was way better than any competition.
They then very cleverly nailed me on Trade Mark infringement. I had a link on the co.za page to my travel site, even though I boldly stated that I am not Lonely Planet on every page. The law basically states that if it is POSSIBLE for anyone to follow the link to my commercial page and book a related service, then your/my goose is cooked...so Supreme Court, I didn't defend, Judgement etc, court costs 60k for them that I had to pay most, but what gave me great pleasure is that their legal fees direct was 200k

What you don't do is NEVER ask them for money, Once you do then it can be deemed that your intention was to sell it to them. Let them offer. Don't say you want more when you do get an offer, say sorry, it's not enough, or it's tempting, you'll think about it.
There is also a fine line with them claiming it's blackmail when you demand incorrectly. Ditto for them threatening you.

What I would have done different was to stick it out as long as possible, and then "sell" the domain to Julius x or someone from 1234 Block C Soweto. And I should have taken them on in the UK for Abuse of Dominance s.4/Article 102EU Virgin vs BA where Virgin won setting the precedent. Unfortunately I only found out about that recently. In your case they have to be trading in the UK as well. Maybe worth it checking if abuse of dominance applies in the USA as well

My advice. Wait, do nothing, Let them offer you 25 k and walk away...and buy us some beers :)

Good luck Mate
 
Thanks a lot for the reply man :D

Pretty cool story, guess you should have taken the cash.

Are there any risks I'm taking if I do nothing?
 
You can explain to them that you want the exact grounds for their claim to the domain name or that you have made an abusive registration. Once you have all the facts it will be easier to determine whether or not they have a legitimate case.

Or just wait and see if they send you a nasty letter, the letter will set out the grounds of their claim.
 
Risks

Raevinn said:
Thanks a lot for the reply man :D

Pretty cool story, guess you should have taken the cash.

Are there any risks I'm taking if I do nothing?
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No way, a fair write up was the minimum they should have done. I heard they blamed their writer, but Napoleon said "There are no bad soldiers, only bad generals" :)

No immediate risks, but as the other advice wait for that nasty letter. And your short response to them is great, but do say that feel strongly about using that name, and have taken legal advice. State you did research any trademark as per your links given before you registered the domain, and came up with zip. End everything with "I hereby reserve all my rights in this matter"
Your costs will start as soon as you go see the law...
I won't make contact, wait for them. Personally I would probably pull a stunt then like say that your lawyer feels so strongly about your case that he offered to buy the domain off you, but they might call your bluff :) Just had an idea - I wonder if anyone can tell me if you can move a domain like this into a new buddys name once a month? There must be a way to send these Cyberbullies the middle finger
Out of principle I would probably try and register the trademark in SA. It probably will cost you R1500 if you do it yourself at Meintjies Street, Sunnyside, Pretoria. The staff there are awesome and helpful. If you do this don't let them know, as they can lodge an objection. I think the whole thing takes about 18 months, but do it yourself - think the legal boffs charge about 30k for it, but my 14yo kid can go stand in the queue...
 
I told them that I am seeking legal advice and that I reserve all my rights, now she wants my lawyers mail address.
hmmmmm
 
They trying to pressure you to give it up.

I know as long as the domain has valid website content relating to that you are in your legal right to keep it. First come first serve.

You said it was for a blog which DOES relate to the domain name which is a valid use for the domain name. Tell them that you are in your legal rights and there is nothing they can do as you are not infringing it in any way.

Do NOT give them any personal details, addresses(apart from what they can find at the registrar), they can email away, hey but thats why they made a SPAM folder :)
 
This is clear bullying and not very ethical on their part. Just to be clear, who is communicating with you? The company in question or the registrar? It should be the company.

Firstly, you are using the domain for perfectly legitimate purposes. This alone protects you.
Secondly, they do have a slogan, and it is "the original foot fitness programme". Not "Got Willpower?" even though they do sell t-shirts with this question on it.
Thirdly, while slogans can be protected legally, theirs is not a household name, nor is it recognisable in any way. Nobody will make the association between your website and their brand. Moreover, they quite simply have no ownership of that phrase.
Lastly, they have no South African presence.

In a nutshell, they can go fsck themselves. The only issue here is that if they are particularly obtuse, they can begin legal proceedings here against you but it will cost them a fortune. Stand your ground and go the legal route as a last resort...
 
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