Cease & Desist from Match.Com

[RJ]

I guess I should check my email box more often. I had a present waiting for me today. :D

Someone should tell lawyers to not make their letters look like a spam virus. The subject line was "Important Correspondence" and the body said "Please read the attached correspondence. " with a dodgy looking Word Document attached.

I almost deleted it. I would have if I didn't have decent virus protection.

Here's the letter.

-------------------------------------------------
ATTORNEYS AT LAW

<attorney contact info>

June 26, 2003

VIA CERTIFIED MAIL and ELECTRONIC MAIL
[email protected]

Honest Internet
640 Bailey Road
PMB 219
Pittsburg, California 94565

DATING-MATCH.COM

Dear Sir or Madam:

We are trademark litigation counsel for Match.com, L.P. ("Match.com") which provides on-line dating and introduction services under its famous and distinctive service mark MATCH.COM. Match.com has registered this famous mark in the United States Patent and Trademark Office for on-line dating and introduction services (see Exhibit A). Match.com provides its services through its Internet web site located at www.match.com.

We have learned that you have registered the domain name dating-match.com, which incorporates and simulates our client=s service mark and company name. Your registration of this infringing domain name falsely suggests an affiliation with our client or its business, and is likely to deceive the public. Accordingly, your registration violates federal and state law, including the Anticybersquatting Consumer Protection Act, which provides for causes of action in federal district court for injunctive relief, monetary damages, and attorneys= fees.

Accordingly, we demand that you immediately:

1) Execute, have notarized, and deliver to us a transfer agreement, in suitable form, transferring the infringing domain name to Match.com, along with any other similar names that you have registered;

2) Cease and desist from any use of the infringing domain name and any other imitations or simulations of our client=s name, trademarks, or service marks; and

3) Countersign and return to us a copy of this letter, confirming that you agree fully to comply, and are promptly complying, with the above demands.

If you wish to resolve this matter amicably, we must receive your countersigned copy of this letter within fourteen days of the date of this letter. If you use, sell, or offer to sell the infringing domain name after your receipt of this notice, we will regard your actions as deliberate and willful violations of the law discussed above. Until and unless we notify you in writing that this matter has been resolved, our client reserves the right to take legal action against you without further notice.

Sincerely,

<attorney>

Enclosure

AGREED TO BY:

Name: _______________________________

Signature: ____________________________

Date: ________________________________

 

[Kodeking]

so what are you gonna do? Do you have to GIVE them the domain? I don't see how the word match can have a copyright on it. Just seems to vauge (sp?)

 

[Jeff]

Link: http://www.johnberryhill.com

Good Luck, RJ. :o

 

[RajanUrs]

does the two websites resemble in design/logo/color/layout to mislead ?

i dont think they can make a claim for such generic names like dating and match

 

[247newsnet]

interesting, there's a frivolous lawsuit provision you can threaten with

while they own match.com, they seem to be reaching for control of any match making service on-line, Trademarks do not attempt to limit competition

so they would argue they have TM rights to any match name used in match making and or dating

you have an old granny around the house?

if so, explain she's a famous matchmaker

anyway, they could probably get the name easily for 1500 bucks at a TM filing case at icann

they own the name match.com so icann can easily say your registration is in bad faith

if the use is say a forum or a chat, then you have a valid freedom of speech issue

you can run a free speech chat and forum about dating and tell them to pound sand

now, if they sue in the US court, which they shouldn't since icann is way cheaper, then you can counter sue under frivolous law suit

the internet and stuff like this is still very new, so who knows which way it will go, it's not clear cut either way

dating and match making are old fields, so they can't say they own the whole internet for dating and match making

they might try, but there letter is BS

it's the first fire

here's an attempt at ebay to keep a new book off the bricks

http://www.bewareofebayscams.com

look at the letter from ebay saying they think that name (which is for a book) is a TM issue

it's very funny

the lawyer's return letter is on the site, it mentions how they will counter sue for a frivolous lawsuit

so that is something that makes other attorney's think about harassing you

if match.com is making money they might pursue it

if not, they'll stop bothering you when you stand your ground

it might be good though to have a way to explain you or your family have been doing match making for a while

 

[nascar1]

Have fun.

I have been through it a few times. Wired.com owned Planetalumni.com and got all bent over me regging, and using planet-alumni.com for my aff link. Made over $10K through the CJ program before the C&D showed up. I just told them I would give it to them and they sent me a token $$ for it. Funny thing is, they went belly up b4 I got it transferred so I let it drop. Did the same thing with grad-finder.com. Those were the days when traffic = $$$$$.

They will have to pay $1500 to file a domain dispute. I am at that point now over our tradmark and the steenking squatter don't have to pay squat so dragging your feet doesn't seem to hurt.

Wonder if they will go after datematch.com. That sites up and running.

