Ask HN: Own .com for 7 years, a new company trademarked my name registered .NET

409 points by brogrammer2018 ↗ HN
I have owned a .com for 7+ years, a new company who has only been around for <2 years registered the .net 2 years ago and now threaten for me to handover my .com or they will sue

I have received a cease and desist letter from a law firm via email.

They claim as they client registered a trademark two years ago for the name, I must handover my .com domain to them for free, otherwise they will sue me.

For them not to sue me, because they have now registered trademark (even though I had the .com domain and was using it 7+ years before them)

They state from their solicitor that I must do all the following (long letter they sent me but here is the title/headings):

  1. Cessation of Use of the Mark.
  2. Abandonment of Rights
  3. Future Trademark Applications
  4. Transfer of Domain Names
  5. Acknowledgement of Ownership and No Challenge
  6. Mutual Release
  7. Covenant Not to Sue
  8. No Outstanding or Known Future Claims/Causes of Action
  9. Acknowledgment of Settlement
  10. Confidentiality of Agreement
  11. Non-Disparagement
  12. Agreement is Legally Binding
  13. Entire Agreement
  14. New or Different Facts: No Effect
  15. Interpretation
  16. Governing Law and Submission to Jurisdiction
  17. Equitable Relief
  18. Reliance on Own Counsel
  19. Counterparts
  20. Authority to Execute Agreement
They sent this just email today, but state that I must do all of this within 3 days.

  "[Company Name] further demands that you provide, by no later than the close of business Pacific Standard Time on December 15, 2021, written confirmation that you will comply with these demands. You are specifically advised that any failure or delay in complying with these demands will likely compound the damages for which you may be liable. If [Company Name] does not receive a satisfactory and timely response, [Company Name] is prepared to take all steps necessary to protect [Company Name]'s valuable intellectual property rights, without further notice to you.

  The above is not an exhaustive statement of all the relevant facts and law.

  [Company Name] expressly reserves all of its legal and equitable rights and remedies, including the right to seek injunctive relief and recover monetary damages."
Is this correct? Sounds ridiculous to me.

If anything I would have thought they should be the ones changing their name, as I was using the name 7+ years before them with a similar product

292 comments

[ 3.4 ms ] story [ 252 ms ] thread
Put it into your spam folder
I always found amusing reading The Pirate Bay email responses to lawyers from Dreamworks, EA, Apple, etc.
Perhaps you should get a lawyer to advise you of your rights and options.
Opening a dialogue about this would have been the professional approach. Blasting you with a long list of demands means they are trying to bully you. Cease and desist letters are just a way of trying to scare you into doing what they want so they don't need to do things the hard way. I'd recommend asking a lawyer if they have a case to make against you, just to be safe. But if they don't, this letter means nothing.
And their 3 day demand is total horseshit of a play as well. You have done the research, and feel they do not have in-house representation. It is done on a Friday, so 2 of the 3 days is weekend. Finding a lawyer in 3 days is not simple, and doing it with 2 of the 3 being a weekend when a lawyer is impossible to find is just bullying 101.

Fuck people like this. I feel bad for the Op, but sadly, I am jaded by the BS games that bullies play and win. I wish karma 1000x upon people that do this kind of bullshit.

We've all seen how part of the responsibilities of a brand is to protect it, but as someone else posted, there are ways of not being an asshole when protecting one's brand. Ultimate face saving for the company in question would be to realize what is ocurring and fire the legal team they have hired for this role, apologize for their behavior to the Op, and then amicially work out a resolution. However, I realize that this is such a low chance of ever happening to be laughable.

Three business days. The demand letter requests a response by December 15, which is a Wednesday.
granted. so if the Op makes phone calls on day 1 (a Friday), how many return calls will he receive on day 2, a Monday? Doing anything on a Friday, aka take out the trash day, is just a game move to make things harder.
Lawyers understand that it takes time to get counsel for yourself. My experience is that if OP says, "I am in possession of your letter. I am in the process of retaining counsel. Please provide reasonable time for me to hire one and provide a full response," then that should be adequate. It's a standard response to such letters.

(Not legal advice, etc.)

> there are ways of not being an asshole

Yep, when somebody else started using my trademark in a slightly related business, I called my lawyer and discussed. We decided to offer that they license the trademark for $1 and agree to discuss with me before using it in any new way. That way my trademark is protected and I don’t need to be an asshole.

Worked out well, we even threw each other business occasionally, and they went out of business after a couple years anyway.

Seek the advice of a lawyer.
No, it's not correct to state that they have any right to the domain name. Anybody can sue anybody for anything, but they have no prospect of winning ownership of the domain name. Domain name conflicts like this are adjudicated by WIPO who would never grant the domain name in this situation: https://www.wipo.int/amc/en/domains/
You are right. They are just trying to scare the owner into giving it up for free.
Doesn't matter what WIPO thinks if a judge who has jurisdiction over both parties orders the transfer. Not saying it will happen in this case, but you can definitely be compelled to hand over your domain name or risk contempt of court.
If you haven't registered the trademark, does holding the domain have any legal merit?
You don’t need to have registered. You get trademark ownership automatically without any registration if you are the first to use a distinctive mark in interstate commerce. Having registered can help assert your claim though. IANAL.
If he's doing business under that domain name, he is using it as an unregistered trademark and still gets some protection from that. In some cases, including when someone new starts a similar business with the same name, it can have the same force as a registered trademark.
> does holding the domain have any legal merit?

There... is no relation between the two?

I have had a .com since 2003. A SF startup made a INC after my name and got the .org. They called me at my work and I just said I have business plans for domain. They trademark the name, but have not bothered me.
They might be using scare tactics hoping you'll hand over the domain name without question. But I wonder if they have a case.

My suggestion would be to either A) ignore and see if they go away, and/or B) have a domain name lawyer send a reply showing you won't roll over. That's usually enough for parties like these to back down.

