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Dimitry K., Esq.
Dimitry K., Esq., Attorney
Category: Intellectual Property Law
Satisfied Customers: 41220
Experience:  I assist my clients with IP questions that arise in their daily course of doing business.
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I currently own a website which the domain name was

Customer Question

Hello,
I currently own a website which the domain name was previously owned by someone else a few years ago (over 5+).
Since the name of the domain specifies a specify service, it is very similar to the website a few years back.
The owner of the domain name way back when has contacted me to and requested that I add a disclaimer that I am not the original owner of this domain or remove my slogan (which is very similar to theirs in the past).
I have e-mailed them back explaining that although our services are similar people are or should be aware that we are completely different entities. I have no claimed to be them.
I have refused to participate in any demands this person has set on me because a.) their website which closed over 7 years ago no longer exists. b.) their slogan is not trademarked and the domain name servers a specific identity.
They have threatened legal actual because I am using their previous identity and that have significant intellectual property and I am plagirising and pirating their content - which I feel is ridiculous.
The website I run serves one purpose and I don't even make a profit off of it nor do I charge people to visit it.
Should I be worry about this? Or shrug it off?
Submitted: 1 year ago.
Category: Intellectual Property Law
Expert:  Dimitry K., Esq. replied 1 year ago.

Thank you for your question. Please permit me to assist you with your concerns.

If I may ask, is their product still in use in any way, or is it also defunct? If it is still in use, their threat against you is valid. Shrugging it off can cost you because they can argue (and successfully argue it at that) that you are engaged in 'substantial infringement' into the likeness of their product, and that a regular user would not be able to reasonably distinguish between their product or yours. As such, if they claim losses and injury, they can sue you even if the slogan is defunct because if their item obtained a 'secondary meaning' in the eyes of others, and you are using that name or a similar one, they can sue for damages. It may be prudent and wise to add the disclaimer and avoid a lawsuit.

Sincerely,

Dimitry, Esq.

Customer: replied 1 year ago.

Hi Dimitry,

The website has no product. Is it simply a fan page dedicated to a celebrity. There is no product to sell, losses or injuries to be had. Their version of this website closed over 7 years ago and they have not re-opened it in any way, shape or form. It simply does not exist.

But my webpage is under the domain name they used to have and is dedicated to the same person, with the same slogan.

Expert:  Dimitry K., Esq. replied 1 year ago.

Hi,

Then you've just stated that you are capitalizing over that person's name and that same slogan--it is not a 'commercial' profit, but you are still utilizing that name and likeness without giving proper credit to the past owners. That is a potential suit because the issue here is not your profit, but their LOSS of profit over the reasonable confusion in the marketplace. On that basis they can file suit and demand that you cover their losses, if any, based on your infringement over their past product.

Sincerely,

Dimitry, Esq.

Customer: replied 1 year ago.

This person didn't make any profit or revenue from this webpage. It was simply a fan page dedicated to a celebrity. It was non-profit.

Is there still a concern with this?

Expert:  Dimitry K., Esq. replied 1 year ago.

Yes, it is still an issue. A non-profit can infringe as easily as a 'for-profit' and can be as easily sued for it. being a non-profit does not in any way protect someone from lawsuits. It may limit the amounts, but in either case you may be looking at fairly hefty intellectual property attorney bills because in IP typically if you are found to infringe, you pay their attorney fees as part of their award.

Sincerely,

Dimitry, Esq.

Customer: replied 1 year ago.

If I remove the slogan will I be in the clear?

Expert:  Dimitry K., Esq. replied 1 year ago.

Because you are using their past website name, I do not believe that would be sufficient. Adding the disclaimer is likely your best protection in this specific situation. But you can reach out to them and ask if removing the slogan will be enough--if they agree, get it in writing and that would be sufficient on your end.

Sincerely,

Dimitry, Esq.

Customer: replied 1 year ago.

In the event that I change the functionality of the webpage (ie. its functionally and operationally different than the original) - is using the slogan okay? Or no?

Expert:  Dimitry K., Esq. replied 1 year ago.

Hi,

"Substantial likeness" includes anything where a reasonable person would find there is enough similarity between the sites or products that there is reasonable confusion. If you change it enough that there is no confusion, that is likely sufficient. But again, you may want to reach out to them and work with them on what is reasonable and agreeable to you both. Perhaps such a change is not necessary.

Sincerely,

Dimitry, Esq.

Customer: replied 1 year ago.

An example would be:

The original website was message board where users connected and uploaded photos and discussed topics.

The website now is a photo gallery strictly for viewing photos.

Is this a big enough change?

Expert:  Dimitry K., Esq. replied 1 year ago.

I don't know. Without reviewing the sites I cannot honestly answer. You are asking me to guess, and I cannot do that as that won't do you any good. I also do not understand your reticence in speaking with the ones who sent you messages--that is generally the easiest way to resolve this matter. As far as changing the site, if you are still using the past name, there is still substantial likeness and on that basis there is potential infringement. If I were representing the other party I would advise them to consider filing suit.

Sincerely,

Dimitry, Esq.

PS. I do apologize but as it is late, I will be logging off to get some rest. Should you need me again, please reply but there may be a delay until I log back online. Otherwise, if satisfied, kindly do not forget to positively rate. Thank you!

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