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Got a cease-to-exist from eBay for owning a domain with "bay" in it

44 points by ebaysucks ↗ HN
I own a domain which ends in "bay", but has no content on it nor does it looks or sounds like "eBay".

I received the message below from "Edith, eBay legal department" via Domains By Proxy. Unfortunately Edith does not have the class to include a family name or contact details.

I guess eBay can hide behind some statist law, but I was wondering how I should react, if at all.

P.S. Other than being a female, common and familiar name, are there other reasons why Joe the Lawyer would want to send an email as "Edith"?

--------------------------- We have noted your registration through the Internet registry in your country of theplayersbay.com, a domain name that is confusingly similar to the famous eBay name and trademark.

The coined term "eBay" is one of the most famous brands on the Internet. eBay owns exclusive trademark rights to the eBay trademark in many countries worldwide, including the United States, Canada, The United Kingdom, the European Union and elsewhere internationally, including related common law rights. Accordingly, eBay enjoys broad trademark rights in its name.

Arbitrary use of the word BAY in a domain is problematic if the connected website is used in association with a business making use of eBay or operating in the same sphere of business as eBay.

Please review the following links for further information regarding eBay trademarks: http://pages.ebay.com/help/community/tm.html http://pages.ebay.com/help/policies/trademark.html

We are concerned that use of your domain name may infringe and/or dilute the famous eBay trademark. Infringement occurs when a third party’s use of a company’s trademark (or a confusingly similar variation thereof) is likely to confuse consumers as to the affiliation, sponsorship or endorsement of the third party’s services. Trademark dilution occurs when a third party’s use of a variation of a company’s trademark is likely to lessen the distinctiveness of the company’s famous trademark. In this case, your use of “BAY” in your domain name, especially if used for an e-commerce web site, is likely to lessen the distinctiveness of the famous eBay brand. “eBay” is an arbitrary and fanciful trademark; neither “eBay” nor “bay” describe online auctions, online trading, or e-commerce in any way. We cannot permit the use of the suffix "bay" to evoke eBay or as a shorthand reference to e-commerce.

We appreciate that you may have registered theplayersbay.com with the best of intentions and without full knowledge of the law in this area.

eBay respects your right of expression and your desire to conduct business on the Internet, but must enforce its own rights. To avoid further consumer confusion, eBay must insist that you not use the domain name for any purpose, do not sell, offer to sell or transfer the domain name to a third party, and instead simply let the domain registration expire. In the meantime, the domain name should remain inactive and should not point to any content.

Please confirm in writing that you will agree to resolve this matter as requested. Thank you in advance for your anticipated cooperation.

Sincerely,

Edith eBay Legal Department

43 comments

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mcotton
I would laugh and forget about it. If they are going to really come after you, they will give you plenty of additional chances to comply.
Batsu
I'm going to second this, as a Google search for "Edith" "eBay Legal Department" provides several other situations where people are still standing (including a site named 'www.paypalwarning.com' who published the letter they received 8 years ago).

Edit: Additionally, if you really have no return contact, then it's just an attempt to push you over since you can't respond.

bpodgursky
I am skeptical. If they were really going for all websites ending with "bay", I'd think some bigger ones would be on the list... like piratebay.

Unless they think that's a hopeless case.

photon_off
As satisfying as it would feel to tell them in no other words to "Go fuck yourselves," you should simply ignore this until there is actual legal action taken against you.

I am not a lawyer, and I'm very spiteful against people telling me what I can and cannot do, so take that into account when considering my advice.

noonespecial
My guess(1) is that "Edith" is a machine that simply emails this to everyone who registers a domain with 'bay' anywhere in it.

I'd wait for actual contact from a living human.

(1) I'm not a lawyer and this isn't legal advice, yadda, yadda.

ebaysucks
I've registered this domain about a year ago so you're probably right about the automation.

Don't worry about the legal disclaimer - I don't have an "Edith machine" nor do I want one ;)

pyre
eBay lawyers have to find some way to justify their billings...
DJN
Even if your domain "theplayersbay.com" represents an online auction site, I fail to see how it can be seen as intrinsically associated with eBay.

It's like Microsoft trying to prevent all software compnies from using the "soft" suffix or the "Micro" prefix.

I suspect that your domain was flagged by a poorly written pattern analysis bot and nobody at eBay has bothered to do any due diligence before firing off this "cease & desist".

My advice - send them an email stating your objection and requesting evidence that it has been construed to have an association with their brand. That should get a human being to actually look into the matter.

tptacek
As it turns out, you're probably wrong; Microsoft probably could target Microfoot and Megasoft and win a case. Read the comments on this thread:

http://news.ycombinator.com/item?id=1633106

I agree that in this case, "theplayersbay.com" probably doesn't have much to worry about.

ams6110
A company has to defend its trademarks in order for something like that to be upheld. The problem is that there are already hundreds of software companies with "soft" suffixed names. Because Microsoft was likely not the first software company to use the "soft" suffix, nor have they taken action to shut down any of these other companies, they can't suddenly do an about-face and claim trademark dilution against one of them (maybe unless there was more to it than a -soft name, e.g. a logo closely resembling Microsoft's, or other attempts to trade on Microsoft's reputation).
Jach
Are you sure this is actually from eBay? I can send an email with a from address of "x@ebay.com" but that doesn't mean I actually sent it from an eBay server.
sfk
There is no similarity between those two names. Beware however, that court decisions are completely arbitrary in these matters.