If you need a lawyer recommendation send me DM me on Twitter (@marckohlbrugge). More than happy to help.

FWIW, some people might mention a procedure called 'UDRP' which is typically used by TM owners to quickly and cheaply get a TM-infringing domain name. However, one of the requirements for a successful UDRP case is that the TM needs to have been issued BEFORE the domain name was registered. Which is not the case here. So a UDRP approach would fail for them.

The other way for them would indeed be to sue and try to claim TM infringement in court. I don't have much experience with TM law, so I'm not sure what your odds of winning are. But there might even be a way to get their TM invalidated.

TL;DR: Talk to a lawyer.

P.S. If they have money for lawyers, they might also have money to buy your domain name. I wouldn't propose a purchase until you've talked to a lawyer (as it could hurt your case), but it's something to consider for later on.

In particular, the UDRP rules include the following:

--------------

(ix) Describe, in accordance with the Policy, the grounds on which the complaint is made including, in particular,

[...]

(3) why the domain name(s) should be considered as having been registered and being used in bad faith

--------------

Yes, although that criteria is somewhat subjective. Since an UDRP needs to meet all criteria, you can throw it out by just looking that the registration dates.
Or option C) Negotiate a deal to get paid for the domain

Marc, do you have an email address?

marc(at)hey.com

Note that I'm not a lawyer, but I've dealt with similar issues before through a qualified lawyer. Happy to introduce you. Not sharing name here publicly, because that could potentially be used against me. (i.e. someone intentionally creating a conflict of interest, etc)

get a crowdfunding campaign to fight the evil corp on the courts

get in touch with lawyers dealing with IP/trademarks

you can have a brief talk w/ them to discuss options before making any decision :)

While this is definitely a bunch a hot air, unfortunately they could frivolous sue you to simply win on financial grounds alone (in particular they could sue you in a location where the cost of travel would be expensive and if you ignored it they get a default judgement, or sue you in both state & federal courts for slightly different things and drown you in legal costs).

I'd evaluate what your endgame is. If your endgame is to keep the domain then I'd get a lawyer in order to make it clear that you will respond to legal challenges (and, yes, the bill is going to run up). If you were willing to sell, for a price, then you should try to figure out how much a legal challenge would cost them and set a price a bit higher than that.

Is it fair? Absolutely not, but the US legal system is set up so that those with the deepest pockets often win. It isn't a fair fight for normal citizens, and even having the law on your side is often not enough because it is a financial battle more than a legal one.

Either way may be wise to lawyer up today, either for a better selling price, cause them to back off entirely, or move it into the "bury you with costs" phase of bullying.

> (in particular they could sue you in a location where the cost of travel would be expensive and if you ignored it they get a default judgement, or sue you in both state & federal courts for slightly different things and drown you in legal costs)

"This past June, the U.S. Supreme Court ruled that plaintiffs cannot sue companies in a state where they may do business, but do not have significant connections to that state."

Bristol-Myers Squibb Co. v. Superior Court of California (BMS)

https://www.andruswagstaff.com/blog/supreme-court-rules-plai...

If I’m not mistaken the lawsuit can be filed but you can win a challenge to jurisdiction. But in order to challenge jurisdiction you need to hire a bar certified attorney in that jurisdiction… thus defeating the point
Conclusion: only the lawyers ever win.
Huh, you can't defend yourself?
Yes, you can. But then you'd need to appear...

obtw there's serious risk of trying to defend a suit yourself. Maybe the judge would take pity on you and grant a continuance for you to find counsel.

So what would happen if an American company that owns the .net domain sued me, a Polish citizen, who owns a .com domain, for that domain? My contract for the domain is with a Polish provider, surely it would have to go through a Polish court, no?
I'm under the impression that all .com is US jurisdiction, considering that they trivially seize them and VeriSign/the owner of the .com registry is a US company
Not a lawyer, but...

If OP has first use in commerce that predates theirs they could start, or threaten to start, the paperwork to have the trademark tossed. If they see you are asking questions that aren't a response to bullying, but that would precede a legal an attack their trademark directly, they might find themselves on a different footing.

Regardless, the possibility, I would think puts you in a better negotiating position if you're looking for an offer, or just want to make them go away.

Seeing a lawyer is likely the way to go. Also, I notice you use the term "solicitor" which makes me think any US law-based answers are less likely to be grounded in reality for you, so add more than your usual pinch of salt to anything you see here, including what I wrote!

He could transfer the domain to a friend who is not in the US, and then they'd have nothing to stand on :)
Looks like it's the opposite. They'll sue in jurisdiction where the other guy have to appear in court.

If not - they'll auto-win and Verisign will happily transfer the domain to crooks.

As you said "solicitor" I'm guessing you're not in the USA.

If you are in the USA, the law is on your side: just because they registered the mark doesn't take away your rights.

In addition, if they are doing something different from you (or perhaps you're using the domain for non-business purposes) they have no claim. You can open McDonald's garden shop (even if your name isn't McDonald) and unless you made it look like a McDonald's restaurant (trying to cause confusion) it's none of the restaurant company's business.

Best, unfortunately, is to get a lawyer. If your country has a "small claims" court you could even sue them to get back your lawyer costs, but those are likely to be small in any case.

Good luck!

>As you said "solicitor" I'm guessing you're not in the USA.

But then they use Pacific Time Zone.

(comment deleted)
Which makes it a very good bet that they're Canadian.
Not really a dead giveaway. Lawyer is the more commonly-used term in Canada too.
No, the letter they got sent uses Pacific Time. The dicks couldn't even be bothered translating that into the time zone of their target, or even UTC.
Talk to a lawyer and be prepared to spend money if you want to keep it.

First use is a strong defense, but you will need to defend it. If you have similar products and can show first use, as you claim, perhaps negotiating a sale of your entire business including the domain would be something to offer them.

