Oct 042010
 
CeaseDesist

I never really thought this would ever happen to me, and here I am writing about it. I started registering .co domains a few months ago, after July 20th 2010, which according to the cointernet SAS, was the date that allowed anyone to register any .co domain. You can read the pdf right here I didn’t go overboard or spend a ton of money (each .co name is $30) but I did manage to grab a few decent ones. My intention wasn’t to flip them right away – I wanted to actually build them up and drive solid traffic to these domains and them BAM!

Re: Unauthorized use of (deleted) trademark and copyright.

    To Whom It May Concern,

    (deleted), Inc. has recently been alerted to the existence of the domain name
    www.(deleted).co, which, according to WHOIS records, is registered in your name. As a
    matter of law, your registration of this domain name, inhibits (deleted) legitimate uses of its
    federally registered trademark and the corresponding domain names. Clearly, the registration by
    you of the www.(deleted).co domain name on July 21, 2010 significantly post-dates (deleted)
    registration of the mark “(deleted)” in the United States. (deleted)® is also registered
    in other countries. Your registration and use of this domain name constitutes a violation of
    Federal Trademark Laws and misappropriation of our company’s intellectual property.
    Accordingly, (deleted) hereby demands that you immediately cease and desist from using, deactivate,
    and immediately transfer the www.(deleted).co domain name to (deleted). A copy of the
    WHOIS report and the placeholder website at www.(deleted).co are attached hereto for
    your reference.

This was only the FIRST paragraph! For the sake of privacy and other reasons, I decided to omit the actual name of the company and insert (deleted) instead. The .co I registered dealt with options. This was a big shocker to me since I thought that big time companies that wanted to register matching .co’s actually registered them before the public got an opportunity (which makes the most sense) – but no – I get a letter from hot shot lawyers telling to give it up or we’ll go to court and take it back. I also didnt check the corresponding .com to see if it was in fact a registered trademark. I thought I got a great damn name! Boy was I wrong – I had 2 options. Fight them and try to keep the .co, or just give it up and go on my merry way.

After A LOT of thinking and researching instances where this has happened in the past, I had an important decision to make. I researched the cybersquatting and also re-read the “well put together cybersquatting section” in the letter which states:

    Your intentional attempt to attract, for commercial gain, Internet users to the
    www.(deleted).co site by creating a likelihood of confusion with the mark of (deleted),
    constitutes cybersquatting. This practice of “cybersquatting” has been addressed by court in
    Intermatic, Inc v. Toeppen, 947 F. Supp. 1227 (N.D. Ill. 1996) and Panavision Intl v. Toeppen,
    141 F.3d 1316 (9th Cir. 1998). These are two of the pivotal cases addressing cybersquatting and
    impacting the drafting of the Anti-Cybersquatting Consumer Protection Act (enacted in
    November 1999). The Panavision court found that Toeppen’s use of the Panavision mark to
    display pictures of Pana, Illinois diluted the quality of the mark by diminishing the capacity of
    the mark to identify and distinguish goods and services. You may also wish to refer to the
    following cases for additional legal authority in support of (deleted)’s position that your registration
    and use of the www.(deleted).co domain constitutes cybersquatting: Nabisco Brands Co. v.
    The Patron Group, Inc., ICAAN Case No. D2000-0032, decided February 23, 2000 (resulting in
    the transfer of the domain names wheatthins.com, wheatsworth.com, bettercheddars.com,
    harvestcrisps.com, and milk-bone.com to Nabisco); People for the Ethical Treatment of Animals
    v. Doughney, Nos. 00-1918 and 00-2289 (4th Cir., August 23, 2001) (ruling against domain
    holder on claim of initial interest confusion). This breadth of case law makes clear that your
    registration of the www.(deleted).co domain name may be improper as a matter of law.

I didn’t have the time nor money to put up a fight with a giant corporation that could easily take me to court. They have the time AND the money to do that. However, instead of merely transferring the extension into their hands – I decided to call Go Daddy and was actually able to get a refund on the .co man which released me from all the BS I was worried about in the first place. I took this route and decided to avoid any further encounters. I also sent their lawyers simply stating that I no longer own the corresponding .co domain and that was the end of it. No more lawyers, no more ideas on what I was going to do with the name. End of story. A few days later I checked the WHOIS and noticed that their “highly valued trademarked” extension was still not registered. They made such a big deal about acquiring the .co that I was SURE they would have registered it already… Checked again a week later and nothing – then as I checked the domain for the third time – BINGO – it was registered – but NOT by them! Someone in UK seen the name, snagged it, and is now the owner of it! Boy did I get a good kick out it! I wonder if they will send him the same letter and what he will do with it, since hes in the UK and this company is in the US.. O well – not my concern!

Has a similar incident ever happened to anyone? Feel free to share!