Subject: [NEXTEL-1] Nextel complains of "sucks" domain -- Chilling Effects Clearinghouse

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Date: Tue, 02 Sep 2003 02:37:00 -0400

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Chilling Effects Clearinghouse > Domain Names and Trademarks > Notices > Nextel complains of "sucks" domain

Nextel complains of "sucks" domain

July 7, 2003

Sender Information:

Nextel Communications, Inc.

Sent by: [Private]

Fitch, Even, Tabin & Flannery

Washington, DC, 20006, US

Recipient Information:

Tyfanie Marie Hiither

[Private]

US

Sent via: email

Re: Nextel Cybersquatting

Re: http://www.nextelsucks.org/
Dear [Private]:

We represent Nextel Communications, Inc. ("NCI") in intellectual property matters. NCI is a leader in providing wireless telecommunications products and services throughout the world. NCI has used its famous NEXTEL mark in connection with telecommunications services since at least as early as 1988 and owns several United States federal trademark registrations for the mark NEXTEL, including registration number 1,637,139 in International Class 38 for telecommunication services. As a result of NCI's federal registrations and its continuous use of the mark since 1988, NCI has exclusive rights in and to the mark NEXTEL.

It has come to our attention that you have registered the domain name, http://www.nextelsucks.org/. Your unauthorized registration and use of the http://www.nextelsucks.org/ domain name infringes our client's valuable trademark rights and unfairly trades upon NCI's fame and established good-will. The public is likely to be confused that the goods and services offered on your web site and other content on your website emanates from, or is sponsored by NCI. Such confusion dilutes the strength and value of our client's mark(s).

The activity that you are engaging in violates the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d); federal anti-dilution laws, 15 U.S.C. § 1125(c); and federal unfair competition laws, 15 U.S.C. § 1125(a). We therefore request that you immediately cease and desist from any and all usage of the http://www.nextelsucks.org/ domain name and transfer ownership of the domain name to NCI. If you are registered with Verisign, visit https://www.networksolutions.com/en_US/name-it/rnca-edit-reg.jhtml, otherwise, contact your applicable Registrar. Then, transfer ownership of the domain name to "Nextel Communications, Inc., 2001 Edmund Halley Drive Reston, VA, 20191." Please list "[Private]," at [private]@Nextel.com as the New Administrative Contact. Send a copy of the new ownership (i.e. Registrant) information to Fitch, Even, Tabin & Flannery within ten (10) days of your receipt of this letter.

If you believe that you are a Nextel Authorized Representative ("AR"), Associate Authorized Representative ("AAR") or Independent Sales Professional ("ISP"), you must still transfer ownership of the domain name or risk termination of the Nextel Authorized Representative Agreement between you and NCI.

We would like to avoid litigation in this matter if possible, however, our client has authorized us to take any and all appropriate measures to stop your infringing use of its mark(s). Your cooperation in completing the transfer of ownership will resolve this matter. However, should further action become necessary, we are prepared to seek other legal remedies to obtain ownership of the domain name, an injunction prohibiting your further misappropriation and use of the NEXTEL mark(s) and monetary damages. Nothing in this letter shall be construed as a waiver or relinquishment of any rights or remedies possessed by NCI, all of which we expressly reserve. Should you have any questions, you may contact me at 202.419.7000.

Sincerely,

FITCH, EVEN, TABIN & FLANNERY

[Private]

FAQ: Questions and Answers

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Question: What exactly are the rights a trademark owner has?

Answer: In the US, trademark rights come from actual use of the mark to label one's services or products or they come from filing an application with the Patent and Trademark Office (PTO) that states an intention to use the mark in future commerce. In most foreign countries, trademarks are valid only upon registration.
There are two trademark rights: the right to use (or authorize use) and the right to register.
The person who establishes priority rights in a mark gains the exclusive right to use it to label or identify their goods or services, and to authorize others to do so. According to the Lanham Act, determining who has priority rights in a mark involves establishing who was the first to use it to identify his/her goods.
The PTO determines who has the right to register the mark. Someone who registers a trademark with the intent to use it gains "constructive use" when he/she begins using it, which entitles him/her to nationwide priority in the mark. However, if two users claim ownership of the same mark (or similar marks) at the same time, and neither has registered it, a court must decide who has the right to the mark. The court can issue an injunction (a ruling that requires other people to stop using the mark) or award damages if people other than the owner use the trademark (infringement).

