Infringement of Trademark?

[CreativeLogic]

I have the domain benescripts.com (Plural). But the domain benescript.com is emailing me saying that I have to get rid of the site... Here is the first part of the email:

This letter is written to you on behalf of my client, Paul J. Berube of 3720 Davinci Court, Suite 200, Norcross, Georgia 30092. It has come to my attention that you are using the name of "BENESCRIPTS" and/or “BENESCRIPTS.COM” to market goods and/or services to the general public.

This is to advise you that my client has been in business under the trademark BENESCRIPT for an extended period of time and has built a very large reputable business in connection with the use of that mark.

Your use of the above-noted mark in connection with offers of goods and/or services is in violation of the Lanham Act resulting in the wrongful appropriation of valuable rights of my client. I believe that your continued use of the mark noted above in connection with offers of goods and/or services is "likely to cause confusion, or cause mistake, or to "deceive" the public, resulting in wrongful appropriation of valuable good will of my client.

Demand is hereby made upon you to immediately cease and desist from the use of BENESCRIPTS or BENSCRIPTS.COM, or any similar mark, in connection with your goods and/or services, or on any similar products. Otherwise, my client will have no other alternative but to take whatever legal action may be necessary to protect its rights and to enjoin the use of any mark confusingly similar to my client's trademark. Demand is also made to discontinue the web site BENESCRIPTS.COM.

Trademarks and trade names are broadly covered and protected under Federal Law, more commonly referred to as the Lanham Act 15 U.S.C. 1051 et. seq. It is believed that you are violating one or more of the following:

...

Do I have to get rid of the site? What should I do? Should I sell them the site or what? Just looking for some answers?

Regards,
Ryan Amos

 

[RJ]

Originally posted by WhSox21

Do I have to get rid of the site? What should I do? Should I sell them the site or what? Just looking for some answers?

I can't answer you definitively either way. This is what judges are for. But it does seem to me they would have a very strong case against you. BeneScript is a registered trademark that they own, so they could present a case that you are attempting to trade off of their name.

However, you might also have a case because their TM applies to the medical industry, and I'm guessing that your intended use had to do with webscripts. Am I right?

In that case, you might be able to trade using that name if the industries are separate, and you make no attempt to confuse consumers that you are affiliated with BeneScript.

I would briefly explain your position in a response letting them know that you had no intention of confusing consumers and ask if see if they are willing to resolve the situation amicably. It's possibly they may be willing to pay you for the domain insted of taking the case before a judge.

Continue building the content on your site, right now it looks rather bare.

 

[CreativeLogic]

However, you might also have a case because their TM applies to the medical industry, and I'm guessing that your intended use had to do with webscripts. Am I right?

Yes, it will be webscripts.

In that case, you might be able to trade using that name if the industries are separate, and you make no attempt to confuse consumers that you are affiliated with BeneScript.

Yes, I told them that. Still waiting on a reply from them now.

Also, I haven't really done anything on the site for some time now. I have been really busy with MyImgs.com and there really hasn't been much time for it. I wouldn't mind selling the site off to them, but I would want it for the right price.

Thanks for your response.

Any other ideas would be great help!

 

[RJ]

Originally posted by WhSox21
I wouldn't mind selling the site off to them, but I would want it for the right price.

Keep in mind that filing costs for a UDRP are around $1500 plus lawyer fees. It's not uncommon to settle beforehand for $500 to $1000.

If this did go to UDRP, I'd say they'd have about a 2-1 shot of winning.

 

[THESTOKIE]

like cool host said its looks in there favour but if u had some scripts on your web site to do with web pages thats a diffrent matter as i think u could argue and say u never knew of there site till u got the letter and your site is nothing to do with theres looks are diffrent products are diffrent and u use the .com at the end of what ever sales you make so people no the diffrance allso add a little bit of text at the bottom of your page stating you have nothing to do with there site and are noway connected to them then send a letter back stating ur bit of info at the bottom of your homepage then id say the balls in your court again as if they want to take it further you could say you tryed 2 comprimised you show on your pages your nothing to do with them and there just afer your name as it sounds better

but would get content on there quick

i aint a lawyer or nothing thats just a thought on what you could do hope it helps

ps dont try and sell let them make you an offer as they defo no about your name and if there that worryied i think they will offer u a price so dont ask let them OFFER cause it if does go further they might say u approached them to sell the site hence cyber squatting

 

[CreativeLogic]

Ok, THESTOKIE, I took you advice and added this to the bottom of every page: "BeneScripts.com is in no way affiliated with, partnered with, or legally binded to BeneScript.com." and thier site name is linked. So now, I sit back and see what happens. Trust me I'll keep you updated as I will probably be looking for more advice in the very near future!