Usually this kind of tactic happens because they've looked at you and guessed you don't have financial capital to defend yourself. Unfortunately, because it's very difficult to prove they're acting in bad faith, there's likely no way to recover your costs of defense.

Dont know what country you live in but check the categories the trademark was linked to. If they are in the same line of business as you and the TM has that category that covers the line of business you are in I would be questioning the trademarks office for awarding the TM to the other entity.

TM's are cheap so its an easy trick and a lawyers letter doesn't cost much either, but its a legal game you may well be forced to play, because they might go to the domain registrar and try it on with them to get your domain.

Unfortunately these are the additional cost we can be forced into playing if someone with more money wants something from you like in this case your .com name. You could also see if your domain registrar as some sort of arbitration which could keep costs down or lower than using a lawyer. I think divorce lawyers best typifies some of them thrive on disputes. Good luck!

>Is this correct? Sounds ridiculous to me.

It is ridiculous, and the only reason for this is because they have no legal right to the domain name.

Every answer in this thread is wrong except for "hire an attorney and work with them to figure out what the best option for you is." Do not follow any "free legal advice" from HN -- and I'm speaking as an actual licensed attorney.
> and I'm speaking as an actual licensed attorney.

and so the racket continues

Exactly. Licensed attorney's typically avoid any commentary at all that could be construed as advice, to avoid creating a relationship. So if someone is sticking their neck out, it is hard to imagine there isn't an ulterior motive in telling everyone to lawyer up when they get a letter.

Not that their advice is wrong - you should consult a lawyer over internet advice. But the "everyone else is wrong, listen to me" flavor is a bit heavy-handed.

I'm being heavy-handed here because 20 years ago, before I was a lawyer, I was sued, failed to hire counsel in time, and unnecessarily lost my shirt as a result. I don't want the same thing to happen to OP.

Legal questions come up on HN from time to time and the usual response is a bunch of wannabe lawyers incorrecting one another, and if OP follows any of their advice, Bad Things could result. I spoke up early this time in what was perhaps a foolish attempt to short-circuit this.

No competent attorney is going to give legal advice here -- money aside -- because they would be violating their professional ethics code by doing so. Giving legal advice requires knowing facts at a very detailed level (the degree to which is rarely found in the post), knowing the laws in the jurisdiction(s), and having relationships and experience. Not to mention attorney-client confidentiality, and other reasons.

Thanks for being a voice of reason.
This is the equivalent of a doctor saying "if you think you have cancer, don't blindly listen to the internet and consult a doctor and I say that as a licensed medical professional".

This isn't someone trying to rope someone into a racket for their own gain, it's "Our laws and legal system are a clusterfuck that varies wildly from region to region. Get a free (or at least cheap) consult instead of taking a risk trying to navigate this yourself".

There is no situation in which it is worthwhile to take the risk to try and navigate that clusterfuck yourself. Spend the 50USD or so and the hour of your time it'll cost at most to get a consult and go from there. At best you can get something out of this whole interaction but at worst if you don't consult a lawyer you can end up without the domain, without any money from selling the domain, and saddled with legal fees defending a lawsuit against you.

Except that it isn't cancer. It's a headache. And sure, WebMD will tell you to call a doctor in case your headache is a blood clot. But most people just take aspirin.
Whether or not you, or anyone else, believes, and / or can demonstrate, the current state of society and legal systems is a racket, doesn’t magic away the problem of a potential default judgement.
This sort of looks like template document. An actual attorney would send paper letter, not an email.
False. C&D letters are sent via email all the time.
This is a great reason to ensure your mail client doesn’t auto-download embedded images, send read receipts, etc.

No reason to tip your hand until a lawyer tells you to. For instance, the last time I dealt with a lawyer, they had me send responses directly, in hopes the other side would underestimate our position. It worked, fwiw.

False. C&D letters are sent via email all the time.

Millions of Americans don't have e-mail. They're just on social media. What then?

That's why important things are always sent by mail. Very important things by certified mail.

That's irrelevant for this issue. Domain holders have to provide working email addresses as a condition of registration, and are reminded annually to keep their addresses up to date.

If an email address can't be found, the correspondence can be delivered through other means if necessary (mail, process server, etc.). But generally, there has no longer been a need to waste paper and postage to deliver notices since email became practically ubiquitous.

IANAL but I am an internet plumber. Happy to provide expert witness that e.g. Hover, owned by Tucows, has a toggle for whois in their domain admin dashboard but it does nothing: I cannot turn whois on even if I want to.

Having, or publishing, an email address does not mean I care to, choose to, or will in fact receive email sent by you; or that I will display or treat it in the fashion you desire.

They may not check their email, but how is anyone on social media without email? I'm not aware of a single social site that doesn't require an email address to create an account.
I believe all of them allow the use of a mobile phone number as an alternative.
I don’t question your motives in this instance, but I always pay extra attention when someone’s advice is to hire them or someone like them.

Obviously, “hire a lawyer,” is sometimes right. But if I hired a lawyer every time I was told to, I would be out hundreds of hours of billing fees. Anecdotally, I’ve never fucked anything up royally. That doesn’t mean that I made the right decision, but is something I strive for.

Spending $300-1000 on a consult every time I might need one is like taking an antibiotic every time I might have encountered a bacteria. It’s important to qualify and spend money when I actually need to rather than every time.

It’s like those people who say “don’t criticize my book until you read it” (since that usually means that it makes them some money to have me buy their book). If I had to read every book to figure out if I should like it or not, that’s impossible. I need to develop effective evaluations and filters to prevent me from wasting my time and money.

I have no skin in this game. I just have experience.

The outcome here could be that OP loses their domain name. If they just want to give it up, they don't have to hire an attorney. Easy answer.

But if they do want to keep the domain name, when paid opposing counsel comes knocking at the door, they need to lawyer up, plain and simple.

It isn't that simple. The burden of proof and the cost of filing suit is entirely on the people who own the .net domain. You can't lose a domain based off of a threatening email.

