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Sample Cease & Desist Letter to Send to a Domain Name Owner Whose Domain Name is Infringing on a Trademark
by Charles Runyan, Ph.D., J.D. Domain Name Law Attorney
The following letter is an example of a cease and desist letter that a trademark or service abbreviation of mark owner might send to a person or entity that owns a domain name that infringes on the mark owner's mark. The letter should be modified as necessary in light of the sender's particular facts and circumstances. KEYTLaw recommends that you always consult with a trademark, domain name law or other qualified attorney before sending a cease and desist letter.
A very real risk in sending demand letters to domain name owners is that you may find your correspondence posted and discussed on the domain name owner's web site, chat rooms, newsgroups and other places on the internet. Before sending a cease and desist letter or any other demand letter to anybody, read Cease & Desist By Bret A. Fausett. This article illustrates how the sending of a demand letter can backfire and hurt the reputation of the sender.
Sample Cease & Desist Letter
RETURN RECEIPT REQUESTED
<name of registrant of domain name>
Attn: <name of administrative contact>
<address of registrant>
<name of registrant of domain name>
c/o <name of registrant's statutory agent>
<address of statutory agent>
Re: <name of mark owner>, v. <name of registrant>
To Whom It May Concern:
<name of mark owner> (“<abbreviation of mark owner>”) is the owner of United States Federal Trademark Registration(s) No. <insert USPTO registration number of all applicable marks> and *numerous other trademark registrations pertaining to the mark. <abbreviation of mark owner> uses this mark in the United States in conjunction with <add description of how the mark is used in connection with goods and/or services>. <abbreviation of mark owner>'s federal registration has been in full effect for over <insert number of years since mark was registered> years. A copy of the federal trademark registration data is attached for your reference as Exhibit A. <abbreviation of mark owner> owns the domain name <insert the domain name of mark owner that is the subject of the infringement>, which is an operating commercial website.
<abbreviation of mark owner> recently discovered that <insert name of registrant/cybersquatter> (“<abbreviation of cybersquatter>”) has registered and is using www.<insert infringing domain names> (collectively the “Domain Name”) as a World Wide Web domain name in violation of the Anticybersquatting Consumer Protection Act of 1999, which is embodied in the Lanham Act. You can find the ACPA at http://www4.law.cornell.edu/uscode/15/1129.html. Furthermore, <abbreviation of cybersquatter> is intentionally trading on the goodwill of <abbreviation of mark owner> by using a trademark that is confusingly similar to <insert applicable trademark(s)>.
It is clear that <abbreviation of cybersquatter>’s use of the Domain Name is intended to (and actually does) confuse and misdirect customers seeking <abbreviation of mark owner>'s website to <abbreviation of cybersquatter>’s website, while ensuring that <abbreviation of cybersquatter>’s customers are not confused. This activity is actionable under federal law and causes <abbreviation of cybersquatter> to be liable to <abbreviation of mark owner> in every state in which <abbreviation of cybersquatter> has made sales. <abbreviation of cybersquatter>’s activities are unlawful and constitute unfair competition, intentional trademark infringement, trademark dilution, false designation of origin and cybersquatting.
The Lanham Act provides numerous remedies for trademark infringement and dilution, including, but not limited to, preliminary and permanent injunctive relief, money damages, a defendant’s profits, provisions for the destruction or confiscation of infringing products and promotional materials, and where intentional infringement is shown (as would be the case here), attorneys’ fees and possible treble money damages.
<abbreviation of mark owner> has several options to enforce its legal rights. It can submit the matter to the Internet Corporation for Assigned Names and Numbers to be resolved under its Uniform Domain Name Dispute Resolution Policy (the “Policy”) and seek a ruling that the Domain Name be transferred to <abbreviation of mark owner>. The Policy can be found at http://www.icann.org/udrp/udrp-policy-24oct99.htm.
Second, <abbreviation of mark owner> can file a lawsuit against <abbreviation of cybersquatter> seeking: (i) preliminary and permanent injunctions, (ii) money damages, (iii) compensation equal to <abbreviation of cybersquatter>’s profits, (iv) reimbursement for <abbreviation of mark owner>’s attorney's fees (because of <abbreviation of cybersquatter>’s blatant and intentional acts), and (v) a court order that <abbreviation of cybersquatter> transfer the Domain Name to <abbreviation of mark owner> and that <abbreviation of cybersquatter> compensate <abbreviation of mark owner> for damage to <abbreviation of mark owner>’s goodwill.
<abbreviation of mark owner> prefers to resolve this matter without taking legal action, but it is prepared to file a lawsuit if necessary to protect its rights and business. <abbreviation of cybersquatter> may avoid legal action by having an authorized representative of <abbreviation of cybersquatter> sign this letter where indicated below and return the signed letter to me on or before <insert deadline for response>, 2001.
This letter is sent without prejudice to <abbreviation of mark owner>'s rights and claims, all of which are expressly reserved. I am sending you a copy of this letter by regular first class mail in case you refuse to accept the certified mail, return receipt requested version of this letter.
<insert signature block for mark owner & signer>
cc: <insert name of your lawyer>, Attorney
The undersigned covenants to take the following actions immediately: (i) transfer any and all rights of the undersigned in and to the following domain names to <name of mark owner>: <insert all domain names to be transferred> (collectively the "Domain Name"); and (ii) cease and desist from any and all use of the Domain Name.
Dated: __________________, 2001.
<insert name of registrant/cybersquatter>
---------------End of Letter--------------
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This article was first published on August 25, 2001.
About Charles Runyan
Chuck Runyan, Ph.D., J.D., has been practicing intellectual property law since 1997. Chuck advises trademark holders about domain names that infringe on a trademark and if the trademark holder has a claim to a domain name under ICANN's Uniform Dispute Resolution Policy and the Anticybersquatting Consumer Protection Act. He has a Ph.D. in chemistry and has been a patent attorney since 1998 whose practice includes patent preparation, prosecution, portfolio management, and opinion work. Chuck represents individuals and businesses, start-ups through large, multi-national pharmaceutical companies, in their pursuit and enforcement of patent rights throughout the United States and worldwide. Charles Runyan is licensed to practice law in Arizona, California and Texas. Call Chuck at 480-205-9365, email at firstname.lastname@example.org and fax at 602-297-6890. Communicating with Charles Runyan via email, telephone or otherwise does not cause you to become a client of Chuck Runyan or KEYTLaw, LLC, or cause your communications to be confidential or subject to the attorney client privilege. Charles Runyan is of counsel to KEYTLaw, LLC.
Domain Name Law Consultations
Domain name lawyer & trademark lawyer Charles Runyan, Ph.D., offers phone consultations on domain name law and cybersquatting issues for $499 (1 hour) and $299 (1/2 hour). Call Chuck at 480-205-9365 or send an email to email@example.com.
This page was last modified on October 21, 2008.
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