Hi all, can I get some advice.

I understand ignorance is no excuse, and I have already learned lessons and changed the way I work..

due to limited posts, I cant post links so hope you get the right understanding..

Ive been contacted by an IP lawyer for a big blue chip company
I am an affilliate for that company
I have an agreed website with them that promotes their products

About six months ago, I bought a new domain, with the view of adding relevant content and sending traffic to my main site. Each relies on unique content, and its a long haul thing.

The new domain was (for limited posts links sakes) a plural of product [ dot] co [ dot uk ] and the big blue chip company has since registered the singular word for that product as a trademark. Ive been told as I had content up relating to that trademark even though it included no paid links, adsense or anything like that, ive broken IP laws.

They are demanding immediate transfer of the domain to their client, along with a signed document to say I will never do this again.

Appreciate i may well be way behind the legality of having websites, and should of done some research first, however id love to have your experience advise me

is it a case of

yeah, your done, give them the domain, and sign
or
previous content goes against you, however within rights to keep domain, just not refer to that product or any of the registered trademark classes.
or
something else

thanks

(This is a legit company, legit lawyers, and not spam unfortunately)

Hey re8976


I have been down this route a long time ago with a large company, i got all sorts of threatening letters, and in the end i was given no choice but to hand the domain name over. In respect of the law, i felt i had a firm case, as like you i was running a legitimate business selling (with approval) their product online. The spirit of the trademark laws in my opinion were not setup to allow companies to protect their name so much, more to protect un-suspecting comsumers from buying inferior products mistakeningly thinking they were dealing with the parent company.

The company i was dealing with basically gave me an ultimatum, hand over the domain, or have my account with them suspending followed by legal proceding against me. Would they have won that legal battle? perhaps, perhaps not, would it of cost me thousands to defend myself in court, definately, plus a stream of income would have been removed as i would no longer be able to buy the product.

So my advice, unless you have plenty of cash to fight it hand the domain over and move on.

I should also point out, i am not a legal expert, and my opinions are formed from he research i did into UK trademark laws and of course my experiences with this particular company.

Hope that helps

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thanks for the reply. I am almost certain to hand over the domain as you seem to of researched the same things i have and had the same conclusion., tbh im more concerned about signing a document - what does that hold me to, for how long - forever etc ?! not ideal for someone connected to that niche through an affiliate channel.

My early research showed it costs them 750GBP to open a dispute over the domain, so without wishing to be seen as greedy, I did test the water with an offer for them to buy it for 200GBP, which would be less outlay for the same solution. That just caused a reply saying transfer it now, or the client will also consider chasing me for the fees they have already incurred.

Im in a no win situation, I do not have the funds to battle, nor would I want to, however the steamroller approach used by them doesnt encourage debate.


Thanks for your reply anyway, I am almost decided on how to proceed.

I would agree that most likely you would have to turn over the domain. As Nobby mentioned, it generally comes down to the potential confusion to the consumer. However, you may be able to get the company to pay for the transfer, since either parking the domain or pointing it through a CNAME to their main domain (thus causing you not to be profiting from it) would not cost you anything.

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re8976-

As Nobby has already said, I think your ongoing relationship with the company has to weigh heavily in your decision. If access to their product/service is something you are not willing to lose, then you may want to just fold your hand and give in.
Unfortunately, such steamrolling tactics are not uncommon. They are sometimes a bluff, but like any bluff, the only way to find out is to call them on it. If they're serious, it could cost you a good deal more than you're willing to spend.
Personally, if you decide to pass the domain name to them, I would sign NOTHING, other than a release of interest in the domain name. Don't give them the hosted site, don't give them the content, don't promise anything, temporarily or in perpetuity.... just transfer ownership of the domain name to them, and be done with it.
It could be that even after doing this, the relationship may sour. It may even be their policy to sever ties with anyone with whom they've had any sort of litigious conflict. So be prepared for that possibility.

I am not an attorney, these are just my opinions. Good luck, and please post back and let us know how things work out for you. Someone else may soon face a similar situation, and it could be helpful to them.

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I need more details. But don't roll over and play dead either. It is your position that the content is 'fair use' that you're contractually entitled to use the content, that the content was published for the benefit of the party claiming the infringement.

Is this a UK or a US case?

How much money is this domain producing FOR YOU?

How much money is this domain worth TO THEM? (in your opinion)

What is the domain?

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I've experienced this first hand. The real question is not really who is (legally) right. But who has the most to loose. You, unfortunately, have the most to loose. That pretty much settles it.

I agree with Doc. Don't sign anything other than the simplest of domain transfer documents. Lawyers are in the habit of stuffing their boiler plate contracts with every ridiculous thing they can possible fit in. There is nothing wrong with scratching out the nonsense and sending it back to them for a rewrite. This is standard business practice. The reason you want to strip any contract of gibberish is that something that sounds very innocent to you may have terrible consequences later. Like banning you from every selling their competitors product (non-compete clause) if they should decide to drop you as a distributor. A clause like that probably wouldn't be legally enforceable, but once again, you'd go broke just trying to defend your position.

Once they have the domain transfer documents they may not even care about anything else (updating the DNS records, getting access to the hosted site, etc) as the lawyer handling this is just following his or her clients orders. Once the battle is over it may be just water under the bridge and easily forgotten and your affiate status will be just fine.

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I am not a lawyer. Just want to get that out of the way.

