Someone is threatening me because of (SM) domain name trademark :?

[TheLizardMan]

here is the beef of the email some guy sent me... my address and phone crossed out.

Dear Alex:

Alex Lorenzen
LANsomniac
xxxxxxxxxxxx
Torrance, California xxxxx
(310) xxx-xxxx


It has come to my attention that your business has recently used the term "LANsomniac" (which is a variation of "LANsomnia") to promote a video game event, website, group or association.

Please be aware that web2zone, Inc., a wholly-owned division of Samsung America, Inc., owns the Service Mark ("sm") for the term "LANsomnia" and similar variations, and has exclusive rights to its use.

Any use of the term "LANsomnia" or similar variations without the direct consent of web2zone, Inc. is unlawful, and may result in fines and legal action.

PLEASE REFRAIN FROM USING THE TERM "LANsomniac" IN ANY AND ALL COMMUNICATIONS RELATED TO YOUR BUSINESS OR ORGANIZATION.

Attached is our certificate from the United States Patent and Trademark Office for your reference.


Please do not hesitate to contact me if you have any questions.

Thank you for your cooperation,

Ed


P.S. If you are a game center, website or forum . . . please immediately remove any links, references, signage, promotional materials and/or other items associated with LANsomniac. Failure to do so may result in fines and legal action.

#1 I see sites all the time in positions like this. For someone might buy www.britneyspers.com or www.neweggg.com

since the spelling is off they are free to use that site. That is unless for example start to post nude pictures of britney spears without her permission.

#2 insomnia and insomniac is where somnia and somniac are derived from.

insomnia is a condition and insomniac is the person with the condition. Two different meanings.

There's a few other examples that some buddies have given me, but i cant recall them right now.

So.... does this guy have a case or not? My feeling is that he is just trying to get me scared, and if that's what he's doing... it's not going to work.

So how far do you think this guy could drag it and does he have ground?

He holds professional tournaments in New York, and my site i just a hand full of buddies (16 max) that game, and we are a no profit group, kind of like a club. We are not at all a business, just a LAN party.

Thanks

 

[Mill]

I would personally tell him to go to hell.

 

[IEatChildren]

You don't need to to anything until you get a registered letter signed by a notary or attorney.

Edit: and upon reading more, you're not forced to do anything being that you're in no way profiting from the so-called use of their SM.

 

[Jzero]

His case is very weak.

From the UDRP:

a. Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

He's got you pinned on section i. LANSomniac is VERY similar to LANSomnia
It's clear that you have a legitimate interest in the domain name - to advertise your event.
And you obviously registered and are using the name in good faith.

Note this only applies to your domain name. They still might take you to a real court.

 

[TheLizardMan]

Originally posted by: Jzero
His case is very weak.

From the UDRP:

a. Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

He's got you pinned on section i. LANSomniac is VERY similar to LANSomnia
It's clear that you have a legitimate interest in the domain name - to advertise your event.
And you obviously registered and are using the name in good faith.

Note this only applies to your domain name. They still might take you to a real court.

That is possibly true, but it ends up saying "In the administrative proceeding, the complainant must prove that each of these three elements are present." which he would then need to prove all three of these areas

Yeah he can still be a dick and take me to court. If so... what ever. It's his waist of time.

 

[Wuffsunie]

Tell him you want the number of his attorney so you can verify the alligations, then ask for the registered letter signed by a notary or the attorney, along with copies of his trademark certificates and other legal documents. Claim that you've either experienced or know people who've experienced scams of a similar nature and you want to make sure it's all nice and legal. So far it's a scare tactic, he wants to see if you'll cave easily before he has to actually start spending money. I say if he wants you to stop using that domain name, you can make him start paying for that privledge.

Not sure how far it'd go or how long it'd take. Likely quite a while.
I know that http://www.anonymousrex.com/ the site originally owned by Eric Garcia, author of the book Anonymous Rex, had its domain licence lapse and was taken over by a porn company. It looks like he got it back, though. Or someone affiliated with the book did.
And we're all familiar with http://www.whitehouse.com/ Nothing like the name of a US capitol building used for a porn site.

Up to you how far to take it.

 

[phonemonkey]

Originally posted by: Millennium
I would personally tell him to go to hell.

