trademark email domain-name
Legal Grounds and Claim to a Cease and Desist?
<h3>The Question</h3>

<p>I own a dot CO (example.co) domain name since August 2010. A certain company using the same name and similar domain name (dot COM)
   has been in the mark and publicly traded since late 1980s. I
   bought the dot CO domain name for the intent of putting a blog on it.
   But since being a student and working and life itself I started a
   WordPress blog several times, made few posts and then it was taken
   down or I took it down. All along I had it grandfathered with the
   free version of <a href="https://en.wikipedia.org/wiki/Google_Apps_for_Work" rel="nofollow noreferrer">Google Apps</a> (50 free users for life) which
   allowed me to have email, calendar, etc on that domain. In order to
   avoid missing any stray emails I setup a "<a href="https://en.wikipedia.org/wiki/Catch-all" rel="nofollow noreferrer">catchall</a>" routine
   which forwarded all stray emails to my main email. For 4 years I
   filtered, threw away, and replied to many emails intended to the dot
   COM domain. However, about a year ago I got tired of all the frequent
   spam and useless emails so I decided to create a WordPress blog and
   post all those emails there (it is sketchy, but <a href="https://law.stackexchange.com/questions/577/what-is-the-value-in-adding-an-email-confidentiality-notice/581#581">legal</a> to my best
   understanding). </p>

<p>I just got a "Trade Mark Infringement" and "Cease and Desist" email
   from someone located in Germany. Telling me that the dot COM company
   is registered in New Zealand (but originally from the USA and
   operates here as well, I am from the USA BTW). They wrote:</p>

<ol start="3">
<li><p>Our client has recently been made aware that you have registered a  confusingly similar domain name: example.co (the “Infringing Domain Name”). Our client is not aware of you having any rights or legitimate interests in respect of that domain name. The Infringing Domain Name links to a site that features emails that were intended to be sent to example.com email addresses (the "Infringing Site").  </p></li>
<li><p>Your use of the Infringing Domain Name and Infringing Site infringe our   client's intellectual property rights. The registration of the Infringing Domain   Name and the use of the Infringing Site are also likely to mislead and deceive   consumers, in breach of the Fair Trading Act 1986, as they represent that the   proprietor of the domain name is associated with our client.  Consumers may   believe there is a connection between "Example Corp" and your business, or that your use of the Infringing Domain Name and the Infringing Site is otherwise endorsed by "Example Corp".   </p></li>
<li><p>Our client considers that the Infringing Domain Name has been registered in bad faith to gain some commercial advantage. </p>

<p>Where example and Example Corp are their name and the domain name. I DO NOT have any ads on that blog. I never made a dime or a penny from that site. The only possible monetary issue is that I used to have (no canceled) an automated email response to all the incoming emails stating that they sent an email to Example.CO and that Example.CO is for sale by me. Couple months ago I added to that automated reply that if anyone is interested in removing any Blog Post, there is a processing "fee" of some $$$.</p></li>
</ol>

<p>.
.</p>

<p><strong><em>Does it sound like they have any grounds to a win? They never approached me prior to this.</em></strong></p>

<p>.
.</p>

<h3>Dot CO Background</h3>

<p>The .CO TLD was originally owned by the Republic of Columbia. The
    Internet Assigned Numbers Authority (IANA) assigned the .CO to
    Columbia around late 1991. In 2001 there was shown a public interest
    in the dot CO as it resembles the well known dot COM. In 2002 the
    delegated entity for dot CO, the University of Los Andes announced
    that it abandoned plans to commercialize the dot CO domain. After a
    long story short, the dot CO was transferred in 2010 to .CO Internet
    SAS, under the regulatory and policy supervision of the Ministry of
    Communications of Colombia. As a final step, in July 2010 the dot CO
    became available to the rest of the world. </p>

<h3>Trade Mark Infringement</h3>

<p>The United States Patent and Trademark Office (<a href="http://www.uspto.gov/page/about-trademark-infringement" rel="nofollow noreferrer">USPTO</a>) offers the following guidance on trademark infringement:</p>

<blockquote>
  <p><strong>What is trademark infringement?</strong></p>
  
  <p>Trademark infringement is the unauthorized use of a trademark or
  service mark on or in connection with goods and/or services in a
  manner that is likely to cause confusion, deception, or mistake about
  the source of the goods and/or services. </p>
  
  <p><strong>What will happen if someone sues me for trademark infringement</strong></p>