You could argue that you are putting up information on the product or service. I would not give into their demands. They are just trying to get a free domain and all the traffic you have driven to it over the years.

If I'm not mistaken, I could write a book reviewing a specific trademarked item, such as Ebay (I just saw one in the bookstore yesterday), and sell it, or sell advertising space on it. The book about eBay even had alternatives and criticized the company. Free speech.


I don't know much about IP, however, there insn't much case history for the internet, websites, ect. - this are decisions our generation has to make.

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IANAL

You could just give up the domain name. No TO anyone. Just give it up. Russian squatters would gobble it up and then BlueChipCo would be dealing with them.

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For Tangeray. While it's probably true that they would like the free domain and traffic, it's more likely that this was brought to their attention and their lawyer advised them to do something about it. Companies have to regularly enforce their trademarks or they'll loose them. This is why Disney sued a little day care center (years ago) over their painting of Disney characters on the walls. It was proof of their continued enforcement of their Trademarks.

re8976 has an affiliate program with the same company. This changes it entirely as not only does he need to think about legal costs but loosing his affiliate status.

That's why giving up the domain makes sense. He has nothing to gain from this fight.

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Claytowne Graphic Design and Web Design in Santa Cruz, CA | Product Packaging Design | Logo Design and Corporate Brand Identity

For Tangeray. While it's probably true that they would like the free domain and traffic, it's more likely that this was brought to their attention and their lawyer advised them to do something about it. Companies have to regularly enforce their trademarks or they'll loose them. This is why Disney sued a little day care center (years ago) over their painting of Disney characters on the walls. It was proof of their continued enforcement of their Trademarks.

re8976 has an affiliate program with the same company. This changes it entirely as not only does he need to think about legal costs but loosing his affiliate status.

That's why giving up the domain makes sense. He has nothing to gain from this fight.

You could just give up the domain name. No TO anyone. Just give it up. Russian squatters would gobble it up and then BlueChipCo would be dealing with them.

Way funny Dave! Total suicide, but way funny.

Doh! sorry about the double post. I'll get rid of this shortly. Uhhh I guess not...anyone know how I delete the previous post?

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Claytowne Graphic Design and Web Design in Santa Cruz, CA | Product Packaging Design | Logo Design and Corporate Brand Identity

Clay,

We could just flag it- haha j/k

It is true that many affiliate programs state specifically in the contracts use of intellectual property including not using keywords in URLs

I don't like affiliate programs anyway - I like to control the sale, not hope I get paid.

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thanks for the replies.

final update as requested by someone previously.

I have agreed to transfer the domain, have sent the mail confirming, and im happy with that now. Whilst the initial steam roller tactics made me want to say Go Jump its my domain in a defensive way, your right, I dont have the money to call that bluff.

For the sake of one domain that cost 10 pounds, against the main (non disputed) site making a decent cpa that should have all my focus and free time its a no brainer.

Many thanks for the thoughts. Its allowed me to see it without the defensive head on, and make the right decision.

agreed. I moved down the cpa route. simple case of last referrer much higher conversion for the effort writing lots of unique content.

It was a UK

Thanks again

Pity you gave it up but your business is probably worth more to you from them. In these cases if you have nothing to lose & they have come at you hard without offering to buy it from you & pay expenses if in the UK or Europe where laws are different from USA I would have turned the site into a hard core adult site & asked them would they like to buy it from me after putting on the open market. (with the intention of selling or giving to them in the end) or if they became really nasty give it to any eastern European company that wanted it for £1 ($2) just to upset them and it would no longer be my problem as I had bought it legally & now no longer own it. I think if they were clever an offer to buy at low reasonable price would have been the sensible thing to do as soon as they saw site up.

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It rankles with me when blue chips do this tactic, it is more often legal depts creating justifcation for existence or income generating for themselves.

Personally I would have apologised, claimed only best intentions and eaten humble pie from day one! Then asked at least 500 quid (greek keyboard no pound sign!) to cover your legal costs (for advice) because of their legal action against you plus the costs of transfer! Then go quiet on them.

I doubt you would got it, but it would have generated a counter offer! If not going quiet just adds to their costs. You can always claim you were waiting for a response to your offer. Many years ago I got 8 grand for a domain name for this very reason, but I had never heard of the company concerned at the time and they assulted me with legal types all QC's with surgically removed fins, the look on the face of their front of house solicictor when she wrote me the cheque out was classic! I suspect she had spotted the domain and I earned more than she did out of it!

You paid that much? Hunt around or pm me for a link you can do far better!

/astro

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The legal issue will be: "Is that domain considered a Trade Name?" If they have their business name under it then you have no case, give it up. If not, does that Domain Name have some form of recognition in the world? If so, no case, give it up. Whatever they do, like has been mentioned, it will cost you to defend it, but if it is worth it to you, consult with an attorney who specializes in that field.

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This is true, the standard will most likely be whether it could cause 'confusion as to source' - but notwithstanding there are potentially equitable principles at play. For instance, if the trademark owner knew of the content and permitted the publisher to develop the domain into something valuable AND then asserted the trademark (remember, in the OP there is a pre-existing relationship between the two of them), well, you could have unjust enrichment, certain claim preclusion principles at play.....tweak the facts, tweak the result, at the end of the day we don't have a full set of the facts and this particular poster has chosen the path of least resistance (give up the domain).

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