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Hi , I received a letter 1 week ago by proxy as i live in the

 
Sydney-Lawyer's Avatar
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Hi , I received a letter 1 week ago by proxy as i live in the uk and failed to change my registered address. Unfortunately letting time slip away from me and failing to act i have received another with similar regards. I run on a website a game code that i was/am trying to develop. The name i am using for this website is the reason for contacting you and regarding the following letter.

Liability limited by a scheme approved under Professional Standards Legislation
17 May 2012
Vincenzo Sapere XXXXX
East Brisbane
QUEENSLAND 4168
BY EMAIL AND COURIER
Dear Mr Sapere
Underbelly The Game
We refer to our letter to you dated 3 May 2012.
We note that you have not responded to our letter, but that there have been some
amendments made to Your Website.
Particularly, we note that the banner at the top of the web page on Your Website has been
changed to read "Underbellythegame.com" rather than "Underbelly: The Australian Crime
Game" as appeared previously. Additionally, some of the text on Your Website has been
removed that mentioned various characters portrayed in the Underbelly Series along with
references to the Offending Game being about "Australian" crime.
The amendments that have been made to Your Website however are not sufficient to
remove the risk of deception or confusion occurring as a result of your use of our client’s
trade mark. The content of Your Website continues to give the misleading impression that
there is a connection or association between our client and Your Website and the
Offending Game.
Further, we remain of the view that your use of our client’s trade mark in the Offending
Domain Name is XXXXX XXXXX of the Uniform Domain Name Dispute Resolution Policy and
that our client is entitled to have the Offending Domain Name transferred to it under the
Uniform Domain Name Dispute Resolution Policy.
Accordingly, we are instructed to revive our demands as follows:
1. That you immediately remove, or arrange for the removal of our client’s trade
mark UNDERBELLY and all marks containing the word UNDERBELLY from
Your Website, and any other websites that you own or control, and confirm to
us that this has been done, at the writer’s email address below.
-2-
2. That within 48 hours, you agree to transfer the Offending Domain Name to our
client. In order to arrange for transfer of the Offending Domain Name, you will
need to contact the Registrar of the Offending Domain Name and follow its
transfer procedures. For the purposes of the transfer the following information
may be used for the transferee:
Registrant: Screentime Pty Limited
Level 2, 70-76 Alexander Street
Crows Nest NSW 2065.
Contact: Sandy Willis
Contact email:XXX@XXXXXX.XXX
Any domain passwords or other information required to allow our client to
access the Offending Domain Name should be sent to us by email.
3. That, within 48 hours of this letter, you provide us with an undertaking that you
will not, whether personally or as a director of any company, register or use any
domain name or trade mark identical to or confusingly similar to our client’s
trade mark UNDERBELLY, without our client’s prior written consent
including use of the words “Underbelly the Game”.
4. That, within 48 hours of this letter, you provide us, in respect of all websites
that you own or control that make use of our client’s trade mark
UNDERBELLY, or have done so at any time:
(a) a complete list of such websites;
(b) the number, identity and nature of those who have registered for the
game; and
(c) a statement of all revenue received by you or otherwise derived in
connection with such websites.
Our client is concerned that the steps outlined above have not been complied with. If the
above demands are not complied with within 48 hours, our client reserves its rights to
contact the domain service provider for Your Website or make a formal complaint under
the Uniform Domain Name Dispute Resolution Policy.
We await your reply.
Yours sincerely
Alison McGinn
Lawyer
Direct line: 9266 3432
email:XXX@XXXXXX.XXX
Partner: Margaret Shearer


Any information and advice you could provide me in regards XXXXX XXXXX rights of that which they ask would be greatly appreciated.

also with regards XXXXX XXXXX mention of trademark to the the word underbelly and the general use of reference to such people as trimboldi and XXXXX XXXXX (as mentioned in their original letter) as having been members of public, real figures in australian history where do i stand.
Admittedly previously the banner i had did display a similar typefaced underbelly but distinctly different enough not to be confused for the real thing, with different colors and font entirely but as mentioned have since removed them. What also if i was to add a disclaimer to disassociate my website from the tv series or screentime in general, could that help.

The website in question is underbellythegame.com any help would be huge thanks.

 



Already Tried:
I haven't as yet had any advice nor had contact with any legal entity in australia so all i have been able to do at present is remove any wording which might associate my self from screentime or the underbelly series as well change the banner and logos of the website so as they can no longer be confused or considered similar.. What else might i be able to do and do i have to comply to their demands? Thanks again Vincent

Submitted: 338 days and 13 hours ago.
Category: Australia Law
Value: £36
Status: CLOSED
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Expert:  Alex replied 338 days and 13 hours ago.

Unfortunately if they sue you for trademark infringement, I think you would lose. So I would recommend complying.

However, your other option is simply to ingore their letter, do nothing, and see if they escalate this by commencing Court action. They might not, however, if they do - as mentioned already, I think you would lose.

Should you have any other questions, please let me know.

Customer replied 338 days and 12 hours ago.

Relist: Incomplete answer.
my questions were not answered fully i dont feel. for 75 dollars i expect the answer to be point form to any questions asked as well the level of information provided was generalized and at a bare minimum. THe speed however that i received the response was fantastic though.

Picture
Expert:  Alex replied 338 days and 12 hours ago.

I have given you the bottomline that you are likely to lose if this goes to Court. I don't know how much more I can expand on that. As such I will opt out which will allow another expert to assist you.

Customer replied 338 days and 11 hours ago.

my apologies for what must seem a waste of your time andthnk you

Picture
Expert:  Sydney-Lawyer replied 338 days and 4 hours ago.

Good Evening,


The issue here is whether or not the public believe that your website is somehow linked with the underbelly series that was shown in Australia.

