Threatened with legal action

[Magsite]

Can I have your views on the following email I received for http://www.the-euromillions-syndicate.com/

I have since added a box at the top of the page saying its not owned by euromillions etc.

From: Colombe DOUGNAC [mailto:[email protected]]

Re : EURO MILLIONS c/ THE-EUROMILLIONS-SYNDICATE.COM registered on the name of MO on October 27, 2005

Dear Sir,

We hereby intervene in the name and on behalf of our client, the Company Service aux Loteries en Europe (SLE) owner of the EUROMILLIONS trademarks being operated by different national lotteries.

Accordingly, SLE is the owner of numerous « EUROMILLIONS » trademarks all around the world and in particular the following trademarks:

- Community trademark EURO MILLIONS n°3644564 filed on January 27, 2004 in the name of SLE in classes 9, 16, 28, 35, 38 and 41

- French trademark EURO MILLIONS n°023183558 filed on September 16, 2002 in the name of SLE in classes 9, 16, 18, 25, 28, 38 and 41

- Community trademark EUROMILLIONS n°2987568 filed on December 23, 2002 in the name of SLE in classes 9, 16, 28, 35, 36, 38 and 41

- Community trademark EUROMILLIONS n°2871283 filed on September 30, 2002 in the name of SLE in classes 9, 16, 18, 25, 28, 38 and 41

- International trademark EURO MILLIONS n°847434 filed on July 12, 2004 in the name of SLE in classes 9, 16, 28, 35, 38 and 41

- International trademark EUROMILLIONS n°855526 filed on October 27, 2004 in the name of SLE in classes 9, 16, 28, 35, 36, 38 and 41

Moreover, our client is the owner of several domain names, notably euromillions.fr.

We have been aware of the reservation by your Company of the domain name THE-EUROMILLIONS-SYNDICATE.COM, which proposes numerous lottery games, in particular the game EURO MILLIONS, directly competitive of our client’s business and which redirects to the general website of E-Lottery www.virtualworlddirect.com.

We inform that the reservation of the domain name THE-EUROMILLIONS-SYNDICATE.COM and the use of the denomination EURO MILLIONS without any authorisation of our client infringe the trademark rights of SLE.
Indeed, customers could believe that the website is accredited by our client.

Moreover, considering the well-know character and the success of the game EUROMILLIONS through Europe, this use has been made without any bona fide and appears to be highly fraudulent.

Indeed, the use of the term EURO MILLIONS, which is well-known, is a good way to attract customers to your business.

Thus, you are making an illegitimate use of this denomination, with intent for commercial gain to divert consumers and to tarnish the trademarks at issue.

Consequently, we request that you immediately proceed with the retrocession of this domain name to our client for you out of pocket expenses and to stop the exploitation of the website.

If we have no positive answer immediately we will recommend to our client to take legal steps against you and in particular to engage an UDRP complaint against you before WIPO.

Looking forward to reading from you,

Yours faithfully,

Eric SCHAHL / Juliette ROBIN

 

[Ozzy]

You should receive that notice in writing rather than email, and you should request as such. However, it seems you might lose this one.

 

[webit]

Seem ligit.

http://www.inlex.com/uk/home.asp

http://www.inlex.com/uk/equipe.asp

 

[Eagle]

 
Ask them to file it by post. That'll buy you some time to consult.

 

[Alpha]

It does seem legitimate however the one minor discrepancy is that Juliette ROBIN is actually named Juliette Robin-Vernay.

Any way you need it in writing not via e mail

It would also be worth contacting some of the (seemingly) 100's of other domains that have Euro millions in the domain name to see if they have been threatened with similar.

 

[crus]

PM sent

 

[SillyJokes]

You'll be getting the letter shortly, plus a fax if you have one.

Bothering websites in this way must be whole industry of itself in lawyer land.

That said, if you use someone else's business and good standing to make money without their permission......

You'll probably have to capitulate, after they are not called Euromillions for nothing, they have plenty of money to throw at this kind of thing.

 

[bwglaw]

A rule for lawyers is that if you threat to take legal action put it in writing and send by recorded delivery.

Call their bluff - ask them to submit their complaint in writing and that you will reply accordingly. It could be a scam to get you to surrender a domain name.

If it does become a battle, just email me and I will assist.

Jonathan

 

[Magsite]

Many thanks for all your advice!

Fingers crossed"

Lisa

 

[fastfences]

Hi Lisa,
I hope Mally will be ok whilst you're doing a stretch!
Cheers, Nigel

 

[Magsite]

Well I'll be alright its all in his name!!

I'm just the pretty face lol

Lisa

 

[Magsite]

Well the letter, a duplicate of the above has arrived from France. Registered post.

What should I be doing now??

Cheers

Lisa

 

[SillyJokes]

deciding whether this website is really worth any hassle.

If it's going to keep you awake at nights worrying about it or you are not going to take a significant dip in income just try to be philosophical.

You are using the trademark name of euromillions without their permission. Can you really afford to fight them or would your energy be better spent on making another new website?

 

[creospace]

My advice is, get some legal advice from a solicitor.

I would stick my neck out with regard the domain name and say -EUROMILLIONS- is not a name but a mere collection of leters that when placed together appear to form a word that is considered to have a likeness to that of yoru clients. of that it is infact 2 different words put togehter without a - breaking them apart such as EU romillions or Eurom illions or Euromilli Lions!

