need some help with my domain name

[royalguy]

my site is depoautolights.com and i sell depo light and also lights from other companies...depo is a light company located in taiwan and their site is depoautolamp.com.tw.

the Depo company has a branch apparently in the USA called maxzone.com. yesterday i get a letter in the mail saying that im selling infringing products which is affecting their reputation...and says they contacted me dec 20, 07 and i never responded and i have till march 13 to respond...by signing some paper and giving them sales and all that other information to determine damage

now this is the deal, i sell depo lights from a depo reseller in taiwan, they are authentic depo lights, there is no such thing as fake depo lights..i also sell sonar, tyc, eurostar and a host of other companies lights, which is what i am guessing they are referring to as infringing depo lights...i called the lawyer and told him he needed to talk to my supplier in taiwan and they are not fake lights and i dont know what he was talking about...basically i told him i wasnt responsible for anything, he needed to contact my supplier...he told me to sign some letter that says i will stop selling infringing product and surrender all infringing product...anybody have an idea what i should do from here??

i thought of changing my website domain name which i have done but i will still keep the original one and have it forwarded to the new domain name...i will also change my logo and anything that says depo on the site, but i am not selling any infringing product like their letter assumes which i am sure of...i sell different brands but on each light description, i dont write all of the lights manufacturer name on them...

 

[seniorjudge]

...anybody have an idea what i should do from here??...

How much do you have set aside for lawyers' fees to fight those guys?

 

[royalguy]

reply

How much do you have set aside for lawyers' fees to fight those guys?

really to be honest i have nothing set aside to fight them...thats y i just thought it will be best for me to change the depo name over the site but still keep my domain name and just forward it...any suggestions?

 

[royalguy]

nominative fair use

anybody know if i can claim nominative fair use in this case? obviously i sell depo lights, so the company is directly benefitting from that...and nominative fair use as i have read says:

Fair Use
There are two situations where the doctrine of fair use prevents infringement:


2. Nominative fair use
This is when a potential infringer (or defendant) uses the registered trademark to identify the registrant's product or service in conjunction with his or her own. To invoke this defense, the defendant must prove the following elements:
* his/her product or service cannot be readily identified without pointing to the registrant's mark
* he/she only uses as much of the mark as is necessary to identify the goods or services
* he/she does nothing with the mark to suggest that the registrant has given his approval to the defendant



Anybody know if i can claim this as a defense, obviously i didnt agree to anything when i spoke with the lawyer, but he has asked me to sign the letter and return to him which i told him i wont, and i will give it to my taiwan supplier to review it...i have created new logos for the site and the words have been changed from depo to jdm but i have not yet implemented it in my site yet....any advice whether i should just change the way depo is written in my logo or what? their site is www.maxzone.com for the one in the USA...or should i just change the whole site name...but still use my old name as a redirect...the lawyer claims i used the same color the company uses which is obviuosly a lie...they use green, i use red and black.

 

[royalguy]

reply

any advice or help

 

[Michael Wechsler]

I understand where you're coming from but there are other issues besides intent. Depot is likely concerned with (a) ensuring that the public isn't confused that you might actually be Depot or associated with Depot, (b) any dilution of their mark as a result of your actions, (c) the fact that a domain name is not just an 'address' like 123 First Street but also frequently an identifier of the location of the mark holder, e.g. microsoft.com is the place to find the famous software publisher "Microsoft."

Here are a few cases you should read which will educate you on how the courts view your kind of activity and why you you may not be successful without striking an agreement with Depot assuming they even have trademark protection. Do they have a registered trademark in the US? This issue isn't so simple but there is more leverage typically on the side of a mark holder, especially if the mark is more unique. I'll leave you with some info as to how it works and why what you are doing may not necessarily be considered fair use. Every case is fact specific.

The Orange Bowl Committee, Inc. v. Front and Center Tickets, Inc/ Front and Center Entertainment

NCAA v. Randy Pitkin, et al.

HBP, Inc. v. Front and Center Tickets, Inc.

National Collegiate Athletic Association and March Madness Athletic Association, L.L.C. v. Mark Halpern and Front & Center Entertainment

In the Orange Bowl case the Complainant is The Orange Bowl Committee, Inc, Miami, Florida, of United States of America, the Respondent is Front and Center Tickets, Inc/ Front and Center Entertainment, Fort Lauderdale, Florida. The disputed domain names orangebowl.net and orangebowltickets.net were registered by the ticket seller and the owner of the Orange Bowl mark sued. A portion of the majority decision will be helpful and I'll place it below. These cases are governed on a case by case basis.

By using the mark in the domain name, Respondent is using Complainant's mark more prominently than is necessary merely to describe its services. Moreover, the Complainant's mark is used in a way that triggers initial interest confusion regarding the relationship with Complainant in a way that is not adequately dispelled, for reasons more fully discussed below... (cases above cited)... In each case, a decision was rendered finding that similar conduct by Respondent to that at issue here was not fair use and was a violation of the Policy.

In sum, as a result of Respondent's use of the famous and distinctive ORANGE BOWL mark in its domain name, consumers are likely to be brought to Respondent's website mistakenly believing it is authorized, "official" or endorsed by Complainant. Respondent is thereupon offering to sell tickets to events which compete with that of Complainant.