Trademark Question

[sagetips]

XYZ, inc. sent a cease and desist letter for a domain I own (x-y-z.com). I have taken the site down (it wasn't significant to me) to avoid legal issues and XYZ, inc. is also demanding the domain be transferred to them (presumably at my cost).

They claimed trademark infringement. When I searched the TM database I found no such registered TM and they subsequently indicated it was a "common law" trademark. They are a new company (less than 1 year old).

In honesty, I bought the domain after seeing their website (which uses a different domain name entirely) and thought it might fit in with something I was doing.

Under the circumstances, am I required to give the domain up? Is parking it an option? Are companies protected from being too stupid to buy the .com for their company name?

Thanks for any insights.

[Chris]

Nope. In fact, if they don't have a trademark registered you could go register it yourself and beat them to the punch. It costs $350, cheaper than a lawyer sometimes, fairly easy to do.

Trademarks are the weakest form of intellectual property. They are specific to industry, product type, and or geographic location. For instance you're allowed to name your business "Apple Heating & Cooling" even if there is an "Apple Computer" out there, different industries.

Or, in the same industry. A local pizza place can call itself Papa John's and not be part of the national chain so long as they were here first (actually happens in my town).

Anyways, without knowing the domain specifics, I'd not make any response to them whatsoever. Run it by a lawyer though of course.

If X, Y, & Z are really unique words then you might have issues. But if they're generic, or even just somewhat generic, then they really don't have a case.