Domain/trademark infringement getting out of hand?

Chris Moser writes "Our company, Network54.com, operates a "build your own portal" type service where you can create free forums and chatrooms. Two years ago our company was known as eMedia Publishing LP and at that time we registered the domain name "emediapub.com".

We recently received a copy of a "cease and desist" letter from attorneys representing a company by the name e-Media, LLC regarding emediapub.com which is currently defunct but now owned by Network54 (the letter is actually made to our ISP - see below for details). The letter claims that e-Media, LLC owns the trademark/service mark "E-MEDIA" and that failure to hand over our old domain name to e-Media, LLC could result in "a court order requiring you to discontinue use of the Mark and a court award of money damages and attorney's fees and costs". The letter closes by stating "conduct yourself accordingly".

We're not using this domain or company name anymore so we're not losing much by dropping the domain. We stopped using it six months ago, and likely will not be renewing our registration for the domain with the Internic. On the other hand, a term such as "e-Media" seems generic enough not to be trademarked, especially considering the number of Internet companies using "e-Media" in their names.

If this is trademark is enforceable, similar use of the very common terms "e-commerce", "i-commerce", etc. will also fall under the exclusive jurisdiction of those companies who trademarked them. Now I have no problem with companies trademarking their unique names, but isn't this going a bit far?

Details of the letter can be found here."

Yes, I'd say it is. Checking uspto.gov, I find two marks for "e-media", several for "emedia". This company has registered the trademark under the categories consulting services and educational services - another company has registered e-media for custom manufacture of electronic signs.

What this means is that if you provide consulting services or educational services (or make signs) under the "e-media" name, you may be infringing upon their service mark. If you are in another field of business, you can safely use e-media.

Given that your business and theirs aren't particularly related, and given that you've actually done business under the e-media name (i.e. you're not a domain name scalper), and finally given that the claimed mark is not identical to the domain name, I would say your case is extremely strong. Take a look at the Domain Name Rights Coalition for more information. You have every right to use e-media to describe your business in a field different from the ones that e-Media, LLC registered - and there are currently dozens of domain names which have emedia as part of them. Obviously you'll want to consult legal counsel, and maybe you really don't care about the name anyway. But if it were me, I'd renew the name just to spite e-Media, LLC. Companies ought to learn that a polite phone call works better than a demand letter. -- michael

An alternative suggestion

[angelos]

Michael said...
Obviously you'll want to consult legal counsel, and maybe you really don't care about the name anyway. But if it were me, I'd renew the name just to spite e-Media, LLC. Companies ought to learn that a polite phone call works better than a demand letter.

And if it were me, I'd tell them where to stick their demands and then quietly not renew the registration anyway. This was you get to spite them for free... :)