 

[247newsnet]

well the argument in a US court would be unfair over reach of tm

since they're trying to say no one on-line can say match with dating in it

icann isn't run by US courts, so they usually just want to see proof of a TM

then they want to see if the person is misusing it, trying to confuse and or trying to resell it

when someone just operates a simple web site, they usually don't say TM enforced

they have to have something more than TM claim, they have to show bad faith

I once read about 200 or so icaan cases for an article I did way back

you never know how they will order the case disposed of

many of the lawyers get slapped around if they don't put forth exactly what icaan wants

proof of previous use or TM
proof of bad faith

so many times the TM owner loses

 

[wicked_gal00]

Off topic, but I think the word "Anticybersquatting" is hilarious! :lol:

 

[RJ]

I tend to agree with 247 on that their trademark claim is weak. Domain names don't lend them selves will as trademarks. Here's the info straight from the US Trademark Office:

http://www.uspto.gov/web/offices/tac/notices/guide299.htm

I could care less about this particular domain. I'll defend it and win if they want UDRP, but that's up to them.

Here's my reply, already sent to the attorney.

From: Honest Internet <[email protected]>

Subject: Re: Important Correspondence
Date: Fri, 11 Jul 2003 15:27:17 -0700
To: <attorney>

RE: dating-match.com

Hi <attorney>,

My apologies for the delay, I dot not frequently check this e-mail
address.

First, I cannot sign your document because I do not agree with your claims that "dating-match" infringes on your client's trademark, or that the domain name falsely suggests an affiliation with "match.com".

It's overreaching claims like this that will inevitably lead to the
invalidation of your client's trademark.

However, I have not yet used the domain name and no longer have plans to develop on this myself. Your client has not yet nor will they ever suffer any injury from my ownership of dating-match.com.

If you are interested in obtaining the domain name for whatever
reason, I will transfer the name over for the sum of $25 to cover my
costs.

Sincerely,
Ron James

 

[RJ]

Originally posted by CoolHost.com
Link: http://www.johnberryhill.com

Thanks CH. I have a good lawyer already, though I would like to try out John's services in the future. He's the best from what I hear too.

Originally posted by RajanUrs
does the two websites resemble in design/logo/color/layout to mislead ?

I just own the domain, but have never used it.

Originally posted by 247newsnet

look at the letter from ebay saying they think that name (which is for a book) is a TM issue

it's very funny

the lawyer's return letter is on the site, it mentions how they will counter sue for a frivolous lawsuit

Cool story and great example of not rolling over for a lawyer's weak C&D. Hard to believe eBay would go after that one. :D

 

[djthekid]

Well Handled RJ

 

[webmasterinfo]

wow, intresting to see whats going to happen

good luck with this case!

 

[upbeat]

This is a clear example of an attempt of Reverse Domain Hijacking. I had the same thing happen over a descriptive/generic name that a worldwide company wanted me to hand over. I hired a lawyer and we disputed with letters for months, then the worldwide company finally gave up. It cost me a few bucks. Next time I'll just drag my feet and fight the fight myself, 'cause I agree that companies over-reach and use their name/size/legal dept to intimidate the little guy to hand over the goods they want.

 

[Lord]

this will be interesting to see what the lawyer sends back

 

[kohashi]

I wish business could be more blunt sometimes. And you could just tell them to perform an inappropriate act on themselves. But I guess that might get you in trouble.

 

[MonsterBucket]

I had to study up on trademarks a while back. The way I see it is this.....

Their claim is BS all the way. MATCH can mean dating or match(book) or shoes. They have no grip there. Now Coca-Cola going after CocaCola.com is legitimate but not in the match area of the world. They may have a TM on Match.com but not on amatch.com through zzzzzmatch.com. Good luck in the whole ordeal. Let us know.

 

[JMJ]

I don't think they have a chance in hell. Ask them if they sent MatchMaker.com the same letter or are they too scared to take on Lycos?

 

[dpk87]

You have all the rights to that domain but its a hassle to fight.

 

[lotsofissues]

Update?

 

[RJ]

Got the response yesterday.

To: <[email protected]>
Subject: Re: Important Correspondence

Dear Ron,

Thank you for your response. We accept your offer to purchase the domain name dating-match.com for $25.00. I will be in touch with you shortly regarding the domain name transfer details. I assume a check or wire transfer is acceptable.

Regards,

<attorney>

Guess that "settles it".

 

[drifta]

Nice

 

[dotNAMES]

A pure example of Reverse domain hijacking.
I am just scared about the method used here.
And about the results
it can have on non-informed peoples.
The laws actually only desserve the rich

 

[painperdu]

I understand that RJ did not have a site connected to the name? One of the major 'tests' of bad faith under the UDRP is that there must be a site operating under the name. I think with this fact alone they would not have a case.

Also, and this follows from the above, what could lead 'match.com' to believe that 'dating-match.com' even means the same thing? It could be used for a 'personals' site but not necessarily so. For example, I can see where 'dating-match.com' could be used as a sort of calendar site for arranging appointments or perhaps car-pooling or many other things.

 

[NameCaster]

They wouldn't stand a chance in hell IMO.
Looks like they got a domain for $25 too me

Cheers!

 

[RJ]

Originally posted by NameCaster
They wouldn't stand a chance in hell IMO.
Looks like they got a domain for $25 too me

I did kinda hose myself on this one, didn't I?

:red: