Request for advice regarding: Demand to Cease Use of "thewarmcompany.com"

[chris raettig <chris@raettig.org>]

this open email is being distributed to a number of people, with the
aim of soliciting best advice on how to offer response to the mail
we received on friday, which i include. i am also copying this email to
my personal website at http://chris.raettig.org. 

i am one of two founders of warm company. a small collective of
creative technologists based in london, england. we received the
enclosed email on friday insisting that we cease and desist use of
the internet domain name 'thewarmcompany.com'. 

if our best advice is that the complainant has a greater legal right
to the domain than we do, then we are obviously happy to do the
right thing. however i am not currently convinced that this is the
case and would be very grateful for any pointers. please feel free
to forward this message as widely as seems appropriate. 


my initial thoughts are;

1. the complainant accuses us of violating their trademark. my limited
understanding of trademark law is that it applies to specific areas.
they (www.warmcompany.com) are "dedicated to providing innovative
quality products for the quilting, crafting and sewing industry".
we (www.thewarmcompany.com) work exclusively within the realms of
internet/web design and technology. a brief search of the trademark
databases through www.marksonline.com and www.uspto.gov suggest no
registered trademarks at all for warm company. certainly none which
apply to our sector. 

2. the complainant further insists that we are violating both us
and uk anti-cybersquatting legislation. i am not a lawyer. however
my limited understanding of such legislation, including the 1999
anti-cybersquatting piracy act leads me to believe that stating that
we are in violation includes an implication that the domain was
registered in 'bad faith'. this i certainly do not believe to be
the case. we are in good faith offering goods and services entirely
unrelated to the complainant. we are making no attempt to deceive 
visitors to the site and given the difference in market sectors
consider any confusion unlikely. in the registration and use of
the domain name we have never had any intention at any stage of
selling the domain name on. 

3. if this domain name were so important to the complainant as to
instigate legal proceedings, why was it not important enough for
them to have registered it themselves previously?

4. is email a valid method of serving a cease and desist notification?
surely this should be done through conventional mail?


i am aware of how many cease and desist letters are sent out with
little if any legal grounding, in an attempt to frighten the 
accused into giving up their domain name. as i have stated, i do
not know this to be the case in this instance. but given the
frequency of such things i consider it in our interests to 
make sure we are well informed. 

any advice or support that can be offered would be gratefully received.
we have been asked to issue a response by tuesday may 21st. 


sincerely,
chrisr.




----- Forwarded message from "J. Stephen Simms" <jssimms@gslaw.com> -----

> X-Mailer: Novell GroupWise 5.5.5
> Date: Fri, 17 May 2002 17:57:42 -0400
> From: "J. Stephen Simms" <jssimms@gslaw.com>
> To: <accounts@thewarmcompany.com>, <chris@thewarmcompany.com>,
>    <derek@thewarmcompany.com>, <press@thewarmcompany.com>,
>    <studio@thewarmcompany.com>, <support@thewarmcompany.com>
> Cc: "Jennifer Lantz" <jalantz@gslaw.com>,
>    "W. Charles Bailey, Jr." <wcbailey@gslaw.com>
> Subject: Demand to Cease Use of "thewarmcompany.com"
> X-MIME-Autoconverted: from quoted-printable to 8bit by www.affective.org id g4HM3iI01784
> 
> ** High Priority **
> ** Reply Requested by 5/21/2002 (Tuesday) **
> 
> Gentlemen:
> 
> We are lawyers instructed by The Warm Company, Seattle, Washington 
(http://www.warmcompany.com).
> 
> The Warm Company is the owner of the trademark for The Warm Company.
> 
> We have noted your recently-registered domain name, "thewarmcompany.com"  
This domain name, as well as the name that you recently have chosen for your company, 
violates The Warm Company's trademark rights.  The registration of the domain name further 
violates both US and UK anti-cyber-squatting laws.
> 
> The Warm Company demands that you immediately cease use of "thewarmcompany.com" 
domain name, and de-link any web presence, including email and your web site, from that 
domain.  The Warm Company further demands that you cease use of the name "The Warm 
Company."
> 
> So that The Warm Company does not have to consider further action, please 
confirm by return, not later than 21 May, 2002, that you have ceased use of the 
domain name "thewarmcompany.com"
> 
> 
> 
> Sincerely,
> J. Stephen Simms
> Greber & Simms
> 410-783-5795
> 410-510-1563 (f)
> http://www.gslaw.com

----- End forwarded message -----



--
chris raettig   warm company   http://www.thewarmcompany.com
chris@raettig.org   http://chris.raettig.org