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    Facebook says I am infringing on their trademark with my godaddy domain

    Your registration and use of mydomain.com violates the Lanham Act (15 U.S.C. 1051 et seq.) because it infringes and dilutes the famous Facebook trademark.

     

    We are writing concerning your registration and use of the domain name xxxxxxxx, which contains the famous Facebook trademark. As you undoubtedly know, Facebook is the leading online social network service. Facebook adopted the name and trademark Facebook in February 2004 and, since that time, Facebook has actively used the Facebook name and trademark in connection with its online social network service, including maintaining the web site www.Facebook.com. The term Facebook is one of the most famous trademarks on the Internet. Facebook owns exclusive trademark rights to the Facebook name as a result of numerous trademark registrations in the United States and internationally, as well as related common law rights. Accordingly, Facebook enjoys broad trademark rights in its name.

     

    Facebook has made a substantial investment in developing and providing its services. As a result of Facebook’s pioneering efforts and devoting substantial effort and resources to providing only high quality services, the Facebook name and trademarks are widely known among the consuming public worldwide, and the name and trademarks embody substantial and valuable goodwill.

     

    Accordingly, we were concerned when we learned of your registration and use of xxxxxxxxxxxxxxx  As we hope you can appreciate, protection of its trademarks is very important to Facebook. Your registration and use of xxxxxxxxxxxxxxxxx.com violates the Lanham Act (15 U.S.C. 1051 et seq.) because it infringes and dilutes the famous Facebook trademark.

     


    We understand that you may have registered xxxxxxxxxxxxxxxx.com without full knowledge of the law in this area. However, Facebook is concerned about your use of the Facebook trademark in your domain name.  As you may know, the Anticybersquatting Consumer Protection Act provides for serious penalties (up to $100,000 per domain name) against persons who, without authorization, use, sell, or offer for sale a domain name that infringes another’s trademark.

    While Facebook respects your right of expression and your desire to conduct business on the Internet, Facebook must enforce its own rights in order to protect its valuable and famous trademark. For these reasons, and to avoid consumer confusion, Facebook must insist that you immediately stop using xxxxxxxxxxxxxx.com and disable any site available at that address. You should not sell, offer to sell, or transfer the domain name to a third party and should let the domain registration expire. 

     

    etc etc etc...

     

    What am I to do given I have the domain name and have developed the website accordingly. My mian hosting is also under this name. How can I change the name of the domain AND the hosting?

     

    Thanks

    1 REPLY 1
    Advocate VI

    I will start with a disclaimer that I am NOT a lawyer. So this is purely my opinion.

     

    Having said that, I am the owner of a few trademarks and have had to defend them by telling other people to stop using them. It is incumbent on registered trademark owners to pursue/notify others who appear to be infringing on them -- otherwise if the trademark gets used by everyone, it starts to dilute the trademark-ability of it, and people can eventually claim it's a generic term. So the legal team at Facebook is doing their job.

     

    Given that it's Facebook who is coming after you, it is probably safe to assume that they have more money and legal resources than you do.

     

    If I were confronted with this situation, I would get a new domain name and start planning a migration to it ASAP. You can change the domain associated with the hosting account, so you won't lose the money paid for hosting. Make sure you have a backup of your files, because who knows, they might be able to go around you and get your site shut down pretty quickly.

     

    If you are able to communicate with someone at Facebook, one thing you might try is suggesting to them a different domain name (assuming it's available) and asking if they would be willing to let you have the old domain forward to the new one for some amount of time as a migration strategy. Perhaps if you immediately offered a compromise showing your intent to be a good Internet Citizen, but asked for their kindness in allowing a smooth transition, they might go for it.

     

    I realize that if you have a business built on this name, and have collateral, etc., you will have to re-do it, and it will cost you something. Maybe you can appeal to Facebook and see if they would be interesting in financially helping you change the name as quickly as possible. I suggest this because I remember hearing of a local winery who was asked to modify their name due to trademark infringement. The owner of the trademark did pay to help with the rebranding. Remind them that helping you a bit here financially would be far cheaper than having to take you to court if you refuse to comply. They would win a court case, but this would certainly be cheaper.

     

    Also, if this was my situation to deal with, I would quickly come up with some good messaging as to why you are changing your business name. You will have to notify everyone (clients, whoever), and I'd try to come up with a clever, humorous way to describe the situation. Something like"Despite my intent at oh-so-clever branding, it appears that my previous business name infringed on the registered trademark of a Silicon Valley Powerhouse. Well, it seemed like a good idea at the time... I want to be a good Internet Citizen, while at the same time branding myself as an expert at blah blah blah. So I've taken a bold step in changing my business name to something even better suited to advertise my talents. Thanks for the nudge, SV Powerhouse 😉 Please check out my new website at xxxxx.com." 

     

    You can do better, I'm just suggesting using the situation as the story, because people will remember it, and you will look like a forward-thinking, problem-solving genius. Don't directly mention Facebook, of course. Putting a spin on it that you were immediately driven to find a new, equitable solution shows you as a strategic thinker, and not one to whine.

     

    If you have social media accounts using this same name, you should also change them immediately, to preserve your content. If Facebook submits a takedown request to Twitter, LinkedIn, et al, they can have your social media page down within a couple of days. I was able to make this happen with infringers on my trademark, so I know it's possible. The Twitter lawyers would look at it and decide on their own if it infringes, based on their policies. 

     

    Good luck, let us know how you fare!