Main spacenews.org threatened with legal action by spacenews.com (karma: 1)
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By webmaster  Comments: 253, member since Sun Mar 07, 1999On Tue Oct 26, 1999 12:38 PM
Spacenews.org was sent a cease and desist letter alleging trademark infringement of the "SPACE NEWS" trademark held by Gannett Co., Inc, owner of the spacenews.com website. I obviously don't agree with this. I set up this site to share my interest in astronomy news similar to the way Slashdot.org shares news and generates discussion. I do this as a hobby and do not sell products or services through this site.
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After researching recent domain name trademark cases, I believe spacenews.org does not infringe their mark for a variety of reasons: this site is non-commercial neither selling services or products, and I use "space news" in its ordinary meaning. When a common word or phrase is used as a mark for its ordinary meaning, the mark is generic. In <a href="
www.phillipsnizer.com . . .">America Online, Inc. v. AT&T Corp.
</a>, the court decided that generic marks never qualify for the protection of the Lanham Act. In <a href="http://www.phillipsnizer.com/int-art143.htm">Radio Channel Networks, Inc. v. Broadcast.Com, Inc., f/k/a/ Audionet, et al.</a>, the court said that "radio channel" is a fair use of a mark since it was used in good faith and in its descriptive sense.
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I believe this is simply another case of a big corporate giant trying to muscle the little guy out of their "territory." I work full-time and do this in my spare time, so I don't have the resources to fight this by myself. If you run a non-commercial .org, you could be next. I'm asking for advice on what to do. Any feedback will be appreciated! (Click on [more] to read the cease and desist letter.)
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Thanks!
Here is a copy of the letter sent via Federal Express:
DOW, LOHNES & ALBERTSON, PLLC
ATTORNEYS AT LAW
Washington, D.C.
1200 New Hampshire Avenue, N.W.
Suite 800
Washington, D.C.
20036-6802
Telephone 202-776-2000
Facsimile 202-776-2222
One Ravinia Drive
Suite 1600
Atlanta, Georgia
30346-2108
Telephone 770-901-8800
Facsimile 770-901-8874
KEVIN J. KUZAS
DIRECT DIAL 202-776-2934
kkuzas@dlalaw.com
October 6, 1999
VIA FEDERAL EXPRESS
XP.COM LLC
xxxxxxxxxxx
Denver, CO xxxxx
Re: Infringement of SPACE NEWS Trademark
We are counsel to Gannett Co., Inc. ("Gannett"), owner of the Space News(r) newspaper and spacenews.com website. The newspaper has operated and promoted itself under the mark SPACE NEWS(R) since September 9, 1989. The SPACE NEWS(R) mark has been federally registered since September 18, 1990.
It recently came to our client's attention that you have registered the domain name "spacenews.org." Your unauthorized use or registration of the SPACE NEWS(R) mark as a domain name violates state and federal laws prohibiting trademark infringement and unfair competition, and dilutes the value of the SPACE NEWS(R) mark as a distinctive brand of high quality newspapers and online services. 15 U.S.C. // 1125, 1127. Your company's unlawful conduct, if not ceased immediately, could subject it to damages that are three times the amount of your company's profits or our client's damages, whichever is greater. Additionally, our client would be entitled to court costs and attorneys' fees. 15 U.S.C. / 1117.
Trademark law requires Gannett to act aggressively to prevent unauthorized uses of its marks. Gannett is prepared to take all necessary legal steps against you and your company to ensure that you cease use of the domain name spacenews.org and transfer that domain name to the newspaper.
If you wish to avoid further legal action against you, we require that within ten (10) days of the date of this letter, you verify in writing that you will immediately cease use of the spacenews.org domain name, and that you will promptly transfer the domain name to the newspaper by completing the enclosed InterNIC transfer agreement, having it notarized where indicated, and returning it to us by mail. If we do not receive a timely response from you, Gannett will be forced to take additional actions it deems appropriate to protect its intellectual property rights.
We look forward to a response from you or your counsel.
Sincerely,
Kevin Kuzas
cc: Margo Szeliga
Barbara Wall
Brooks Johnson
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