Looking into it a bit more, you may find yourself fighting a tough battle if he tries to force you to hand over the domain. For starters, his domain was registered several months before yours was, so he could try to argue that you were infringing on their domain name.

While it's true that you find misspelled versions of domain names out there, most of them are eventually taken to either mediation or court to get the names turned over to the proper owners.

Still, the processes that are used to determine if a domain is infringing on another is spotty at best. If you've got the resources, you might be able to fight it and win.

 

[Thoreau]

www.lansomnia.com is currently Under Construction. Please check back soon.

Oh yeah, that's one hell of a business the other guy has. Last I checked Sansung wasn't exactly a big name in LAN events either.

Edit: looking into it further this crackpot simply uses the name for event names, not for the name of the organization.

Link <-- does not mention lansomnia in the trademark notice section either.

Edit2: Link: "Funded by Samsung® America, Inc. in 2001" Sounds like BS to me. I would either demand official notice as well as documentation, or just ignore the twit. He's probably just pissed about his google rankings.

 

[Nitemare]

Originally posted by: Thoreau
www.lansomnia.com is currently Under Construction. Please check back soon.

Oh yeah, that's one hell of a business the other guy has. Last I checked Sansung wasn't exactly a big name in LAN events either.

Edit: looking into it further this crackpot simply uses the name for event names, not for the name of the organization.

Link <-- does not mention lansomnia in the trademark notice section either.

Edit2: Link: "Funded by Samsung® America, Inc. in 2001" Sounds like BS to me. I would either demand official notice as well as documentation, or just ignore the twit. He's probably just pissed about his google rankings.

A domain name squatter who gets upset because someone opens a name similar to theirs...priceless

 

[J0hnny]

I went to school by Web2zone in NYC. I rarely see people go inside. They're probably banking only on large tournaments as a viable source of income. I doubt they will be able to sustain their company for another 2 years.

 

[Jzero]

That is possibly true, but it ends up saying "In the administrative proceeding, the complainant must prove that each of these three elements are present." which he would then need to prove all three of these areas

Yeah he can still be a dick and take me to court. If so... what ever. It's his waist of time.

Unfortunately, the UDRP board isn't always very fair and has handed over domains even with only 1 proven point.
However, after seeing Thoreau point out their website isn't even in use, if they bugged you, they would probably get called on reverse domain name hjiacking.

I say let'em eat cake.

 

[edro]

Hahaha... Samsung Inc... WTF ever...

He can't do anything. You are using it for legitimate purposes... Now if you are using their logo and page layout (changed a little), they could do something.

Email him back saying that you will do nothing of the sort!

Then post his response on here!

 

[J0hnny]

Yeh, email them back and post response here!

I didn't see anyone link so:

Lansomniac
Lansomnia - Under Construction - LOL!
web2zone

 

[aircooled]

just wait it out. if it's serious you will get a letter from an attorney.

edit: and I would not respond in any way shape or form untill you do get a letter from an attorney.

 

[Jzero]

Originally posted by: aircooled
just wait it out. if it's serious you will get a letter from an attorney.

edit: and I would not respond in any way shape or form untill you do get a letter from an attorney.

Yes definitely do not respond to his e-mail. Only respond if you get an actual paper letter from an actual lawyer.

 

Unless it's a lawyer who's sicked on you, it's just a scare tactic.

 

[XZeroII]

Originally posted by: Wuffsunie
Tell him you want the number of his attorney so you can verify the alligations, then ask for the registered letter signed by a notary or the attorney, along with copies of his trademark certificates and other legal documents. Claim that you've either experienced or know people who've experienced scams of a similar nature and you want to make sure it's all nice and legal. So far it's a scare tactic, he wants to see if you'll cave easily before he has to actually start spending money. I say if he wants you to stop using that domain name, you can make him start paying for that privledge.

I agree. I wouldn't just ignore this and hope it goes away. I would at least show them that you understand what they are saying. If they refuse, then you can safely ignore them. If they later try to sue, you can at least show them a copy of the email you sent showing that you tried to comply but they wouldn't cooporate. If you really want to keep using the name, just talk to a lawyer. I doubt it would cost much to ask a couple questions.