I have received threaten letters before and have responded with "I dispute these claims. Please do not contact me again in any manner" and I never heard from them again.

I don't know enough about the company sending the threatening letter here, so I can't say if that would work or not here, but it is very possible you don't need a lawyer.

> You can't lose a domain based off of a threatening email.

Indeed, but if you take no action at all, the opposing counsel does take action, and you don't contest the action, then the default outcome could be a forced transfer of the domain.

So you agree that he doesn't need a lawyer at this junction. But if a lawsuit is filled, he will need to respond and request that the case be dismissed. Using a lawyer for that step isn't a bad idea.

They are going to have a hard time finding a case that set a precedent that you can take over another company's website because you registered a similar company 5 years later. Lookup nissan.com

This is not legal advice, but I don't recommend waiting until a suit is filed. Hiring counsel early and figuring out how to respond to the initial notice can be important: it might keep the courts out of the dispute altogether (especially if the other side is on very weak grounds) and might increase the settlement amount (if any) should OP choose to settle and transfer the domain.

There's more to this issue than just the naked law and legal procedure. Context matters, and experienced lawyers help you navigate situations. They're called "counsel" for a reason. :-)

But at what cost? 200/hour to navigate a situation that is easily winnable? Also if the other party knows that he has a lawyer they can use that to run up legal fees, making a settlement seem like the cheaper option.
You are assuming "easily winnable" without knowledge of all the facts and the law. The whole reason to hire an attorney is to get an informed opinion about where you stand in the first place.
You are assuming that one cannot access facts and the law without paying a lawyer.
Even if they want to give it up, the agreement will likely have representations and warranties (see part about any known/future claims) which OP should not just sign without an attorney reading it over. The agreement will surely be written in a way that is very favorable to the other party.
> Spending $300-1000 on a consult every time I might need one

Actually I’ve been surprised to find that many times even high priced attorneys are usually willing to spend 20-30 minutes+ giving you some general advice before even retaining them. I’ve gotten very valuable advice this way several times at no cost.

This is my personal experience as well.
They need to due a little due diligence before taking you in as a client, such as assessing if your needs fall within their expertise and whether you will be a potentially profitable client. If you work as hard as you can to summarize your case to respect their time, as opposed to rambling like an incoherent crazy person, you can often get a free pointer on how to handle the case & maybe a referral to someone who is better prepared to assist you.
In my experience, a lawyer will also nudge you towards whichever course involves keeping a lawyer involved. They'll never tell you "if I were in your shoes, I wouldn't keep going".
My experience differs. I once had a legal dispute in which I was asked to sign away some additional rights in order to receive some money that I was owed anyway. My lawyer said, essentially, "you are in the right, but you aren't planning on using those rights anyway, so just sign the paper and get this over with."

There are scrupulous and unscrupulous lawyers, much as in any profession.

> My lawyer said, essentially, "you are in the right, but you aren't planning on using those rights anyway, so just sign the paper and get this over with."

There are situations where this is very good legal advice. Collecting things you are owed from people who don't want to give them up takes time and money (and involves risk), and even when it nominally works the systems intended to make you whole for the additional costs don't always, and especially often don't value time (both delay and the consumption of your personal time) as much as you do.

A lawyer's job isn't just to advise you on what the law says you are entitled to, but more critically to do so on the course of action that will best achieve your interests given the pragmatics of the legal system.

I'm sorry you had such an experience. Ethical lawyers will give you the best advice they can, which often includes "you are going to end up paying me way more than what's at stake here." (This literally just happened to me as a client over a land-sale-deposit dispute.) Or, "This is a turkey of a case and you should roll over. You owe me nothing."
I have gotten that advice from lawyers. I just kept hitting up new lawyers until I found one that saw things my way. Resulted in a windfall for me.
Glad it worked out for you, but it's a bad idea to extrapolate that to broader advice. Maybe you got lucky. Maybe it wasn't luck and you have some kind of gift for assessing case trajectory. But in either case, most people aren't going to be able to predict a case outcome better than experienced attorneys.
two out of three common auto mechanics were caught here giving false estimates and cheating to some extent on common operations.. how many people can discern minor errors with law?
> In my experience, a lawyer will also nudge you towards whichever course involves keeping a lawyer involved.

Both of the times my wife and I have consulted an attorney, they provided an overview of the relevant legal and practical context, a description of options of how to approach it and what they could do as part of that and the fee structure involved, and a description of why hiring them would probably not be cost-effective for the issue at hand.

They will, because they don’t want to pursue legal action where there’s little chance of them getting paid. It’s worth giving you a half-hour of their time for free to figure out if 1) there’s enough money involved, 2) the defendant can pay up in the event of a win or 3) you can pay up if you don’t win. Nothing worse than working 100 hours and not being able to collect because the defendant is “judgment-proof” (aka flat broke).

Have a home issue where the builder owes me $100k in an open-and-shut case… but there are a dozen other people in the same situation, his company has folded and he’s under indictment for fraud in an unrelated case. My lawyer advised me to just move on with my life as any chance of collecting is near-zero.

It is essential to ask around for recommendations -- there are some great lawyers out there. When you need a good one, you may find yourself suddenly-surprised and grateful to be paying their (substantial) hourly rate.
Ive had three legal advice experiences - two with work and one personal. The employer ones were both straightforward about whether or not we should do something, and they did not encourage us to keep returning to them on the issue, and the personal one the guy gave me a 30 minute phone call, advised me that if I wanted to formally pursue the matter I would need to engage his services at £200/hour, however his unofficial legal advice was to just proceed and not bother.

As another anecdote, my experience with developers is that developers will repeatedly tell you that the software isn't complete and requires extra attention to keep it running and to maintain it, and that it needs extra time for refactoring, despite it functioning correctly right now...

> my experience with developers is that developers will repeatedly tell you that the software isn't complete and requires extra attention to keep it running and to maintain it

Is that not true in most cases? A running system will eventually become vulnerable to attacks, and/or services it relies on may be deprecated. The last thing you want is to be in a situation where your software is easily exploitable, but your dependencies are so far behind that a fix becomes a multi-month or year long project.

Yes, and im sure it's equally as true for lawyers too!
Since your comment is categorical, I'd like to chime in with a counterexample. I've gone in for a consult and gotten "you've already pretty much done everything I would. I can charge you $2000 for the rest but you probably wouldn't want to do this seeing that you already have done all of the work."
A bad lawyer will never help you get to the point, because a bad lawyer needs to milk you as they have little to no referral business.

I got a semi-serious traffic ticket in Colorado in 2014, but I lived in California. I forgot about the ticket, and remembered a couple years later. I wanted to clear up the situation, but navigating the court system from a different state was challenging. I decided hiring an attorney local to the area would be easier than traveling to Colorado.

I called maybe 6 to 8 attorneys, and they fell into three categories: too expensive, too inexperienced, or just right.

Too expensive sounded like “we’ll need a $2000 retainer to even look at your case.”

Too inexperienced sounded like “I just graduated from law school, and I’ll give you a super good rate for the experience of working on your case.”

Just right sounded like “I know the district attorney who is overseeing your case. Their name is $NAME, and here’s exactly how I’m going to handle your case… <time passes> …I might be able to handle this for $500, but it could cost maybe double that if it’s more work than expected.”

I got the matter resolved for between 1X and 2X the minimum estimate, and was happy with the results.

99% of the lawyers I've met are scum, and I've met hundreds.

One lawyer I hired to defend me in a contractual pay dispute said to me on the first meeting with both sides "Do not let this get to court. If this goes to court the only people that will win are me and the other lawyer. We'll both get to take an extra vacation this year." So, 1% of lawyers are not scum.

Luckily it didn't need to go to court. I walked into the meeting, let the other side play hardball, "We're not going to pay you any of the money we owe you, go fuck yourself." and then showed them in the contract they had signed where it says they don't own any of the copyright to any of the work I developed for them. They left the room and came back several minutes later with a cheque.

Which one was it and how did you find that person?
I can't remember his name, this was circa 2004 in the UK (so technically a "solicitor" not a lawyer). I found him on a referral from an acquaintance.
I've consulted lawyers perhaps a dozen times in life, and not once have they attempted to make me use them. Most actually help me in the 30 or so minutes free to find a better solution. A few times I had to go all in and hire them: I won a copyright infringement suit, stopping someone from selling knockoffs of things I sell, I needed some to represent me in states half way across the country to get a trust drawn in that state rejiggered, I won a case against a landlord. Each of those times I needed one to screw it up by not hiring a lawyer could have cost me significant money. And in each case, by hiring one when I was in in the right, the lawyers delivered. And only the copyright suit was expensive to pay lawyers for - the rest would amount to a few months rent to obtain significantly more in return.

This is also the experience of a few friends I consult each time I weight "do I need a lawyer". So my experience is 100% the opposite of yours.

How many times have you used a lawyer for something and had your example happen? How many times have they not done what you claim? Care to share examples?

> Anecdotally, I’ve never fucked anything up royally.

You're not necessarily wrong, but that's definitely a survivalship bias. You only need to lose once for a game over, so everyone still playing underestimates the stakes at play, as there is close to no interaction to people that have lost.

https://en.m.wikipedia.org/wiki/Survivorship_bias

I agree. And it balances out the survivorship bias of “I always get a lawyer.”

I’m not sure of a good way to balance out and correct for my bias other than just trying to think critically for when I need and don’t need a lawyer.

Which type of error do you feel more comfortable making?

One type of error is paying a lawyer when you didn't need one, in which case, you're out $X.

The other type of error is not paying a lawyer when you did need one, in which case, you're out $Y.

In my experience, the values here are frequently $Y >>> $X.

In the end, the choice is yours; you rolls your dice and takes your chances.

Usually you have something like insurance for this. In Dutch it is called “rechtsbijstand” for private persons and pretty affordable. These are not necessarily the best lawyers obviously but they are backed by huge law firms. Probably the same exists for businesses but way more expensive.

So it doesn’t need to be expensive to request the support of a lawyer.

"Rechtsbijstand" is dependent on certain conditions. Amongst which a minimum amount of financial damage.

The "juridisch loket" is an organisation that provides free legal advice and is financed by the Dutch government. This is probably a better option in most cases.

This. While I respect lawyers immensely, I think half the battle is deciding when to use a lawyer vs handling it yourself.

With that said, this guy definitely needs to consult with a lawyer.

> Spending $300-1000 on a consult

bruh consults are free, you're getting worked

There are free consults, but then you aren’t their client. Paying for an hours time gets a more detailed consult and makes you a client that gives me more meaningful iformation and also some “work.”
You can add a layer in between: there are countries with a governmental institution[0] where you can go to for basic legal advice. They may point you to an attorney if needed, but for basic things they can give you advice themselves.

[0] Dutch example: "Het Juridisch Loket"

In the US, you can call your local bar association. They’ll generally find an appropriate lawyer, and charge a small amount for the initial consult/matchmaking.
Bullshit.

Knowing your rights, reading the law and discussing it is a perfectly fine thing to do for everybody.

> Knowing your rights, reading the law and discussing it is a perfectly fine thing to do for everybody.

Sure. I am a former law student (in mid career when I did that), worked in legislative office, spent a large part of my career as a government program analyst that did lots of legal/compliance analysis, and spend huge amounts of reading and discussing the law, legal rights, etc.

But when people have an immediate concrete legal problem with substantial property or other interests at stake, whatever other discussion of my understanding of the involved law involved might be interesting, the only correct advice in ~99.997% [0] of circumstances from anyone who is not a lawyer, or even just not the person involved’s lawyer on the matter, is to get someone who is your lawyer (at least for the length of a consultation) review and advise.

[0] there are situations where the practical context is such that the law and legal advice are irrelevant, though they are quite exceptional.

> Every answer in this thread is wrong except for "hire an attorney and work with them to figure out what the best option for you is." Do not follow any "free legal advice" from HN -- and I'm speaking as an actual licensed attorney.

Speaking as a former law student that left because I got back into technology, and who is a fairly educated layman on the law but not someone with any financial interest in how people approach legal services, this.

I don't know what's so special about law that it can never been discussed in any forum. You can certainly ask about other people's previous experience, possible advice or recommendations. For example for certain legal issues there are government websites that can help, etc. Saying "hire an attorney", as if it was no big deal to directly spend thousands without first asking around, is a bit strange.
It also incorrectly assumes the purpose of a forum (this and many others) is to simply find the answer to the person's question.

For as long as people enjoy reading, writing and discussing, the only important thing is that readers can distinguish between "legal advice" and something some random person said on the internet.

The advice sort of extends to any profession doesn’t it? Sometimes you can get good advice from strangers on social media, most times you probably shouldn’t risk anything on it though.

It’s sort of like Google programming isn’t it? I’m sure you’ll get it to work, but you hopefully wouldn’t do it if you were building medical software that could end up killing people. That’s when you pay the experts.

I've litigated dozens of cases on my own. Law isn't that complicated, especially for the smart people on here. You can often do a better job on your own simply because you have waaay more time to spend on the issue than a lawyer would. Plus you have skin in the game which makes you motivated in a way your lawyer will never be.

The flip side to that is that it is illegal in most states to give legal advice to someone unless you are a lawyer. You can give legal information, but not advice.

[Illinois once tried to prosecute me for the crime, so I have some experience]

People tell to hire a lawyer, yet at same time hundreds of programmers copy snippets of code they dont understand, or use libraries unaudited by anyone
Sometimes doing so yields an RCE, dealing substantial damage to both a company and its counterparties.
That says more about the profession of "Programmer" vs "Lawyer" than it does about some imagined hypocrisy.
Do not respond to the letter. Do not engage. Do not alter your website. Do not hire a lawyer. The fastest way to enter into a legal battle is to hire an attorney and start engaging.
Seems like an excellent way to lose your domain in a default judgement
"Strictly speaking, a cease and desist letter is not legally binding because the recipient can choose to ignore it. However, it is a valid legal document that establishes a precedent of a plaintiff's grievance. Usually, the letter sets a time limit for the recipient to comply with the request to desist from the offending action — or deliver an appropriate response if they believe the letter was sent in error."

Take the letter. Delete it. Engaging is the fastest way to lose the domain. Their Lawyers want you to engage and start making written statements. Don't.

"Seems like an excellent way to lose your domain in a default judgement"

Lol. Don't ignore legal paperwork or court dates, which this isn't.

This is not legal advice, but I don't recommend waiting until a suit is filed. Hiring counsel early and figuring out how to respond to the initial notice can be important: it might keep the courts out of the dispute altogether (especially if the other side is on very weak grounds) and might increase the settlement amount (if any) should OP choose to settle and transfer the domain.

There's more to this issue than just the naked law and legal procedure. Context matters, and experienced lawyers help you navigate situations. They're called "counsel" for a reason. :-)

A default judgement requires that a case be filed. In the US, that means they have to serve you notice of the case.

Obviously they have the OP's address, so if they fail to serve him the judgement should be easy enough to set aside.

I'd do absolutely nothing in this circumstance until and unless they actually initiate a legal proceeding. If they did sue for the domain, depending on the value of brand I probably lawyer up, and perhaps seriously consider counter-suing them for both their domain and the use of the business name itself.

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Can't up vote this enough.

1) This is an ex co-worker . I believe she's well versed in such things. I get nothing for this mention.

https://kinneyfirm.com/

2) That said, one of the keys to trademark is being in the same industry, such that the public might get confused.

Apple Computer striking a deal with Apple Records, once the former started to sell music, is a good example. Prior to that, there was no (legal or market) overlap of the two.

One thing I noticed during the Get Back Beatles Documentary recently released, is that Apple Records was a subsidiary of Apple Corps. The Beatles' Apple had much bolder ambitions than I had realized. In the film, they discussed movies and performances under the Apple umbrella.

John Lennon himself described it as: "we've got this thing called 'Apple' which is going to be records, films, and electronics – which all tie up."

> 2) That said, one of the keys to trademark is being in the same industry, such that the public might get confused.

Note that this is generally true for trademark law, but there are things like the ICANN/WIPO UDRP that can be used to expropriate domain names that have somewhat of a different standard.

Person who charges $600/hour: "your only correct action is to hire a person who charges $600/hour."

Sorry for the snarkiness, but I'm continuously gobsmacked by how oblivious people, especially attorneys, can be to the fact that the Game of Justice as it is played in these parts is simply not accessible to the vast majority of people, who can only try to find another way to work around the system even if it's probably doomed to failure.

Agree, just got a TM, and the journey was full of grey areas and few to zero xor solutions. For all the lawyer haters, the game is already rigged, so don't hate the player.
Of course an attorney would tell you to hire an attorney.
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You act like getting informed on the law is somehow contrary to hiring a lawyer, which is especially bizarre, since most of the advice was phrased as "in my experience X is likely to happen, but you should consult with a lawyer".

Is it wrong to try to be informed of the law (when ignorance is rarely an excuse)? To find out what rights a trademark or a domain name confer? Or to list precedent and examples, such as nissan.com? We should just stick our heads in the sand, resign ourselves to total ignorance and helplessness, and let the lawyers do all the thinking?

Lets make this specific. Look at this comment: https://news.ycombinator.com/item?id=29522196

Are you saying every part of that comment, except for "This is probably not DIY territory; consult a lawyer knowledgable about trademark law to help you determine how to respond." is wrong?