Look here for the tragicomedy of MobiliX vs. Obelix:

http://tuxmobil.org/mobilix_asterix.html

kefs
essentially, everyone here is right.. all they are doing is making an informal request. if they sue you, consider that their formal request.

for the time being though, might i suggest throwing up some content.. maybe something similar to this post is a good start?

edit: sorry.. i should have been clearer. do not reply.

dmoney
It seems to me that putting this post up on his domain could provoke eBay into taking actual legal action.
nhebb
Emails aren't a legitimate form of legal correspondence are they? I would just ignore it.
jrockway
On the other hand, C&D letters carry no particular weight. It does indicate the seriousness -- if someone is so cheap that they send an email instead of paying the $5 a registered letter costs, they probably can't afford to sue you.
eps
This is most probably a scam aimed at forcing you to relinquish the ownership of the domain.
scott_s
You should read this entire thread about "TeachBook," which was sued by Facebook: http://news.ycombinator.com/item?id=1633106

In particular, tptacek's comments about PerfumeBay are relevant to your situation.

Short version: yes, you should be worried. Even if you are in the clear, legally, you may have to deal with the legal system itself. Being legally vindicated can still be expensive.

Spechal
Counter sue for the legal fees and time lost.
RealGeek
This is different than PerfumeBay vs eBay. PerfumeBay contains the entire eBay mark. However, your domain may not contain the complete word 'eBay'.

If your domain is like SomethingBay.com and your website do not mimic eBay in any way, you should be safe. But, if your domain sounds likeBay.com, than it could be a problem.

Do not give up your domain this bot named 'Edith'. eBay will have to go through Uniform Domain-Name Dispute-Resolution Policy.

http://www.icann.org/en/udrp/udrp.htm http://www.wipo.int/amc/en/domains/

Wait until you hear from WIPO or your domain registrar about it. Respond them that your website does not mimic eBay and is not related to them in any way.

Most likely, WIPO will favor the decision on your side. It won't cost you anything to go through WIPO's resolution process.

bpm140
This is almost definitely coming from eBay.

It's important to recognize that this is a Cease and Desist and not an actual legal action. It's a threat of a legal action.

You really have two options -- either you give up the domain name or you fight. If you choose to give up the domain name, respond that you're doing so and I'm sure you'll get a brief letter thanking you for your cooperation on the matter.

If you choose to fight, and that includes ignoring, responding with questions or telling them that you think they're wrong, don't expect to get any further response until they actually file to forcibly take the name from you.

If this happens, you will have to pay money to defend yourself (no lawyer except maybe the EFF?) will take this pro bono or on contingency. You could also wait until they file legal proceedings to cooperate, which would enable you to keep the domain name for a while longer and force them to spend some money, but you'll still lose the domain in that case.

For now, I'd personally ignore it. Either they're serious or their not. There's no reason to do anything until they show whether they're committed to getting this domain from you.

andjones
How attached are you to the domain?

Should eBay choose to pursue this and you choose to defend it, you may make a good case. I'm not sure if your site has anything to do with auctions, as I can't reach your site ATM - I'm guessing you've been slashdotted. You may argue that you do not share any similarity to eBay and "bay" is a common word.

Right or not however, changing your domain could be the easiest course of action. Especially if you're not attached to it yet.

ebaysucks
Thanks for all the replies, I've read them all and have decided I will let the domain expire.

I will also do my part to increase the average number of people unhappy customers share their experience with.

I look forward to the day that the semantic web will replace our statist legal system.

aberkowitz
If you like the domain, don't get bullied into letting it expire. As many have pointed out, the notice itself is just a meaningless action by ebay to frighten you.
stretchwithme
This is precisely why we should be living in the San Francisco Shoreline Indentation Area.
rwhitman
If anything you're infringing on thepiratebay.org more than ebay. Maybe another route is take a hint from pirate bay, and move your operation offshore.
shizoor
Haha! I wonder how pirate bay will react to this!
puredemo
I received one of these years ago, ignored it and they never followed up. YMMV.
lanstein
And this is one of the great things about this community.
skowmunk
Could it be that somebody else unrelated to ebay and who is interested in that name send you that email?

Could they have placed a backorder on that domain name and trying to force you to let it expire?

Even if it is an automated mail, I would find it very hard to believe that such a mail would not have some contact info under the "Edith eBay......"

pickle
same thing happened to me when I had a *Blaster domain. I backed down, but regretted it since.
[deleted]
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MichaelApproved
Unlike patents, trademarks have to be actively defended to remain valid. My guess is that companies of this size send out letters like these to maintain that they're indeed defending their trademark.

I wouldn't worry about it but still send a reply letting them know why I don't think their trademark applied.

nlavezzo
I can confirm this - large companies must show effort or risk losing their trademark rights. That doesn't mean they have to take you to court though.
kochbeck
It's a little late to say this, since you (ebaysucks) have posted this in public (bad plan), but DO NOT REPLY under any circumstances. Replying does two things:

1. It alerts the sender that there may be an interested party on the other side of unknown intentions. This gives them further reason to continue to pursue that they didn't have before.

2. It confirms to the sender that the message was received by a potential defendant. That, then, becomes a piece of the litigation: "Your Honor, over a year ago we sent Mr. So-and-So an email regarding this matter, and he flatly refused to negotiate in good faith with us. Given that... (insert bastardly thing here)."

In short, don't reply, and never reveal your thought process to them except through counsel. And don't pick painful fights (especially inadvertently) for no reason at all. If you feel an overwhelming urge to take some kind of action, talk to a lawyer.