Trademark owners do not acquire the exclusive ownership of words. They only obtain the right to use it for commercial purposes and to prevent competitors in the same line of goods or services from using a confusingly similar mark. The same word can therefore be trademarked by different producers to label different kinds of goods. Examples are Delta Airlines and Delta Faucets.
Owners of famous marks have broader rights to use their marks than do owners of less-well-known marks. They can prevent uses of their marks by others on goods that do not even compete with the famous products.

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Question: What do these registration numbers mean? or Why don’t I have any registration numbers in my C&D?

Answer: Do not be led astray by the registration numbers: trademark rights in the United States arise from use of the mark in commerce, not from registering. However, both state and federal law can provide relief from trademark infringement.

If your opponent has registered its mark on the Patent & Trademark Office’s register, then you know that litigation about the mark could occur in federal court. If your opponent has not included any registration numbers, you still could be sued in federal court, but your opponent might simply be relying on state law (or just trying to scare you). If the C&D does not reveal any registration numbers, you should ask if the marks are registered.
If the opponent has included registration numbers, look them up on the Patent
& Trademark Office’s Trademark Electronic Search System (TESS). You can check the status of a trademark by entering the registration number into TESS’s search engine. If your opponent’s trademark is labeled "LIVE," then it is likely to be protected by federal law; if TESS labels the mark "ABANDONED," then you have reason to believe that federal law will not protect it (although even abandoned marks can garner protection in some instances). Pending trademark applications are also marked "LIVE", but they do not get a "Reg. Number" unless/until the registration issues.

[back to notice text]

Question: What is the bare minimum of trademark law that I have to understand to decipher this C&D?

Answer: Your opponent should say that your mark is causing consumer confusion or is likely to cause consumer confusion. (If the C&D does not say this, then no trademark claim exists, and you can rest assured that your opponent is engaging in scare tactics or has hired a highly incompetent attorney).
Functioning in a quasi-magical talisman-like capacity, trademarks designate the source or quality of goods or services. For this reason, the law protects against confusion in the market place by ensuring that marks on the same or similar products or services are sufficiently different. The law also protects famous marks against dilution of value and tarnishment of the reputation of the goods or services on which it appears or the source of those products.
You can roughly assess the validity of your opponent’s claim of confusion by classifying the marks involved. A trademark can fall into one of 5 categories. It can be: (1) fanciful; (2) arbitrary; (3) suggestive; (4) descriptive; or (5) generic. Not all of these varieties of marks are entitled to the same level, or indeed any level, of trademark protection.
A fanciful mark is a mark someone made up; examples include KODAK or HÄAGEN-DAZS. An arbitrary mark is a known term applied to a completely unrelated product or service; for instance, AMAZON.com for an online book-store cum one-stop shopping site or APPLE for computers. Fanciful and arbitrary marks are considered strong marks and garner substantial trademark protection.
A suggestive mark is one that hints at the product, but which requires an act of imagination to make the connection: COPPERTONE for sun tan lotion or PENGUIN for coolers or refrigerators are examples. Suggestive marks are also strong marks and receive protection.
A descriptive mark, predictably, describes the product: HOLIDAY INN describes a vacation hotel and FISH-FRI describes batter for frying fish. Descriptive marks do not receive any trademark protection unless their user has used them in commerce and has built up secondary meaning. "Secondary meaning" occurs when consumers identify the goods or services on which the descriptive term appears with a single source. In other words, if consumers know that HOLIDAY INN hotels are all affiliated with a single source, then the mark has secondary meaning and receives trademark protection.
Finally, generic marks simply designate the variety of goods involved: for example, "cola" used on soft drinks and "perfume" on perfume are both generic terms. Generic marks never receive any trademark protection; they are free for everybody to use. (Keep in mind, though, that "Cola" on a nightclub is arbitrary, and therefore receives protection).
If your opponent is complaining that you have used the word "bakery" for a bake shop or "car" for a car repair shop, then you can safely guess that the c & d is baseless. On the other hand, if your opponent is concerned about the fact that both of you use of the term "Sweet Pickles" on alpaca sweaters, then the c & d may have some merit.