It appears from the letter and also your website that members of the public would easily be confused that this game is connected in some way with the owners of the underbelly series and that they have created it.

The owners of the series have trademark the name and also would own copyright over the idea and the storyline. I have not logged in but if there is similarities with the characters as well as the storyline I'm sorry to say but you have definitely breached the law.

Now the situation is by you living in the United Kingdom whether or not they have registered trademark internationally and if they are protected in the United Kingdom. The only way you can ascertain that is by speaking to a solicitor in the United Kingdom and have them undertake various searches. If the series was also aided in the United Kingdom then I would say they have registered trademark.

If they pursue you in the courts by only need to show that a member of the public would be confused believing that they were behind the website and that you are profiting from their idea and their trademark and you will lose the case.

The profits and money you are making from this website would be deemed to be losses that they are making and the court could order you pay that amount in damages to the owners of the trademark.

You should speak to a solicitor the practices in intellectual property law and get more detailed advice from them. What I have told you is general information and from what you have provided me and what I have seen I suspect that you would not be successful if they pursued you for compensation.

I hope this is of assistance and if so please click on the accept button.

Customer replied 337 days and 13 hours ago.

Thank you for your detailed reply ,

I just have a ocuple more questions,

As with regards XXXXX XXXXX or similarities , there is no other reference to the tv series or any characters through out any of the series within this site. The only thing remaining is the word underbelly its self.

Would a disclaimer on the front page help?


What about their demands ,
are they just, do you feel it necessary that i comply to all of them?


I dont really want to just give them the domain. What if it were not used for its current purpose as well steering clear from using it in any way that could be confused or in conjunction with the series?

Do you think i could be in a position of offering them the sale of the domain its self, As i see the two ,domain name and script the site operates as entirely separate. The script being the intellectual property of my original partner in another venture with myself.


if it did go to court how would it work being that im living in the uk

and on an entirety different note, as per legal purists, if the domain were transferred to my partners name who is St lucian and lives in st lucia would they still be able to purse their claim.

thanks again

Accepted Answer

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Expert:  Sydney-Lawyer replied 337 days and 13 hours ago.

Good Morning,


If they have trademarked the name unless you get the permission they will not permit you to use it. With intellectual property ideas and brands are what are worth the money and even a disclaimer will not be enough.

If they are concerns and believe that you are trading off the name they will proceed to seek compensation.

You can try and request that they allow you to use the name but they do not have too.

In relation to the domain name you are the owner of that and they cannot force you to change that. If you wish to sell the domain name to them then you can negotiate a price but they cannot fight you on the ownership of that Eddie is yours.

It is the use of the name underbelly on the website that is the issue. You are in a very good position to sell the domain name to them if they wish to buy it.

It is not the domain name that they are objecting too, it is the use of the word underbelly in the website.

Transferring the domain to another person does not change anything if they wish to pursue for breach of trademark depending on how they have registered it they may be able to chase the other person.

I hope this is of assistance and if so please click on the accept button.

Expert TypeSolicitor
Category: Australia Law
Pos. Feedback: 96.1 %
Accepts: 16767
Answered: 5/22/2012

Experience: BEc Dip Ed, Dip Law (SAB) MTax (UNSW)

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Customer replied 313 days ago.

hello and thank you for your indepth and informed responce ,


as part of the advice from the first person i had just kinda been ignoring it to see where they would take it. Though after receiving a second letter i thought i should at least send them something , basically stating that i was awaiting information and legal advice before i would respond to any of their requests though if their client was interested that i may be willing to sell the domain name to them......

They have responded with this,

Dear Mr Sapere
Underbelly The Game
We refer to your email dated 6 June 2012.
We note that you are seeking advice regarding the matters raised in our letters of 3 May
2012 and 17 May 2012. We await your response in that regard.
In the meantime, and in relation to your offer to sell the domain name registration for
underbellythegame.com to our client, we are instructed to offer AU$1,000 including GST
on behalf of our client for the purchase of this domain name and any other domain name
that includes the word UNDERBELLY for which you are the registrant.
As part of an agreement to purchase the domain names from you, our client would require
your written undertaking that you will not, whether personally or as a director of any
company, register or use any domain name or trade mark identical to or confusingly
similar to our client’s trade mark UNDERBELLY, without our client’s prior written
consent, including use of the words “Underbelly the Game”.
We await your reply.o


..............

My question is this ,

Bearing in mind i would like to settle as if i were to go to court i would probably lose and possibly lead me to filing bankruptcy as have no means to pay both mine and there legal fees but the over i feel is only just plausible. I would like to ask for more though with out it being something that would be finite.

As in i don't wont $1000 for it as the time, effort , domain name page ranking , search engine presence ect is all quite high and over the 2 years has required 1000's of man hours but also i don't want to reply in a manner that would see them withdraw their offer.

I believe i have grounds to ask for more purely that they have responded and offered me something at all as well my assumption is that their lawyers would have In my opinion recommended a low offer first.

What would you recommend/suggest with regards XX XXXX contacting them in person or at this point acquiring representation and having them continue from this point.

Also being that im in the uk how best should i go about doing it at this point

Picture
Expert:  Sydney-Lawyer replied 312 days and 15 hours ago.

Good Morning


It is not a bad idea to contact them to discuss the offer further. Make sure that any discussions are without prejudice and off the record so that they cannot use these discussions against you.

I would definitely have representation in the negotiations to get the best deal for you.

I would suggest you contact the LAw Society of NSW and ask for a referral to a Solicitor that practices in IP law and then speak with them.

The website of the law society is as follows:

http://www.lawsociety.com.au/

I hope this is of assistance and if so please click on the accept button.

 
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