 

[THESTOKIE]

good luck hopefully they might be happy with that

 

[armstrong]

Hmm. From a domain seller point of view, you may want them to remain UNhappy about the situation - at least unhappy enough to offer you a deal.

But hopefully not too UNhappy and go UDRP regardless of cost.

 

[Waldo]

Well, good luck. I'm not sure what the outcome of that would be...

 

[Coastalguy]

We're pulling for ya!

ST

 

[Jeff]

Of course, none of this can replace competent legal advice (from an attorney who specializes in in the fine areas of TM/UDRP litigation and resolution), IMHO.
As I understand it, UDRP is comprised of three (3) components and a Complainant must win all *three* in order to be successful:
1.) Existing trademark.
2.) Legitimate interest.
3.) Presence of "bad faith".

Helpful resources:

WIPO: http://www.wipo.org

USPTO: http://www.uspto.gov

Link: http://www.arbitration-forum.com

The last "link", the "National Arbitration Forum", has a searchable database of "Domain Name Dispute Proceedings and Decisions" which is an excellent resource. Each dispute (or potential dispute) is very case specific, but prior decisions CAN be used as a precedent either one way or the other and depending on the similarity of the circumstances. Further research and counsel is suggested, IMHO.
PS. I ain't no lawyer! :p
Good Luck.

 

[Josh]

I beleive Ryan would have the case if they DID go to court. Like you said coolhost, you need all three in order to win, and his site CLEARLY doesn't present any presence of bad faith towards the other domain. The fact that he went as far as to put a disclaimer at the bottom of everypage about the other site prooves that he was not in it to collect miss-spelled entrys or decieve the user.

Also, like mentioned before, let them come to you with the deals. Would look bad to the judge (if it goes that far) if they bring up that you tried to collect from the site's name.

 

[Jeff]

Originally posted by Josh
I beleive Ryan would have the case if they DID go to court. Like you said coolhost, you need all three in order to win, and his site CLEARLY doesn't present any presence of bad faith towards the other domain. The fact that he went as far as to put a disclaimer at the bottom of everypage about the other site prooves that he was not in it to collect miss-spelled entrys or decieve the user.

Also, like mentioned before, let them come to you with the deals. Would look bad to the judge (if it goes that far) if they bring up that you tried to collect from the site's name.

The "bad faith" aspect would be in regard to any potential response for a "consideration" , "reward" or "asking price", as Stokie mentions in his last paragraph (above). You also mention it in your second paragraph, as well Josh ... and it's a valid point, IMHO. I separate "Legitimate Interest/Confusingly Similar" with "Bad Faith", the latter being more concentrated on attempting to profit from the domain (name). Just my interpretation and two sense ... absent competent legal advice and counsel, naturally.
Thanks, and appreciate the very valuable input as well.

 

[supertrader]

If you don't have enough money to hire a lawyer just get rid off it

 

[CreativeLogic]

Do you really think I need a lawyer for this? If I do it's not something I would keep!

 

[armstrong]

I don't think it applies to this domain, but assume for a minute that domain cybersquatting is obvious. What's the worse that can happen? I had always thought that the worse that can happen is that you lose the domain in question. Has anyone actually been fined or done jail time?

 

[Tippy]

I think you will be fine, just sit back and wait for their reply, I wouldnt take any further action at this time, the ball is in their hands now.

Mike

 

[CreativeLogic]

Yea, still no reply since I emailed them a couple days ago.

 

[identity_00]

Change the name of your business (domain) and use
BENESCRIPTS as a redirect. That way your not representing to be them. One thought OR...

I guess the problem with the letter to me is that:
BENESCRIPTS and BENSCRIPTS.COM are two different things.
Bene like benefits implys something giving or benefitting someone?? BENSCRIPTS is about BEN and his own scripts.
I would also immediately register / acquire Master business license and TM of BENESCRIPTS.

I would keep it.. but im not you of course.

sorry read it wrong. Anyways..

Good luck

 

[CreativeLogic]

Still no reply from the guy. Its been almost a week since I last emailed him!

 

[Jeff]

Originally posted by WhSox21
Still no reply from the guy. Its been almost a week since I last emailed him!

Hmmmm.
Please keep us posted, WhSox21.