Accused of Trademark Infringement After Acquiring an Expired Domain Name
Hello. This site said not to list anything that could identify me but it is about a domain that doesn't have privacy so I will not provide the domain extension. I won the domain name phibetasigmatampa.??? in auction at Godaddy. The previous owner let it expire. My reason for doing so was that it had some good links pointing to it so I just want it to link to some other sites, which helps them rank higher in search engines. I published a small one page site with links in the content. Several weeks later I got a C&D letter from president of the Phi Beta Sigma fraternity in Tampa (see below).
I am not selling any products on the website. There are no ads or anything like that, just some text and links to my other sites. I am not trying to deceive anyone into thinking that I am related to the fraternity. I work in the online gambling sector so I needed the page to be partially about gambling. With that in mind I gave the site a theme related to an online poker fraternity. I have gotten C&D emails in the past and 90% of them are just people trying to scare me into giving them a domain. It isn't worth going to court over or anything but in this case I wanted to get an opinion. The domain consists of Greek Alphabet letters/words and the term "Tampa" at the end. They do seem to have a trademark for the term Phi Beta Sigma but it looks to be related to making items for sale (clothes, watches, nick-nacks...ect) with the words or symbols on them. Not sure it covers everything or just that.
If anyone could give me some advice I would greatly appreciate it. The domain really isn't very valuable so I'm not too concerned. More of a prinicple issue, not wanting to give in without even getting an opinion first. My gut tells me that I should just hand it over but it never hurts to ask. Thanks in advance. Here is part of the email I received:
Quote:
"I am writing on behalf of the Tampa Alumni Chapter of Phi Beta Sigma Fraternity, Inc. (“Tampa Alumni”), a recognized professional and civic organization chartered in Tampa, Florida in 1946 and part of an International Fraternity founded in 1914, (the “Fraternity”). The Fraternity has developed valuable trademark rights under the name “Phi Beta Sigma” and corresponding Greek letters “FBS, among others, (the “Marks”). The Tampa Alumni further developed good faith and trusted relationships under these Marks and is well known among academic and commerce circles within the Tampa Bay Metropolitan Area. Collectively, the Tampa Alumni and/or the Fraternity are resolute in its efforts to protect such rights. The Tampa Alumni recently discovered you are the current domain registrant for the following internet domain name:
www.PhiBetaSigmaTampa.???
Your present use of this domain constitutes illegal domain parking, which is a form of cybersquatting that occurs when a trademark of one party is registered by another party as a domain name and generates revenue, (in your case, through the use of internet gambling). The registrant of such domain name profits from the trademark without the consent of the mark owner – in this case, Tampa Alumni and/or the Fraternity. Your attempt to profit from the use of the domain name qualifies as infringement and amounts to cybersquatting under the Anti-cybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1125(d). This is a clear violation of the legal rights the Tampa Alumni and/or the Fraternity. See Webadvisor v. Bank of America Corp., 448 Fed.Appx. 95 (2nd Cir. 2011)."
Should I just hand it over? Ignore the email (never hear back 90% of the time)? Or perhaps change the content to a review of the fraternity? Not sure if the last would make any difference at all. Thanks for any advice.
Re: Accused of Trademark Infringement After Acquiring an Expired Domain Name
Trademark rights are not inferred due to registration but mere use in a commercial form. If they have used either term in commerce, they do have at least some trademark rights in the name. They likely have used the name in many various commercial activities and as such, may have a claim to a wide range of rights.
That doesn't mean they have a right to claim the domain name though.
the big issue I see that is a negative for you is not the use itself but relating it to your specific use; gambling. They may be able to develop that into an defamation claim since you connecting them does infer they are involved with your gambling situation.
Quote:
With that in mind I gave the site a theme related to an online poker fraternity.
not sure what that means exactly but from my perspective, it makes it worse. It really suggests a connection between the PBS group and gambling and YOU are the one that made it appear that way.
Since it really isn't that valuable to you, my suggestion would be to relinquish the domain but I'm not all that altruistic in nature. Since they let the domain registration lapse which is what allowed this scenario, I would offer to sell it to them, at least to recoup whatever costs you have regarding the domain.
Re: Accused of Trademark Infringement After Acquiring an Expired Domain Name
Buying a domain name doesn't give you a right to use it if it infringes on an established trademark.
Just like buying a stolen car doesn't give you the right to keep it.
Re: Accused of Trademark Infringement After Acquiring an Expired Domain Name
Quote:
Quoting
adjusterjack
Buying a domain name doesn't give you a right to use it if it infringes on an established trademark.
Just like buying a stolen car doesn't give you the right to keep it.
correct but is OP infringing upon PBS' claimed or established rights? One can often use a trademark if it is not in a competing market, either geographically or sector of commerce.
their registration is in the goods and services sector. They have specifically registered this:
Quote:
IC 035. US 100 101 102. G & S: Association services, namely, promoting the interests of a beneficial fraternal organization. FIRST USE: 19201231. FIRST USE IN COMMERCE: 19201231
I do not know enough about this to be able to address it adequately but that sounds like something that could result in the OP's use as it is as infringement.
Re: Accused of Trademark Infringement After Acquiring an Expired Domain Name
Quote:
Quoting
jk
correct but is OP infringing upon PBS' claimed or established rights? One can often use a trademark if it is not in a competing market, either geographically or sector of commerce.
That's true but it only goes so far.
And one wouldn't get very far with:
Microsoft Baby Sitting Service
Or:
Coca Cola Insurance Agency
Or:
Walmart Car Wash
You get the idea.
Re: Accused of Trademark Infringement After Acquiring an Expired Domain Name
Quote:
Quoting
adjusterjack
That's true but it only goes so far.
And one wouldn't get very far with:
Microsoft Baby Sitting Service
Or:
Coca Cola Insurance Agency
Or:
Walmart Car Wash
You get the idea.
Your examples are exactly what I was speaking about regarding a competing geographical market.
I specifically stated that you could not use another's mark if using it in a competing geographical or market sector. Those would be competing in the geographical market.
Re: Accused of Trademark Infringement After Acquiring an Expired Domain Name
When dealing with unique trademarks, it's easier for the owner of the mark to assert that a use by a service that does not directly compete with it is still an infringement, because it suggests an association or sponsorship, and could subject their mark to dilution. Microsoft can use that argument against "Microsoft Babysitting Service", but things change for trademarks based upon ordinary words in an ordinary combination, or where the mark is an actual name. McDonalds has had to litigate with a number of people named "McDonald" or "MacDonald" over their sometimes all-too-cute efforts to leverage the McDonald's brand. ("Our 'Big Mac' is named after our son, Mackenzie - that's his nickname.") Wendy's, the fast food chain, would have no luck shutting down "Wendy's Babysitting Service".