I have owned a .com for 7+ years, a new company who has only been around for <2 years registered the .net 2 years ago and now threaten for me to handover my .com or they will sue
I have received a cease and desist letter from a law firm via email.
They claim as they client registered a trademark two years ago for the name, I must handover my .com domain to them for free, otherwise they will sue me.
For them not to sue me, because they have now registered trademark (even though I had the .com domain and was using it 7+ years before them)
They state from their solicitor that I must do all the following (long letter they sent me but here is the title/headings):
1. Cessation of Use of the Mark.
2. Abandonment of Rights
3. Future Trademark Applications
4. Transfer of Domain Names
5. Acknowledgement of Ownership and No Challenge
6. Mutual Release
7. Covenant Not to Sue
8. No Outstanding or Known Future Claims/Causes of Action
9. Acknowledgment of Settlement
10. Confidentiality of Agreement
11. Non-Disparagement
12. Agreement is Legally Binding
13. Entire Agreement
14. New or Different Facts: No Effect
15. Interpretation
16. Governing Law and Submission to Jurisdiction
17. Equitable Relief
18. Reliance on Own Counsel
19. Counterparts
20. Authority to Execute Agreement
They sent this just email today, but state that I must do all of this within 3 days.
"[Company Name] further demands that you provide, by no later than the close of business Pacific Standard Time on December 15, 2021, written confirmation that you will comply with these demands. You are specifically advised that any failure or delay in complying with these demands will likely compound the damages for which you may be liable. If [Company Name] does not receive a satisfactory and timely response, [Company Name] is prepared to take all steps necessary to protect [Company Name]'s valuable intellectual property rights, without further notice to you.
The above is not an exhaustive statement of all the relevant facts and law.
[Company Name] expressly reserves all of its legal and equitable rights and remedies, including the right to seek injunctive relief and recover monetary damages."
Is this correct? Sounds ridiculous to me.
If anything I would have thought they should be the ones changing their name, as I was using the name 7+ years before them with a similar product
As Director of a domain name protection company (and not an attorney) I can offer this:
If you registered the domain name before the other party files for a trademark, then there is no way you would have known that they would file for the mark. So, in most cases you probably don’t have to give up the domain name. It comes down to whether or. Or you registered the domain “in bad faith” or not. And again, how would you know they would start their business and get a trademark? You wouldn’t.
Are you in the same industry and compete with each other? If so, there might be an issue, but I’d your site offers different products and there would be no confusion between companies or websites, then there may not be an issue.
The best way to handle this is to get a domain name attorney to respond to their letter to you, essentially telling them to go away, and that you plan on keeping the domain name.
If you cannot afford an attorney, look for a company that offers domain name insurance or a domain name warranty, if you have an issue like this with your domain name, your legal fees to defend the domain are covered.
As you have described the situation here, you bought the domain before they filed for their trademark, and you’re not pretending to be them. So you should be able to keep the domain. They are just trying to “ strong arm” the domain away from you with a threatening letter. If they do sue you or file a udrp, defend yourself with the help of a good domain name attorney.