by Richard Keyt, 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 15 U.S. Code § 1125. You can find the ACPA at https://www.law.cornell.edu/uscode/text/15/1125. 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 https://www.icann.org/resources/pages/help/dndr/udrp-en.
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: __________________, 2015.
<insert name of registrant/cybersquatter>
—————End of Letter————–
1. Obtain the name of the registrant, administrative contact, and billing contact for the domain name by doing a whois search. For an explanation of how to obtain this information, see For Trademark Owners: How to Find Cybersquatters Infringing on Your Mark. You should also address and send the letter to the billing contact for the domain name.
2. Attach a copy of the registration information for each mark to the letter as Exhibit A. You can obtain the trademark and service mark registration information from the United States Patent & Trademark Office trademark search database. Look up your mark(s), print the detailed information about the mark and attach it to the cease & desist letter as Exhibit A.
3. This letter, if signed and honored by the cybersquatter, will allow you to obtain the infringing domain name(s), but it does not resolve your damage and other claims, if any. You should consult your attorney to discuss potential claims and remedies and whether you should pursue litigation if you want more than the infringing domain names. Follow up and make sure the domain names are transferred.
4. Send a copy of the letter to each addressee in case any of them refuses to accept delivery of the Return Receipt Requested letter.
5. If your demands are ignored, you must decide whether to do nothing about the infringement or contact your lawyer and take legal action. For more information about your legal options, see How to Obtain a Domain Name from an Infringing Cybersquatter.
Consider whether to have me, Thomas W. Galvani, a patent, trademark and domain name dispute attorney lawyer, send the cease & desist letter. The letter usually has more impact when it comes from a lawyer. I send cease & desist letters for a fixed fee of $495 per registrant (if the registrant has five infringing domain names, the fee is $495, but if there are three domain names owned by three different registrants, the fee is $1,485). My cease & desist letter includes a formal Settlement Agreement with detailed provisions dealing with the cybersquatter’s obligation to transfer the domain name. For more information about having my prepare and mail a cease & desist letter, see Fixed Fee Domain Name Cease & Desist Letter.
Questions? Call domain name attorney Thomas W. Galvani at 602-281-6481.