[back to notice text]

Question: What are the limits of trademark rights?

Answer:
There are many limits, including:

Fair Use
There are two situations where the doctrine of fair use prevents infringement:

The term is a way to describe another good or service, using its descriptive term and not its secondary meaning. The idea behind this fair use is that a trademark holder does not have the exclusive right to use a word that is merely descriptive, since this decreases the words available to describe. If the term is not used to label any particular goods or services at all, but is perhaps used in a literary fashion as part of a narrative, then this is a non-commercial use even if the narrative is commercially sold.

Nominative fair use
This is when a potential infringer (or defendant) uses the registered trademark to identify the registrant’s product or service in conjunction with his or her own. To invoke this defense, the defendant must prove the following elements:

his/her product or service cannot be readily identified without pointing to the registrant’s mark

he/she only uses as much of the mark as is necessary to identify the goods or services

he/she does nothing with the mark to suggest that the registrant has given his approval to the defendant

Parody Use
Parodies of trademarked products have traditionally been permitted in print and other media publications. A parody must convey two simultaneous -- and contradictory -- messages: that it is the original, but also that it is not the original and is instead a parody.

Non-commercial Use
If no income is solicited or earned by using someone else's mark, this use is not normally infringement. Trademark rights protect consumers from purchasing inferior goods because of false labeling. If no goods or services are being offered, or the goods would not be confused with those of the mark owner, or if the term is being used in a literary sense, but not to label or otherwise identify the origin of other goods or services, then the term is not being used commercially.

Product Comparison and News Reporting
Even in a commercial use, you can refer to someone else’s goods by their trademarked name when comparing them to other products. News reporting is also exempt.

Geographic Limitations
A trademark is protected only within the geographic area where the mark is used and its reputation is established. For federally registered marks, protection is nationwide. For other marks, geographical use must be considered. For example, if John Doe owns the mark Timothy’s Bakery in Boston, there is no infringement if Jane Roe uses Timothy’s Bakery to describe a bakery in Los Angeles.

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Question: What is "goodwill"?

Answer: Goodwill is the trademark owner's image, good reputation, and expectation of repeat patronage. It is the value a trademark owner builds in a brand.

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Question: What implication does alleged confusion have on claims of trademark infringement?

Answer:
A mark that is confusingly similar so closely resembles a registered trademark that it is likely to confuse consumers as to the source of the product or service. Consumers could be likely to believe that the product with the confusingly similar mark is produced by the organization that holds the registered mark. Someone who holds a confusingly similar mark benefits from the good will associated with the registered mark and can lure customers to his/her product or service instead. Infringement is determined by whether your mark is confusingly similar to a registered mark. The factors that determine infringement include:

proof of actual confusion

strength of the established mark

proximity of the goods in the marketplace

similarity of the marks’ sound

appearance and meaning

how the goods are marketed

type of product and how discerning the customer is

intent behind selecting the mark

likelihood of expansion in the market of the goods

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Question: What is trademark dilution?

Answer: A type of infringement of a famous trademark in which the defendant's use, while not causing a likelihood of confusion, tarnishes the image or blurs the distintiveness of the plaintiff's mark. For example, if someone tries to sell "KODAK" pianos, KODAK could stop the person--even if consumers were not confused--because "KODAK" is a famous mark, and its use on products other than film and film-printing accessories (or other products on which Eastman Kodak places the mark) dilutes its uniqueness.
Many states have anti-dilution laws. The federal government only recently enacted anti-dilution legislation; see the Federal Trademark Dilution Act at 15 USC 1125(c).