<pre><code>A trademark owner who believes its mark is being infringed may file a civil action (i.e., lawsuit) in either state court or federal
</code></pre>
  
  <p>court for trademark infringement, depending on the circumstances.
  However, in most cases, trademark owners choose to sue for
  infringement in federal court. Even when a plaintiff chooses state
  court, it may be possible for the defendant to have the case "removed"
  to federal court.</p>
  
  <p>If the trademark owner is able to prove infringement, available
  remedies may include the following:</p>
  
  <ul>
  <li><p>a court order (injunction) that the defendant stop using the accused    mark; </p></li>
  <li><p>an order requiring the destruction or forfeiture of infringing    articles; </p></li>
  <li><p>monetary relief, including defendant's profits, any    damages sustained by the plaintiff, and the costs of the action; and</p></li>
  <li><p>an order that the defendant, in certain cases, pay the plaintiffs'    attorneys' fees. </p></li>
  </ul>
  
  <p>Conversely, a court may find instead that</p>
  
  <ol>
  <li>you are not infringing the trademark,</li>
  <li>a defense bars the plaintiff's claim(s), or </li>
  <li>other reasons exist why the trademark owner is not entitled to prevail.</li>
  </ol>
  
  <p><strong>How do I know whether I'm infringing?</strong> </p>
  
  <p>To support a trademark infringement claim in court, a plaintiff must prove that it owns a valid mark, that it has priority (its rights
  in the mark(s) are "senior" to the defendant's), and that the
  defendant's mark is likely to cause confusion in the minds of
  consumers about the source or sponsorship of the goods or services
  offered under the parties' marks. When a plaintiff owns a federal
  trademark registration on the Principal Register, there is a legal
  presumption of the validity and ownership of the mark as well as of
  the exclusive right to use the mark nationwide on or in connection
  with the goods or services listed in the registration. These
  presumptions may be rebutted in the court proceedings.
         Generally, the court will consider evidence addressing various    factors to determine whether there is a likelihood of confusion among
  consumers. The key factors considered in most cases are the degree of
  similarity between the marks at issue and whether the parties' goods
  and/or services are sufficiently related that consumers are likely to
  assume (mistakenly) that they come from a common source. Other factors
  that courts typically consider include how and where the parties'
  goods or services are advertised, marketed, and sold; the purchasing
  conditions; the range of prospective purchasers of the goods or
  services; whether there is any evidence of actual confusion caused by
  the allegedly infringing mark; the defendant's intent in adopting its
  mark; and the strength of the plaintiff's mark.</p>
</blockquote>

<p><strong>Yes it sounds like they have a case they could possibly win</strong></p>

<p>Assuming their trade mark is valid it clearly pre-dates your usage. All that remains is for them to prove that a reasonable person might be confused by your usage - that will turn on the facts.</p>

<p>You have 3 options:</p>

<ol>
<li>Comply</li>
<li>Wait until they start legal action and then comply</li>
<li>Lawyer up!</li>
</ol>

<p>It doesn't seem like they have a case for straight trademark infringement.  <a href="https://www.law.cornell.edu/uscode/text/15/1125" rel="nofollow noreferrer">15 USC § 1125</a>(a)(1) says (emphasis mine):</p>

<blockquote>
  <p>Any person who, on or in connection with any goods or services, or any container for goods, uses <strong>in commerce</strong> any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—<br>
  (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or<br>
  (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,
  shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.</p>
</blockquote>

<p>They would have to show how your use is "in commerce" to have a case under this subsection, and it doesn't seem to be.</p>

<p>However, there is also a law against cybersquatting, and they may have a better case there.  Take a look at 15 USC § 1125(d):</p>

<blockquote>
  <p>A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person—<br>
  (i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and<br>
  (ii) registers, traffics in, or uses a domain name that—<br>
  (I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;<br>
  (II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or<br>
  (III) is a trademark, word, or name protected by reason of section 706 of title 18 or section 220506 of title 36.  </p>
</blockquote>

<p>Those auto-replies offering to sell the domain were probably a bad move on your part.  From the law:</p>

<blockquote>
  <p>In determining whether a person has a bad faith intent described under subparagraph (A), a court may consider factors such as, but not limited to...<br>
  (VI) the person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct;    </p>
</blockquote>

<p>I have to say, if I were on a jury, I would look at the evidence - that you registered a domain with the same name as an established trademark, did almost nothing with it, set auto-replies that you would charge to sell the domain, published emails intended for the original company, and set auto-replies that you would charge for taking them down.  I would probably find a bad faith intent to profit there.</p>