For example, is the following statement wrong in the U.S.?

> Just like patents have a concept of "prior art," trademarks have a concept of "first use in commerce."

Check this out:

https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-900d1...

Just like patents have a concept of "prior art," trademarks have a concept of "first use in commerce."

If you can demonstrate that you were the first to use the trademark, you have less to worry about (but nothing's guaranteed until litigated).

HOWEVER, if the party that registered the trademark can demonstrate that they used it prior to you, regardless of when they registered it, then they may have the upper hand.

This is probably not DIY territory; consult a lawyer knowledgable about trademark law to help you determine how to respond.

They may, in fact, recommend that you countersue for infringement. Might not be worth your time to pursue, but at least in theory you could claim that they're infringing on your trademark, because the U.S. follows a "first to use" rather than a "first to file" trademark system.

I'd love to know what that means in plain English especially since the trademark has already been granted.
Acquiring a trademark just sets a floor for when you acquired the trademark, it doesn't mean someone else hasn't already acquired it - that is a question that courts have to settle.
> it doesn't mean someone else hasn't already acquired it

It goes further than that: trademarks are registered in 45 different classes and trademarks of different classes are completely independent, but the USPTO goes by

> "Trademark, same name, same class”

meaning more than one entity can register the same trademark name in the same class, because trademarks have a requirement of distinctiveness.

I’d talk to a lawyer about drafting a counter letter saying you were unaware of them using your brand and that they need to do all those things back to you since you have been using the name longer. Also petition the trademark office to invalidate their claim due to your prior use.
I thought that was the point of trademarks, being able to control their use. Please post your experiences after you've had legal advice since I'd have assumed you wouldn't have a leg to stand on.
This has happened to me several times, I have never taken it seriously or put much effort into responding.

I usually would go straight to the throat and very personal.

Publish their letter on the domain they seek, capture all lawyer and company details and publish to site.

Use opsec for phone numbers, call them at terrible hours ( at home) to discuss offers of payment.

They are trying to bleed you with superior resources so guerrilla tactics are best ( legal of course)

They act different when they realize they are exposed and you don't care about normal processes.

Lol, I should make my own David v Goliath service.

Depends on the size of Goliath. No one scary came for me and a few 2am calls led to crickets.

Sounds absolutely ruthless and I quite like it. Don't think I'm bold enough to do it myself but I'm always surprised how much being persistent gets you when you're talking to companies.
If one was short of time, one could always put out a tender so that several (hundred) different independent agents could speculatively contact them in order to conduct negotiations, then present you with offers that you could compare. If those agents were in turn having trouble establishing contact, they could farm out this effort to others who had more time and expertise in this area.
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> Use opsec for phone numbers, call them at terrible hours ( at home) to discuss offers of payment.

IANAL, but if your goal is to give the them additional grounds for suing you, you may be off to a good start.

I think the idea is that it's plausibly someone else calling, since you made the documents containing contact info public (which is legal I hope?).
This. If it is legal, you should at least consider escalating as far as you are comfortable. You are now at war, whether you like it or not. Never back down, never surrender.
This is the type of comment I come to HN for. I try to explain to my partner there is always alternative ways to handle matters, and going with "the process" has inevitable outcomes. Probably good they work at a bank and I well... Don't

Can you further elaborate on your story I am very curious?

This is what worked for me a few times. It is painful for a bit but better than spending money on a lawyer. I would also suggest to try and find a lawyer in your network willing to help at below their retail price. Despite the bad rep, lawyers are humans and are very eager to help good people
> call them at terrible hours ( at home)

This is a really nasty idea. You’ll be bothering their family who have nothing to do with it. Sounds like you’re advocating harassment of people’s families.

Everyone is a family, except ENTITIES who are not humans.

Wrote a poem and song to explain:

---

WRONG is Tyranny.

TYRANNY is WRONG, inherently so, DISASTER is WHEN, all SPARKs vibrate LOW!

---

Tempest, Monster, part of the ONE.

cancer's role as DOVE, painful extraordinary, deserves LOVE, not respect or authority.

---

Vortex Universe

Sometimes we VIBRATE down, to ASCEND up again.

They're already harassing you under the guise of a legal process. A clock punching attorney won't be emotionally invested in the details of a matter, but the victims of such nastygrams are - the main goal of such letters is to make you stressed and worried so you just cave - hence the corollary of hiring a professional who will handle it impersonally

Two wrongs don't make a right, and it certainly may be imprudent to escalate. But there's no moral ground for them to stand on here - they're in the same category as any other spammer. Furthermore nowhere did OP advocate deliberately expanding the scope to their family. If phone calls at inconvenient-to-them times end up bothering their family as well, it's because they didn't do the work to separate their family from their ugly business.

In general I don't buy into the idea of declaring some times as off limits for phone calls, since society has never given me the same courtesy in the early morning. I'd much rather get calls at 10PM than 10AM, and yet it's somehow acceptable for businesses to return an afternoon call at 9AM sharp and pretend they're doing their best to communicate.

A lot of words to justify that you know you’ll likely be impacting someone who did nothing against you.
I'm sure many more words have been written by legal nastygrammers justifying their own actions of unsolicited aggression.
Shouldn't we aim to have better moral standards than them when dealing with third parties?

I'm just absolutely dumfounded that someone is seriously suggesting harassing a wife and children over a business relationship and repeatedly trying to justify it.

In general? Sure. When dealing with hostile unwanted contact? Not particularly.

Nobody here has advocated harassing someone's wife or children. That's a straw man you created.

> If phone calls at inconvenient-to-them times end up bothering their family as well, it's because they didn't do the work to separate their family from their ugly business.

Real ‘nice family you have there, shame if someone would scare them with a few calls at 2am’ vibe there, and you know it.

It's more like don't harass people and then expect having a family will shield you from the repercussions.