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Question: I have an unsettling feeling in the pit of my stomach about the tone of the C&D I received. Does the tone of the c & d mean I am going to lose this dispute?

Answer: "Gorilla Chest Thumping" refers to the tone of most C&Ds: it’s nasty. The first thing to do is take a deep breath. The second thing to do is to acknowledge that the tone of the letter is a function of the letter writer’s perception that aggression is the best defense: do not take it personally. The third thing to do is ignore the tone and focus on the facts. You may eventually choose to respond aggressively yourself, but do not do so because your opponent has egged you into a useless game of whose gorilla is bigger. Take a tip from Ani Di Franco: "If you play their game, girl, you’re never gonna win." Face Up and Sing, Out of Range, Righteous Babe Records (1994).

[back to notice text]

Question: What is the Anti-Cybersquatting Consumer Protection Act (ACPA)?

Answer: The ACPA [codified as 15 USC 1125(d)] is aimed at people who register a domain name with the intention of taking financial advantage of another's trademark. For instance, if BURGER KING did not have a web site, and you registered www.BURGERKING.com with the intent of selling the site to BURGER KING for a royal ransom, you could be liable under ACPA.
ACPA applies to people who:
(1) have a bad faith intent to profit from a domain name; and
(2) register, use or traffic in a domain name;
(3) that is identical, confusingly similar, or dilutive of certain trademarks. The trademark does not have to be registered.
ACPA provides that cyberpirates can be fined between $1,000 and $100,000 per domain name for which they are found liable, as well as being forced to transfer the domain name.
Somewhat more broadly, the Act is meant to reduce consumers' confusion about the source and sponsorship of Internet web pages. The idea is to provide customers with a measure of reliability, so that when they visit www.burgerking.com, they will be able to find actual Burger King products, not something entirely different. It also protects mark owners from loss of customer goodwill that might occur if others used the trademark to market disreputable goods or services.
See the module on ACPA to find out more about bad faith and legitimate defenses.

[back to notice text]

Question: What facts should a C&D include?

Answer: Recitation of Facts. Read this section of the letter carefully. It should contain some or all of the following information:
(1) the trademark that is allegedly being infringed;
(2) the trademark, domain name or other use that is allegedly doing the infringing;
(3) the products and services on which your opponent uses the allegedly infringed mark;
(4) the date your opponent commenced such use; and
(5) the registration numbers, if the trademarks are registered with the Patent & Trademark Office.

[back to notice text]

Question: What is this laundry list of things the C&D says will happen if I don't obey?

Answer: Your opponent may describe a parade of horribles to demonstrate with exquisite detail what it will do to you unless you capitulate. This list generally includes, but is not limited to:
(1) ceasing use of the allegedly infringing mark or surrendering the domain name;
(2) rendering an accounting;
(3) posting corrective advertising;
(4) obtaining an injunction;
(5) recovering costs and fees.
Though these things sound awful, they are not medieval tortures (although that may be a function of the fact that Torquemada never thought of them).
Ceasing use of the mark is self-explanatory: your opponent wants you to stop using the mark. Your opponent might also ask you to surrender your domain name if they believe the domain name causes (or is likely to cause) confusion with their trademark. For example, under ICANN rules (the UDRP), you may have to surrender your domain name if the following three conditions are satisfied:
(1) your domain name is identical or confusingly similar to your opponent’s;
(2) you have no legitimate right or interest in the name (in other words, you are not using the name to conduct a bona fide business or for non-commercial fair use purposes); and
(3) your name is registered and used in bad faith.
An accounting basically means that you disclose the following information to your opponent:
(1) the date you began using the allegedly infringing mark;
(2) the names of individuals who knew of the use when it began;
(3) the amount of traffic at your web site or business at your store; and
(4) your profits and revenues during the time you used the allegedly infringing mark.
Corrective advertising means you give notice to the public that you were using a mark confusingly similar to your opponent’s, and that you are not affiliated with your opponent.
An injunction is a judicial order to do something. An injunction can prevent you from using the allegedly infringing trademark.
Some provisions of the Lanham Act permit a trademark holder to recover attorney’s fees and court costs from an infringer.
That your opponent has listed these various remedies does not mean that it is entitled to them; do not confuse the smorgasbord of legal options with your opponent’s right to inflict any of them on you.