Of coure you'll still need to take the site down but at least you won't loose the domain name? Then stick a site up featuring some lions in a group (syndicate) called 'euromilli'

 

[Magsite]

An update.

When I received the email I replied with the following

I have read your email and have made it clear on my website that my site is not affiliated to or approved by your client.

There is various caselaw in various countries covering the use of domain names and the domain name doesn't claim to be associated with your client.

Please send all other correspondance to my home address. Email is hard to athenticate.

Regards

I have just received the following reply

O/Ref : ES/JR/CD – LI7410GB33531



Re : THE-EUROMILLIONS-SYNDICATE.COM registered on the name of Malcom Ord on October 27, 2005

Dear Sir,
We revert to you further your e-mail attached below.

We have duly noted you are now indicating that your website is not affiliated to or approved by our client SLE.

However, our client does not consider this modification as sufficiently satisfactory and deems that you are still infringing its prior rights.

Consequently, we confirm you that we request the followings points:
- to proceed with the retrocession of this domain name to our client SLE for you out of pocket expenses ;
- to stop the exploitation of the website;
- to undertake never to proceed with the reservation of domain incorporating any right of our client.
We are therefore waiting for your reply in accordance with our client’s claim as soon as you receive this e-mail.
We look forward to reading from you,
Yours faithfully,

Eric SCHAHL / Juliette ROBIN

 

[SillyJokes]

Every email they send you via their lawyers racks up the costs which they may come after you for to the tune of hundreds of pounds a piece.

Again, apart from the 'principle of the thing', is this website really worth the thousands of pounds this would cost you to attempt to protect it, an exercise I think may be futile if they have trademarked the term Euromillions which you use to promote your business.

I am not a lawyer, but I have had experience of this kind of letter.

I know it gets you very upset and belligerent, but the bottom line is, how much can you afford to loose? Deep down, don't you see that your site is on shaky ground?

Wouldn't your fantastic energy, which is what makes you a success in business, be better directed on working on a new website for you rather than lining these lawyers pockets??

 

[webit]

- to proceed with the retrocession of this domain name to our client SLE for you out of pocket expenses ;

Whats SLE (subject to legal expenses ?)

 

[mattk]

SLE is the name of the company who owns the trademark to Euromillions.

 

[webit]

So are they offering to pay Lisa'a out of pocket costs?

 

[Top Hat]

So are they offering to pay Lisa'a out of pocket costs?

Not very clear is it, I think it probably means you pay their out of pocket expenses.

 

[webit]

That would be my guess despite the wording.

 

[bwglaw]

There are grammar errors in the letter and it does not seem to be drafted in a lawyer-like way but that could be down to the French-English translation.

I checked ilex.com and they appear to be some kind of law firm/consultancy. My advice to you would be to check that the request is genuine and if so then enter into an agreement with them to surrender the domain name and transfer the same and ensure that they meet all costs of this (as they appear to have offered)

In my opinion, you may be infringing their copyright and they have mentioned that the domain is pointing to another site, which may be cyber-squatting. By adding a statement to say it is not connected with the Euromillions that the lawyers refer to, is not sufficient to evade any liability, especially if they have registered 'Euromillions' as a trademark

If you decide to resist the request and it leads to further action the costs are likely to be very high indeed. First you would be looking to pay a lawyer in the region of 180/hour. You may not be liable to pay the other sides costs because it is arbitration and not a civil court but French law may be different, and this is where it gets more complex.

I would be happy to assist with drafting the agreement to surrender/transfer the domain and setting out the terms through to completion of transfer and confirmation that no further action will be taken.

Jonathan

 

[creospace]

This brings up an interesting point with domain names, if you register a name that spells a differnt name without correct breaks in it are you infrigning on trademarks?

ie i have 2 lions called Euro & Mill and I register a domain name euromillions am I actually breaking a trademark law?

Gary

 

[bwglaw]

I am not a trademark specialist so can only comment generally. If you had for instance euromill.com and the site is about lotteries you may be in breach because it is likely to cause confusion.

The content of the site may be a factor to determine whether you are in breach because this would effectively determine which class the trademark is likely to fall under and whether it actually infringes the same class is the registered trademark.

Just by having a domain name that is spelt the same or identical and is likely to cause confusion of a protected name then not only actionable as a trademark infringment (if registered) but in common law as 'passing off' by knowingly direct traffic intended for the business using the same/identical name for your own gain.

Some actions fail for different reasons so if anyone runs into this problem they should consult with a trademark lawyer.

Jonathan

 

[mattk]

This brings up an interesting point with domain names, if you register a name that spells a differnt name without correct breaks in it are you infrigning on trademarks?

ie i have 2 lions called Euro & Mill and I register a domain name euromillions am I actually breaking a trademark law?

Gary

Do you remember the story about the kid called Mike Rowe and his Web site MikeRoweSoft.com?

http://www.theregister.co.uk/2004/01/26/sir_bill_of_seattle_settles/

 

[VeryMark]

Using a confusingly similar name is still trade mark infringement, I'm afraid.

Using someone else's trade mark in your domain name is only permissible in certain circumstances, e.g. if it's a legitimate complaint or fan site.

Using someone else's trade mark in your domain name in order to gain a commercial benefit may lose you the domain name unless you can show a bona fide reason for registration.

We are familiar with the ICANN Universal Dispute Resolution Procedure (UDRP) rules and have experience of both prosecuting and defending domain name complaints before the WIPO (World Intellectual Property Organisation) Arbitration & Mediation Centre in Geneva.