Beware!

[neddy]

Sara Park, a single mother from Sydney's northern beaches, had set up her company Centurion Deals Pty Ltd last year, and registered the domain name centuriondeals.com.au. Her business was styled along "Groupon" lines. She offered health and beauty products, special deals and getaways to as large a client list as she could muster. Her hopes and dreams were high, her revenue as yet minuscule.
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Out of the blue, American Express bobbed along last week with a menacing legal letter. It claimed she had infringed its intellectual property rights. She was guilty of "passing off" an Amex product.

Read more: http://www.theage.com.au/business/when-big-law-turns-to-bullying-20120817-24ds4.html#ixzz23wZ46Xx2

What do you think? And what would you do if you were in her situation?

 

[niiiiiiiiiik]

Poor Sara but the last paragraph is probably an important thing to keep in mind... "check the trademarks register before you do anything".

Hopefully Sara gets some good publicity out of this, swings this negative into a positive and her business skyrockets another way - bloody AMEX!

 

[James]

Thing is their are a few other businesses trading with that name example: http://www.centurion.net.au

I think it is kind of harsh if her business model was beauty products under the name with + deals on it, but it shows you bug brands go after any thing similar to their product name.

 

[Billy01]

Firstly Great Publicity

Awesome news for the owner of the site as free press like that from Michael West is GOLD. Secondly if she is worried get a REAL solicitor as it doesn't have the legs to stand on its own merits for Amex and they would be up for a nice legal bill.

Then stand on your soap box and get as much exposure as you posssibly can

(I'd get shirts printed myself

What I'd print on those shirts would be close to Feck Off Amex

 

[Cooper Mills DomainLawyer]

I agree that you need to check trademarks, but Corporate Bullying is on the rise, I see it. Most of the time they get away with it, because the small business person doesn't go and get the right advice.

Whenever you start an online venture it is best to get trademarks in place, so if a corporate bully comes along later you can politely tell them where to go.

 

[findtim]

I was bullyed 7 years ago and surrendered, if exactly the same thing happened today it would be a different story as I know more now

You can only do what you know at the time, corp bullyingsucceeds because of the $ they can throw at it

Tim

 

[neddy]

I was bullyed 7 years ago and surrendered,

Was that when you met Helena?



(Sorry - couldn't help it - just kidding of course!).

 

[findtim]

helena says "get stuffed" lol

funnily enough it was exactly when i met her ! i was living in byronbay and moved to melbourne to be with helena so i thought i'd create a new online business in the melbourne area as i do like knocking cold doors and BANG my site goes to number 1 outranks a Packer Media website in 2 weeks and i get a letter "passing off" .

so i dropped it, bastards ..... but i just wasn't in the mood to explain to my new partner " hi, i'm here, ohhh by the way i am being sued by the packer empire..... "

tim

 

[DavidL]

Poor Sara but the last paragraph is probably an important thing to keep in mind... "check the trademarks register before you do anything".
!

I agree that you need to check trademarks...

I disagree. You'd struggle to find a decent sounding name that doesn't have a relationship of some sort to some type of TM. Better would be to do a search or two in Google to find whether a similar name in a similar industry is actually being used.

And remember, in domains, Trademarks count for nothing!

 

[sydneyduo]

I disagree. You'd struggle to find a decent sounding name that doesn't have a relationship of some sort to some type of TM. Better would be to do a search or two in Google to find whether a similar name in a similar industry is actually being used.

And remember, in domains, Trademarks count for nothing!

Thanks for the interesting article, and also good points brought up.

Not sure if we have a similar thread - would be good to have a 'checklist' or 'best practice' (Erhan? ;0) with links to resources

And we can add to it to update as we go along

 

[Cooper Mills DomainLawyer]

I disagree. You'd struggle to find a decent sounding name that doesn't have a relationship of some sort to some type of TM. Better would be to do a search or two in Google to find whether a similar name in a similar industry is actually being used.

And remember, in domains, Trademarks count for nothing!

Hi David, I disagree, TM do count for something with domains. Its just that you happen to win every fight you have, that is why you make that comment

I am working on some resources which I hope to make available when I have time to finish them....

 

[DavidL]

Hi David, I disagree, TM do count for something with domains. Its just that you happen to win every fight you have, that is why you make that comment

I am working on some resources which I hope to make available when I have time to finish them....

I've lost fights against people who don't have TMs too!!

Btw I agree with this situation. Means the little guy who runs a small business still has some protection without having the expense of getting a formal TM

 

[sara@centuriondeals]

When 'big law' turns to bullying

Thanks everyone for your support.

Sara

 

[Billy01]

Good Luck If you're The Real Sara.

Also isn't it amazing how early solicitors will get up to sniff out a $$$.

I beleive Cooper Mills has entered the building.

If you want the name of someone GREAT PM me.

 

[sara@centuriondeals]

Thanks everyone for your support.

Sara

 

[neddy]

Also isn't it amazing how early solicitors will get up to sniff out a $$$.

I beleive Cooper Mills has entered the building.

If you want the name of someone GREAT PM me.

Seeing no one else has jumped in as yet, I guess I will.

I don't know what your problem is Joel; or what axe you are wanting to grind.

Erhan has been a great supporter of domain owners (and this forum) over the years. He has also given countless free advice, and I for one am very grateful to him. (Try and get continuous free advice from other solicitors!).

He knows the rules and the law with regards domains and IP. He also knows most of the players on all sides, and has solved many a problem before it even gets to a Court or Tribunal / Panel.

And if anyone should need to engage him professionally, then he is entitled to charge fees (which I understand are more than competitive).

Oh, and by the way Joel, how were the Caymans?

See ya all in the Caymans I won't be back

 

[Cooper Mills DomainLawyer]

Also isn't it amazing how early solicitors will get up to sniff out a $$$.

I beleive Cooper Mills has entered the building.

If you want the name of someone GREAT PM me.

What are you getting at Billy ? As everyone knows, I often help Domainers pro bono and share my knowledge for the benefit of the community. If you have something to say you can give me a call and say it.

 

[findtim]

Erhan has always been willing to offer me advice, he's a gentleman.

tim

 

[DavidL]

Also isn't it amazing how early solicitors will get up to sniff out a $$$.

I beleive Cooper Mills has entered the building.

If you want the name of someone GREAT PM me.

Erhan is anything but the type to chase the dollar - he has offered so many people (including me) valuable, free advice on this forum and privately.

I feel guilty that I've only had to professionally engage him a few times as he deserves much more business.

Really surprised you seem to have an axe to grind with Cooper Mills

 

[AnthonyP]

In the four years I have been involved with .au domain names I have only heard incredibly positive feedback about Erhan.

He has on many occasions given free advise to clients I refer to him and I have no hesitation in referring anyone who needs assistance with the intricacies of IP Law.