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Question: What does the "reservation of rights" language mean? What are they "waiving" at me?

Answer: Many C&Ds will say something like, "This letter shall not be deemed to be a waiver of any rights or remedies, which are expressly reserved." This is just legalese for saying, "Even if you do what we ask in this letter, we can still sue you later." The language is standard; do not be alarmed. Litigation is extremely unpleasant, and unless your opponent is irrational (always a distinct possibility, of course), it will not bring litigation after it has obtained what it wants.

Topic maintained by Berkman Center for Internet & Society

FAQ: Questions

What exactly are the rights a trademark owner has?

What do these registration numbers mean? or Why don’t I have any registration numbers in my C&D?

What is the bare minimum of trademark law that I have to understand to decipher this C&D?

What are the limits of trademark rights?

What is "goodwill"?

What implication does alleged confusion have on claims of trademark infringement?

What is trademark dilution?

I have an unsettling feeling in the pit of my stomach about the tone of the C&D I received. Does the tone of the c & d mean I am going to lose this di...?

What is the Anti-Cybersquatting Consumer Protection Act (ACPA)?

What facts should a C&D include?

What is this laundry list of things the C&D says will happen if I don't obey?

What does the "reservation of rights" language mean? What are they "waiving" at me?

Related Links

NextelSucks.org - The Anti-Nextel Site

Other Recent C&Ds

RTC Rides Again, Religious Technology Center (RTC), June 30, 2003

Montessori Mocked, Roberts & Smaby P.C., December 13, 2002

Is there a trademark lawyer in your ROLODEX?, Newell Rubbermaid, July 7, 2003

Nextel complains of "sucks" domain, Nextel Communications, Inc., July 7, 2003

Maternity Closet births trademark claims, Bernie Zeller, June 21, 2003

more

Related News

Protection of Non-U.S. Trademarks under U.S. Law, Mark Matuschak and Vinita Ferrera, Hale & Dorr Internet & IP Alert, July 21, 2003

Sixth Circuit Supports Sucks Sites, Martin H. Samson, Esq., Partner, Phillips Nizer LLP, Internet Library Case Update, February 20, 2003

Taubman v. Webfeats: Domain Names are Speech, Sixth Circuit Opinion, February 7, 2003

Domain Name Disputes Decline as Internet Matures, Tamara Loomis, New York Lawyer, February 6, 2003

Furniture Store Wins Injunction Against Critic Site Using its Name, Associated Press, January 7, 2003

more

Related Resources

Whois.cc, Domain Name Registration Information (search tool)

Considerations for innocent domain name owners, Oppedahl & Larson LLP (reference)

UDRPlaw.net, Patrick L. Jones, (website)

Using ICANN's UDRP, Berkman Center (reference materials)

ACPA, Anti-cybersquatting Consumer Protection Act (federal statute)

Uniform Domain-Name Dispute-Resolution Policy, ICANN (rules and policy)

Other Topics

ACPA

Anticircumvention (DMCA)

Chilling Effects Clearinghouse

Copyright

Copyright and Fair Use

Defamation

Derivative Works

DMCA Safe Harbor Provisions

DMCA Subpoenas

Documenting Your Domain Defense

E-Commerce Patents

Fan Fiction

John Doe Anonymity

Linking

Patent

Piracy or Copyright Infringement

Protest, Parody and Criticism Sites

Responses

Reverse Engineering

Trademark

UDRP

This Topic: Domain Names and Trademarks

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