Spammers with Lawyers: Take Note

I received this email in regards to my use of the MTBlacklist plugin, and a dispute over the inclusion of a certain domain name on my customized copy of the blacklist used on this blog.

I come to you representing my client www.blehblehbleh.com as they have noticed that their website is listed in your blacklist.

I ask you to remove their domain from your blacklist, since they have no reason for being listed in such a blacklist and it may represent some damage to their image.

To prevent a possible indemnity (Slander and Dilution of Trademark) I ask you to remove the domain www.blehblehbleh.com from all the blacklists, since you are the author of them and the responsibility to indemnify any damage to their image and/or business is yours and will be charged judicially.

We understand that you may have listed the domain name without full knowledge of the law in this area. Your blacklist and use of the above domain name violates the Lanham Act (15 U.S.C. 1051 et seq.), because it infringes and dilutes our trademark. Infringement occurs when a third party’s use of another’s trademark (or a confusingly similar variation thereof) is likely to confuse consumers as to the affiliation; sponsorship or endorsements of the third party�s services are negative and even un-professional. Trademark dilution occurs when a third party’s use of a variation of another’s trademark is likely to lessen the distinctiveness of that famous trademark. Additionally, the Anticybersquatting Consumer Protection Act (http://www.submerged-ideas.com/litigation/anticybersquat.htm) provides for serious penalties (up to $100,000 per occurrence) against person(s) who use, slander, or offer a service that infringes or dilutes another’s trademark.

Please reply by Dec, 10th 2004 of your position in this instance to prevent impending litigation.

E—- L—-

My reply:

Although different courts have different tests, the central concept of Lanham Act (15 U.S.C. 1051 et seq.) is confusion in the marketplace. The law protects against consumer confusion by ensuring that the marks on the same or similar products or services are sufficiently different. A plaintiff in a trademark infringement case generally must prove 1) it possesses a valid mark; 2) that the defendant used the mark; 3) that the defendant used the mark in commerce, “in connection with the sale, offering for sale, distribution or advertising” of goods and services; and 4) that the defendant used the mark in a manner likely to confuse consumers.

Thank you for bringing this matter to my attention.

If E.L., who says she represents her client but who appears in no legal bar association registry that I could find, decides to pursue the matter, I will also pursue the collection of ad fees from the domain’s registered owner, and I will bring to the attention of ebay, inc. the matter of her client’s use of ebay’s name in their domain name as a trademark infringement under the very law they quoted and threatened me with. I assume ebay would likely have some interest in protecting their own trademark, especially when sending threatening litigation letters, don’t you?

*Update : In addition, I have just completed a report on this matter to the Chilling Effects Clearinghouse. We’ll see what their lawyers decide.

**Another Update : I have just notified ebay.com of the above trademark infringement by the complainant.