Cease and desist letter for trademark infringement w/domains I created. Do I have to transfer them?

Question

A real estate developer is starting a new subdivision called "Appleyard" (changed name to protect me). They own the domain www.appleyard.com. I created several domains such as www.myappleyard.com, www.sellappleyard.com, etc.

They do have a legitimate trademark with "Appleyard". They recently sent a cease and desist letter giving me a week to respond and transfer all of the domains I created to them. I want to do the right thing, if I'm wrong I'll transfer them. I want to create real estate sales by acting as a buyer's agent for this new subdivision. These domains were to create some of this business.

Again "Appleyard" is made up, I didn't want to use the actual name here in this public forum. Anyone know for certain if I could keep the domains and sell advertising on it legally?

I normally don't do all caps, but 2 of 3 answers refer to 'Appleyard' as the name in question. IT IS NOT APPLEYARD! I MADE IT UP! I am doing this to protect the identity of the actual domains I created.

Answer 1

On the face of it, without knowing details, it sounds as if you are infringing. If you were using the name and had a reason other than wanting to piggyback on their name then it would be different. But your purpose is to grab people searching for that property and make a profit off of it.

Whether you have to transfer the domain to them is another matter. I believe you could park it and get whatever you can make from ads. As for your real estate aspirations, I just don't know.

Edit: just wanted to clarify the last sentence. I don't know if you need a good working relationship with these people in order to carry through with your real estate ambitions. More than likely you do. If so, then you may want to voluntarily transfer the domains to them and save them the cost of litigation. You can say something to the effect that you do not believe you were doing anything wrong and that you did not intend to infringe, and in the interest of cooperation, no one will benefit from lengthy litigation - that type thing. Hopefully, you didn't spend much on the registration costs and possibly you might get some goodwill out of it. BTW, common misspellings of the name are bad also.

Whoever designs your website, whether you or someone else, should concentrate on designing it with good SEO principles in mind. That way, even if you cannot use the name as part of your domain, if you have a legit reason to mention it in the text, you should be able to direct a lot of traffic your way.

Answer 2

Appleyard is a generic term and such should never have been granted a trademark in the outset.

That said if they own a registered trademark and are involved in real estate, and you are also planning to use your similar domains for real estate related business it is called a bad faith registration and you will certainly lose if the ICANN domain name dispute resolution mechanisom is employed to deal with this.

Answer 3

First, I don't see how Appleyard is generic -- is it perhaps geographic?

Honestly, contact a trademark attorney. You'll want to speak with someone that has experience with trademark law and that will be able to go over all the details of your situation with you.

Best of luck to you!

Answer 4

If this replaced right into a debt you actual owed, then a quit and desist letter should be considered not in common words as a unfavorable act yet a very dishonest one - clone of telling the IRS to go and shove their (valid) tax call for. those who cooperate with their lenders typically get a ruin in the fashion of a contract figure appreciably below the actual debt. notwithstanding, you've executed your self out of that decision and could be sued for the finished debt plus courtroom expenses.