Copyright Protection · Trademarks

What would you do when you receive trademark infringement notice for your website domain name?

Shobhit Verma

April 25th, 2016

I own SpeedoMeteor.com which is a play on speedometer (speedy development of web and mobile apps using the Meteor js stack).
This morning I got an email from the popular sportswear brand "speedo" 
What do other people do in similar situations ?

"We are in receipt of a complaint regarding a probable trademark infringement for the speedometeor.com domain, of which you are the registered owner. As a valued customer and the registered owner of the domain, and per Namecheap Registration Agreement and WhoisGuard Service Agreement, we are forwarding the above mentioned email to you, so that you can address this matter. We cannot advise you as to what action to take, but we strongly urge you to review the email quoted below and/or attached PDF document and recommend contacting the complainant to resolve this matter. 

======================================

> Domain Trademark Complaint

> Dear Google Advertising Legal Support Team: 

> This is to request that you investigate and remove/blacklist the attached list of domain names from the Google AdSense program based on infringement of the following SPEEDO HOLDINGS BV (SPEEDO) trademarks, which are registered worldwide and include (but not limited to): 
> Chinese Registration No. 942759 
> CTM Registration No. 000493445
> USA Registration No. 1011585

> I have a good faith belief that use of the trademarks described above with the domains listed below are not authorized by the trademark owner or its agent, nor is such use otherwise permissible under law.
> I represent that the information in this notification is true and correct and that I am authorized to act on behalf of the trademark owner.

> Sincerely,
> Speedo Holdings BV


> Domains Requested for Investigation:
speedometeor.com




----------------------
Regards,
P. B.
Legal&Abuse Department 
Namecheap.com  
 

Ken Parker Partner at Parker Keough LLP

April 25th, 2016

Shobhit Verma, here are some general questions to ask: 1) Is the domain name being challenged as infringing a trademark confusingly similar to the trademark in question? 2) Is it being used to market the same type of products/services? 3) When was the domain name registered? 4) Was it registered with a good faith belief that the person registering the mark had a legitimate basis for registering it? Often when someone responds to a demand letter with an offer to sell the domain name for a large amount, this is taken as evidence that there was not a legitimate reason for registering it (basically that the person registering it was trying to hijack it to hold it hostage until they were paid). 5) Is the domain name being actively used in trade or commerce with respect to a product or service that is different from the one marketing under the registered trademark? There are, of course, other questions to ask and other arguments to make and such inquiries are vey fact-specific, but hopefully this list will help folks get started thinking about the issues in such a situation. Good luck! Regards, Ken ----------------- Ken Parker Parker Keough LLP Office Address: 51 Winchester St., Suite 205 Newton Highlands, MA 02461 Mailing Address: P.O. Box 590006 Newton, MA 02459 Phone: 617.275.3040 Fax: 617.963.8315 Email: kparker@parkerkeough.com Website: www.parkerkeough.com Admissions: • Massachusetts • United States District Court for the District of Massachusetts • First Circuit Court of Appeals __________________________________________________ IRS Circular 230 Notice To ensure compliance with requirements imposed by the IRS, we inform you that any U.S. federal tax advice contained in this communication is not intended or written to be used, and cannot be used by any taxpayer, for the purpose of avoiding U.S. federal tax penalties or for the purpose of promoting, marketing or recommending any entity, investment plan or other transaction. __________________________________________________ Confidentiality This email and its attachments may contain legally privileged and/or confidential information. If you are not the intended recipient of this email, you are hereby notified that any dissemination, distribution or copying of this email and its attachments is strictly prohibited. If you receive this email in error, please immediately notify me at 617.275.3040 and permanently delete both the original and any copies thereof.

Simon Chatfield Owner at The Chatfield Group

April 25th, 2016

You're probably fine, but contact your attorney

Ken Anderson Director, Entrepreneurial and Small Business Development, Delaware Economic Development Office

April 25th, 2016

You are probably ok here but you should respond and make your case. You might get a smallbusiness patent/copyright attorney to collaborate with your response. I have been on the other end of this issue where someone was blatantly using my registered trademark and tagline. You are far from that. It's a nuisance that you have to address this issue but you should and based upon what you have shared, should be easily resolved. The last thing you want to do is to assume that the complaint has no standing and not respond, and as a result, potentially get blacklisted on google and then have to make your case after the fact.

Shobhit Verma

April 25th, 2016

Hi Ken Parker,
I am tempted to do a call with you however the reason I posted this question on FD is so that people who are in a similar situation can also benefit from this discussion. This domain is not part of my main business but I like it enough to write them back an email. My cost of finding a different domain name is low so it is not worth putting any money on this. With that in mind, if you have general pointers on how to respond to events like this, please feel free to share as well as advice on under what situations it makes sense to hire your services.

Steven Kingsley Principal Partner, Hashema Int'l Partners, HIP Brands, HIP Gastroplex, Newmedia Publishing

April 26th, 2016

Shobit - thank you for posting this question for everybody's benefit. Ken Parker's points are well taken.

We've had this kind of experience. Having done due diligence in choosing the domain / trademark names, we could always defend them on our own. Only in one instance did we need professional help (my lawyer friend charged $400), when the opponent thought they could bully us, because they were the "800 pound gorilla."   


Karuna Govind Software Architect (Contract)

April 26th, 2016

Our company (marketcommander.co.uk) received something similar. I responded myself (without any lawyer of my own) saying they had no grounds as they had not used their trademark for x number of years (this varies by country). When they failed to respond to my email for 3 months, I asked them again and they said they've withdrawn the notice.

A lot of these things are semi automated from lawyers who monitor IPO publications.

Denis Jacquerye Digital typography, Language technology and Open Source

April 27th, 2016

You might want to check trademark databases like the USPTO or its equivalents in you country and region.

In this case, Speedo International has pretty much all the trademarks starting with “Speedo” in it. There only seem to be one or two exceptions and all the others are not active anymore.

Rob G

April 27th, 2016

You might ask them if they really feel the market is going to be confused between your company that offers a software development services and their company which sells swim wear and sports apparel...  really!!  ..."Feel free to wear nothing but our latest web application to the beach".