A Cease and Desist Letter Came In The Mail- What Should I Do?

I knew it was bound to happen sooner or later. I never intended to infringe on anyone’s trademark. I am not sure that I have. But just last week I received a letter demanding that I stop using a domain that I own, (not this one) because the first five letters of my 12 letter domain name are trademarked.

The company is not a large company that anyone would have known about, the characters they claim as theirs alone are a common word and a common acronym. Most people would assume they are in the public domain, much the same as I am assuming that “Webmaster” and “Blog” are in the public domain. (If not I am going to get them trademarked as soon as I finish writing this.)

It just so happens that this is one of my most successful domains, and not because of the 5 trademarked characters. In fact, I had recently changed the name of the blog for better SEO. The blog name contains none of the trademarked characters, it is just the domain.

If I had the money to hire a lawyer I might have a decent chance of defending my claim to the domain. I mean seriously, 5 letters our of 12? The company claims that their customers have been confused and have thought that my blog is related to the company. I find that hard to believe.

Searching the internet I have found that generally there are two things you should do when you receive a cease and desist letter. The first is to take it seriously, the second is to hire an attorney.

But the reality is, I have no money to fight this. I will try and appeal to the company’s sense of fairness. Maybe I can receive some small compensation for the loss of income and hard work. But I doubt it. Because I lack the resources to defend my rights, they will be trampled.

I bring this up here, not because I am asking for money, but because I think there is a problem with the system, and I am not sure how it can be fixed. It does not seem right to me, that just because someone else is bigger and has more money than me, they can take what is mine and there is nothing I can do about it. I know this has happened to many people in much bigger ways. It is not like I am losing a major source of income, or my life’s work. Just my very first domain that made a little money from adsense and other ad sales.

So bloggers everywhere beware. And if you have any ideas about what can be done please let me know in the comments.

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Comments

19 Responses to “A Cease and Desist Letter Came In The Mail- What Should I Do?”

  1. Chip Meade says:

    I think you are out of luck. The registrant has owned that domain (the 5 letter one) since 1998. Your was created in 2007. I have to say, it does look a little to close to theirs and the content is similar subject matter. I believe you would lose. Might want to approach them and mention that you were unaware of their mark and would be willing to transfer it if they paid you a sum to simply recoup your costs…low. Keep the threat of approaching and attorney to discuss your options.

    Chip Meades last blog post..Open Letter to ICANN re: IRT Recommendations

  2. ~Kat~ says:

    Yes I can see the similarities, and yes I think there is a good chance I could lose. At the moment I am looking at all of my options, I am hoping we can solve this amicably.

  3. I feel your pain. This has happened to me in the past and I did not have the funds to fight…it sucks! Fortunately for me, the site was not one of the big ones. I wish you luck either way.

    Tycoon Bloggers last blog post..Is Twittley better than Tweetmeme?

  4. You’re right to consider whether this is a battle you want to fight.

    One option would be to ask the domain name owner if they would be willing to go through the ICANN domain name dispute resolution process. The only problem is that they, as the complainant, would have to bear the cost.

    You can read through the guidelines (see link below) but by the sounds of it the basis of their complaint is likely to be

    ” by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

    As you said, I think it might be prudent just to negotiate handing the domain name over at a price that covers your legitimate costs.

    http://www.icann.org/en/udrp/udrp-policy-24oct99.htm

    Susans last blog post..Internet Marketing Toolbox: SpyFu

  5. David says:

    Selling it to them seems like a good idea. If you are going to drop the domains. See if they will let you 301 the domain to a new one so you can retain the link juice.

    At my old company we had a similar problem when one of our clients was forced to relinquish their domain and change their company name because it was one letter different than a large competitor.

    Davids last blog post..mod_rewrite Quick Reference and Cheat Sheet

  6. This is pretty serious thing and i think you should take the advise of some expert like matt cutts. you can reach him on twitter @mattcutts and he may give us some good solution. And i do think that you should not stop writing over here. i have learnt one thing from the life and that is never back-off. hope you get out of this soon.

  7. josh says:

    How can they legally shut down your domain? Just because their customers are confused there is no legal grounds for shutting it down. It would seem to me as long as the trademark words aren’t the whole domain you should have the right to keep it running.

  8. I would try and discus it with them before taking it to court. Unfortunately, I don’t know what good options you have. 5 letters seems to be nitpicking but if they went through the trouble of trademarking it, then you might be out of luck.

  9. ~Kat~ says:

    It is not worth the money to take them to court. Where we are not is they get the domain and I get nothing!
    I did move all my content over to moneydebtandtaxes.com . It is a much better domain for SEO purposes and hopefully I can move it up in the serps quickly.

  10. ~Kat~ says:

    Thanks, I just have faith that all things work out for the best in the end.

  11. That’s a serious problem you are in, all your years of hard work is at stake. I would suggest to you that you better not appear as some helpless guy who can’t do anything to protect his rights, you should better confront them and talk them out on an offer that compensate you as well.Its a man eat man world and everyone prey upon who is weaker than them, so better make your mind up and be courageous enough to ask your compensation as this is what you deserve and you should get it!

  12. you really had a very bad situation.. i agree on what amy had said that you should confront them about this matter. explain them your side and your reasons. everyone has the right to defend themselves.. well i just hope and pray that things will get better.

  13. Kids Storage says:

    Boy, I guess you have to choose your battles. The fact that this is your best producing domain would make it hard for anyone to just give up. Have you tried to at least offer to sell your domain to them so you can at least squeeze some more income out of it?

    The fact that you’re making some income from this domain should prove that you’re doing something right and can duplicate this on other domains.

    That really sucks. I hope you can talk it out with them and come to some type of amiable agreement together. Good luck.

  14. This is such a shame. If all else fails could you set up a new domain and 301 redirect your old one to it? This should transfer at least some of the authority you have built up.

    Good luck :)

  15. Dexter says:

    If it would happen then I dont know how to react with those grounds…

  16. I think you are out of luck Kat. Like you said it’s definitely not worth to take it to court. (they know it too) I’m not sure if you can sell it too. Is selling trademarked domains legal? I have no idea.

    Sorry to hear this. Looks like the work you’ve put into that particular domain (link building…etc.) will be…lost :(

  17. I’m late in getting to know your case but nevertheless I learned a lot reading about it. Whether intentional or not, I believe you were really out of luck using that domain name.
    .-= EdZee@Owning a Café´s last blog ..Discussing Internet Surveillance And Social Controls =-.

  18. ~Kat~ says:

    Yes I am, In the end I had to give it this other party. When everything is all done I will write a post about the whole experience. It has not been fun. For now I suggest domain names that cannot possibly be trademarked. (Not easy!)

  19. Thanks, I just have faith that all things work out for the best in the end.

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