These nastygram shakedowns deliberately cause personal stress to their victims (there is little other reason to send baseless legal demands), and so escalating the situation to be personally stressful for the attackers seems like an appropriate response.

As far as I can tell you're arguing that it's one thing to harass people during "business hours", but there is some greater principle whereby harassing them back at off hours is wrong because it might bother their personal associates.

If you don't want to get phone calls at inconvenient times either don't be a shithead in the first place (so that people calling you respect your schedule), or figure out how to silence your phones.

> escalating the situation to be personally stressful for the attackers seems like an appropriate response

I'd morally disagree with that. Shouldn't deliberately cause someone personal stress, no matter what they've done to you.

> I'd morally disagree with that. Shouldn't deliberately cause someone personal stress, no matter what they've done to you

So if someone robs you, then you shouldn't call the police on them? That's a direct implication of your statement here.

This whole "conversation" has been you quibbling using half-baked one-liners while avoiding any substance. I'm done.

> So if someone robs you, then you shouldn't call the police on them? That's a direct implication of your statement here.

No the opposite. You should call the police on them and let them deal with it. You shouldn't attempt to put any pressure on them yourself.

> avoiding any substance

Don't harass people. Use proper procedure to resolve disputes instead of calling them at their home.

> Use proper procedure to resolve disputes

That's really the depth of your thinking here? Sheesh, why did I bother?

Here's a practical reason if moral reasons don't work for you.

If calling them at 2 am for some reason doesn't get the business result you want, and you have to go to court, the court'll ask you what reasonable steps you've already tried to resolve amicably, and the judge will think you're in the wrong when your opponent brings out a log of your 2 am calls to their residential address. Suddenly it'll look like they were just doing legitimate business and you were threatening and harassing.

Even if you aren't a moral person, it pays to do things properly.

From my very first comment:

> Two wrongs don't make a right, and it certainly may be imprudent to escalate

The root of the hacker mindset is looking at alternative solutions that go against the common narrative. It sounds like this method worked out for OP, so it is worth considering. I don't think I personally would go down this path due to possible complications, its utter pettiness, and the fact it is very easy to silence phones at off hours. But depending on the situation, maybe it would make sense.

I am a very moral person, hence having thought these things through. You're the one taking the shortcut of assuming anything done through "proper procedure" is moral. In my book, calling the cops on someone is most certainly escalating the situation and causing them personal stress. Deferring to the system is not an absolution from moral reasoning.

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Genuinely curious, isn’t there merit (I guess in terms of law?) for OP to do the same to the .net company?
Can you share who they are? Not naming them only helps in letting them hide their crime in darkness.
I had a 4 letter domain name. A stock photo company trademarked the name and then threatened to sue to force transfer. However, I registered the domain before they registered the trademark. I looked up the ICANN rules and saw I had priority. Pointed out the ICANN rule and told to go away. They did.

IANAL; this is not legal advice.

Also IANAL but these demands make even less sense due to trademarks being categorised in classes, that you own Douche® registered in rubber products doesn't mean someone else can't have Douche® furnitures, and both have a reasonable and compatible claim to the name (for instance there are at least 5 different companies or organisations called "Apple" with presence in the US).

Furthermore, the USPTO allows multiple trademarks with the same name in the same class, because trademarks must be distinctive and unless the name is completely made up and demonstrably novel (e.g. Blu-Ray, Kodak) it's not distinctive and does not inherently constitute a trademark (though generic trademarks can acquire distinctiveness through use e.g. "apple" would probably be considered distinctive).

Right. OP could register the trademark for his domain in another class right now and then see what happens...
> for instance there are at least 5 different companies or organisations called "Apple" with presence in the US

An interesting trivia is that Apple Computer got in trouble with Apple, the record label, when they introduced the Apple IIgs, because it had a musical instrument synthesiser chip built in.

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But the further detail on that is the reason for this is that Apple Records and Apple Computer had previously signed a settlement agreement where Apple Records promised not to get into the computer business and Apple Computer promised not to get into the music business.

Obviously, subsequent court cases and agreements allowed Apple Computer to get into music. Lots of details on Wikipedia: https://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer

> Douche® furnitures

Somehow that does have the cadence and sound of a ‘premium’ brand, or at least faux-premium. The ‘registered’ symbol really sells it, though.

In these post-ironic times, I can easily see this name being used.

General remarks for these types of posts:

- People often mention 0 countries. Where do you operate? Where was your company founded? How about the other company? Etc. How do you know if that helpful comment doens't assume something totally different?

- Are you really going to feel confident about your legal situation after reading comments on a platform like Hacker News?

I agree about the country point.However i am curious whether having the [Company Name] registered properly [Ltd, Co., s.r.o, s.r.l, etc] is an actual argument for having the "right" to a domain name.Common sense tells me it's not,in the same country or between countries, unless obviously the person who has the company name impersonates that company.

Why would one need to legally own that domain name as a company name to keep the domain? Makes no sense to me

When someone didn't feel the need to mention which country they are talking about, that's usually because they're American.
Your jump to conclusions mat is too bouncy. Americans do not call lawyers solicitors.
This is a website hosted in America by an American investment company with a primarily American user base. Not hard to understand why. Either way the OP appears to be Australian, so please hold off judgement next time.
It's mentioned in their comment history that they're Australian.
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What if I'm not an US citizen and a company from US (threaten to) sues me over a .com domain registered through an non-US registrar? Should I hire an US lawyer? Where does the trial take place: in US or in my country?

Let's say I get an email like the one OP got but I don't understand english and I take no action... Will the non-US registrar give them my domain by default?

You were 1st, you are all good

UDPR is your friend

UDPR is definitely your friend. Your domain info should have been private anyways, too late now. One question is what content do you have on the domain today and does it relate/similar to the .net domain? If your .com is being used for something beyond a parking page, the .net don't really have a chance so let them file a UDPR.