DomRev – Domain Names

What’s the best way to deal with a cease and desist letter from a large corporation?

I own a few small internet stores. A couple of them have registered trade marks in their domains.

Here is an example of what happened. To protect the names of the corporation and myself I will use the term BigCorp in the place of the actual company’s name. I make it clear on our stores’ websites that we are not BigCorp and that we are not affiliated with BigCorp. We just sell stuff that works with other items that BigCorp Sells.

Let’s say I own a store on a domain called BigCorpStuffForSale.com

I then get a Cease and Desist letter from BigCorp who wants the following:
Do the following and respond in two weeks to this agreement:

You agree to
1. Cease use of all trademarks and logos
2. Cease making and or selling all items that bear or incorperate our trademarks and logos
3. Transfer all domain names that include the name BigCorp to BigCorp.
4. represent and warrant to BigCorp that the domains we found you using are the only ones that infringe on our name.
5. by no later than (two weeks) un-register all trade names with the name BigCorp with all government offices you registered them with.
6. represent and warrant the following information:
a. tell us how many unauthorized items you sold while using our trademarks and logos
b.Tell us gross revenue made on unauthorized item sales
c. Tell us how long you have been selling unauthorized items
d. Tell us who bought the unauthorized items and what they bought
e. Tell us who made the unauthorized items.
7. Pay us 25% of gross sales of unauthorized products or $25,000. (Whichever is greater)

You also agree that not following this agreement will cause irreparable harm to BigCorp and that you will be entitled to entry of both a
preliminary and permanent injunction against you. You also agree to pay all costs incurred to enforce this agreement.

You also agree not to do this again.

Fortunately, I do not sell unauthorized items. I just sell items under a domain name that include BigCorp in the name and has their logo on the page. My plan is to do the following, please tell me if this seems OK:

1. Shutdown all stores that use BigCorp in the domain name.
2. Xfer the domain names to BigCorp.
3. Stop using their logos from now on.
4. I do not plan on signing any agreement.
5. I do not plan on giving them any more information.

Be careful- Even if BigCorp doesn’t make the items, it is possible that they still infringe on their patents – an example would be phone chargers that may use a proprietary plug to connect to the phone.

You were using their name to sell things they don’t make, so it may be worth having a lawyer contact the lawyer who sent the letter, just to find out exactly what it was they objected to; the items you were selling, or the domain name you were selling them under. It’s cheaper than shelling out 25k!

Good luck.

Posted in Domain Names and US Government