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[oshea1nyc]

I got the typical form letter from a $14 billion in sales company

“Your unauthorized use of the TOWNRUN (my example) mark in connection with your domain name <TownRunatLakeSmith.com> for the promotion of your real estate services is likely tocause the public to mistakenly assume that your services originate from, are sponsored by, or are in some way associated with our client in violation of state and federal trademark and unfair competition laws. Moreover, the title to your website “Town Run at Lake Smith” also implies that your services originate from, are sponsored by, or are in some way associated with our client in violation of state and federal trademark and unfair competition laws.”

Company A. is a builder of new homes in a subdivision called ex. “TOWNRUN at Lake Smith”.  Company will have sold all the new homes in the subdivision within 1 year.

TOWNRUN is a registered trademark of Company A.

I am a Realtor.  Company A has offered to pay me and any realtor that sells their homes in the “TOWNRUN at Lake Smith subdivision”.  Company A also has a company that sells the new homes direct to consumers called “Company A Marketing”.

In the course of my business I have acquired the domain names of many subdivisions, to market my realty services, that are in the format, www.”SubdivsionName”.com, to help the public find homes for sale therein and to assist sellers.  One such name I acquired and use is www.TOWNRUNATLAKESMITH.COM.  On this web site I have said that the public can purchase Company A. homes through me.  Through this site the public also has access to homes for sale listed on the MLS (there is one already listed) and in the future they will be able to buy/sell through me resale homes in the subdivision.  Essentially, I will have at least three different “products/services” to offer related to this subdivision and domain name.

When I refer to the subdivision as the location of Company A’s homes, MLS listed homes, and for buyers information, on the web site, I use “Town Run at Lake Smith”.  That phrase is used by our county government to as part of the Legal Description of the subdivision and by the MLS system as a Subdivision name that can be used to search for properties that lie within the subdivision.

Regarding the infringement on their trade mark by using the phrase “Town Run at Lake Smith:
1.      Aren’t I “sponsored by, or are in some way associated with” Company A. when they have offered me a commission for the sale of their goods?
2.      How am I confusing the public about the origin of the goods when I tell them that Company A builds them, and that they are located in “Town Run at Lake Smith”, and that they can be purchased through them or me?
3.      Isn’t it a “fair use” of the phrase when there is no other way to describe the the products (their homes, MLS listed homes, homes for sale by private owners) location then to say the properties are located in “Town Run at Lake Smith”.


Regarding the use of the mark in the Domain Name:

1.      The domain name of my web site ww.TownRunatLakeSmith.com implies but one thing, visitors will have access to information on all the real estate properties/products available to them in the subdivision known as “Town Run at Lake Smith” including your client’s products, but not to the exclusion of all other real estate products that may be available therein.  Don’t I have a right to use it as such?
2.      I have not acquired the domain name to disrupt  Compay A’s business.  To the contrary, I acquired it to promote the sale of their  product(s) and others such as - the sale of MLS listings, the sale of pre-owned homes, services to buyers etc. in the course of operating my real estate services.  As such, don’t I have a right to use the name?

[JSonnabend]

You scenario raises some difficult issues to answer succinctly.   As a threshold matter, you should understand that your inquiry raises two related but different areas of law: trademark and domain name rights.

Regarding the trademark issues, to the extent that consumers would likely believe you were sponsored by or actually were the complaining company, you very well may be violating trademark laws.  Whether or not you are "sponsored by, or are in some way associated with" this company is not something I'd address in detail here, but the answer very well may be "no" (although it could be “yes”, I imagine).

The domain issue is slightly different.  To the extent that you are using the domain in good faith, then the complaining company may not be able to use the UDRP or ACPA to wrest the domain from you, but it still may be able to under federal trademark law.

I strongly suggest you speak directly with an attorney to handle this matter.  No amount of free advice here will solve the problem for you.

- Jeff

[oshea1nyc]

Jeff,

Thanks for your response.   I do agree that that their are two issues.  It is my understanding that the "confusion" issue is trumped by the nominitive fair use defense.  An that in this case, there is no other way to describe the location of real properties in this subdivision as being located in "Town Run at Lake Smith."

The following letter is being sent:

Regarding your client’s demands:

1.      Though we don’t recall any use of the words, “TOWN” and “RUN” capitalized and without a space in between the two words (your client’s Trademark), on any of our web pages, we will most will assuredly make every reasonable attempt not do so in the future.  


2.      With regards to your client’s demand that we cease using and turn over to them our domain name. We most certainly refuse to do so.


We believe this issue is covered by ICANN rules and regulations. We believe that in your client’s intimidating attempt to secure this domain name from us in the fashion that they have chosen,  their use of certain portions of the Latham Act to the exclusion of others, and the exclusion in their claims of other laws and/or Rules/Regulations established to protect our rights, is a deliberate act by a NYSE listed firm and their attorneys to conceal vital information from, and confuse, a sole proprietor regarding those rights for our use of this domain, and thus, a fraudulent attempt to hijack our domain name.

Key to our marketing strategy has been and is, to make it as easy as possible for buyers to find properties in specific Florida subdivisions.  


Any use of the domain name by us, or a name corresponding to the domain name in connection with the domain name, has been a use by us for an offering of goods or services, in the course of our real estate business.  Such products/goods and services have/may include, sale of MLS listed homes, sale of IDX listed homes, listing(s) for sale of the properties of private homeowners, FSBO listings, and information about the community for potential buyers, and other goods and services that may be available for us to employ in the course our business in the future.  

Any use of the phrase by us, “Town Run at Lake Smith”, used in connection with the offerings enumerated above, is bona fide use by us to describe the geographic location of this subdivision and the properties that lie within, and by which such subdivision is also known by that phrase in Orange County, Fl Government records, the Mid-Florida MLS, by Pulte’s own representatives, and elsewhere, for the same descriptive purpose.

We regard our use of the phrase “Town Run at Lake Smith” as the only practical way to describe the geographical location of this subdivision and all of our services related to it, without causing confusion among the public.  And furthermore we believe, in the interest of the free flow of commercial information that any Florida Realtor has the right to use the phrase in the course of their business to describe the location of properties in this subdivision.

All this being said, we would drop the usage of the phrase “Town Run at Lake Smith”, if your client can provide us with a descriptive phrase that is less likely to cause the public confusion as to the location of the properties/goods/services we may offer in the course of our business that are, as a matter of fact, located within this subdivision.  

[JSonnabend]

Well, that's not exactly the letter I would send, but that's your call.

- Jeff

[oshea1nyc]

Any suggestions?

[oshea1nyc]

I believe it would be best to leave out the paragraph on "reverse domain Hijacking"

[JSonnabend]

Short of rewriting the letter, I can't really offer advice.  I'd be happy to draft your response letter for you -- it's what I do for a living -- but I can't do that here, nor can I do it free of charge.

- Jeff