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I just got a cease and desist email from Shutterfly.com threatening to sue me for "cybersquatting" under the The Anticybersquatting Consumer Protection Act. They say I have to take down my shirt site, Skutterfly.com and GIVE them my domain name by December 12th.
WTF.
Sure, the names are similar but they do photos. I print t-shirts for kids. Skull+Butterfly=Skutterfly. It has nothing to do with shutters, cameras, OR photos! I would totally understand if my site looked anything at all like theirs, or if my product had anything at all to do with client-supplied photos.
Anybody dealt with anything like this before? I'm thinking of just ignoring the email until I receive something certified mail.
I just got a cease and desist email from Shutterfly.com threatening to sue me for "cybersquatting" under the The Anticybersquatting Consumer Protection Act. They say I have to take down my shirt site, Skutterfly.com and GIVE them my domain name by December 12th.
WTF.
Sure, the names are similar but they do photos. I print t-shirts for kids. Skull+Butterfly=Skutterfly. It has nothing to do with shutters, cameras, OR photos! I would totally understand if my site looked anything at all like theirs, or if my product had anything at all to do with client-supplied photos.
Anybody dealt with anything like this before? I'm thinking of just ignoring the email until I receive something certified mail.
Nate
Actually its not really cybersquatting if you are using the site for your business. So as long as you use it, you should be ok.
I wouldn't ignore it. But I would tell them exactly what you just told us. Tell them why your site it called skutterfly.
But I wouldn't send it in an email. I would send it certified mail, and in it I would tell them to go fly a damn kite after you explain it to them!
EDIT:
I just went to your site and read the letter. They had the nerve to tell you "Happy Holidays" at the end!
They are trying to scare you. If you can afford it, get an attorney. My opinion is that they don't like it, but don't have much a leg to stand on.
They want it down, and figure they may be able to scare you into taking it down. They may also have the money for a long legal battle if it means that much to them.
I don't think they would win, and I don't think THEY think they would win. But they are betting you can't afford a long legal battle.
we have a neighbor who started a business called online collector car trader
and had the business name, web site, bussiness cards, and 2000 flyers made, vehicle graphics, banners for shows and more..
They got a cease and desist letter from autotrader.com stating they had all the car trader names registered.. they also demanded he turn over the domain name.
He has a business lawyer and was told that if he fought it the chances of him losing were 50/50 but that it would cost him prolly real big bucks to fight it.. and would drag on for years. and that. in the mean time.. he would prolly have to take the site down..
It really ticked me off that big companies can do this and do this.. as he was not trying to copy them.. The problem came in with the fact that his web site had very good rankings.. (was #3 in google) and getting loads of visitors each day..
He changed his companies name.. rather than fight.. on the advice of the lawyer..
But all that being said.. it would seem that your names are differant.. I think they are afraid of you getting traffic from typos.. of thier name..
I think you really need to see a lawyer if you can afford it.. and find the best course of action.
You need to contact a lawyer. And I've heard tons of complaints about prepaid legal, so don't even think about switching to that route if you think they might try it again.
See if anybody you know has somebody the can recommend. It's a lot better than going out there on your own and getting screwed by some lawyer that thinks you just want some advice. You know, kinda like the countless customers that walk through our doors and waste our time and then order from somewhere else.
I wouldn't take it too lightly. Your domain name is fairly close to shutterfly. For them to win they have to prove you registered the domain name in "bad faith" - which one of the tests for bad faith is intent to profit - which you do since you sel shirts. Looking at this from an outside point of view it could be very easily viewed from the court that you registered this name with intent to get traffic from typo's in order to sell shirts. So I would definetely not just sit on it - but get some real legal advice. It's amazing how a laws like this get twisted by lawyers and end up hurting the consumers that they were designed to protect.
Here is piece I found on the "bad faith" part - but I would definitely check with a lawyer on this.
In order to win a case of cyber squatting, plaintiff must prove that defendant has a bad faith intent to profit from the mark that is identical or confusingly similar or dilutes plaintiff’s mark. The key element is that plaintiff must prove that defendant has“bad faith intent to profit from the mark.” What this means is that if defendant merely registers the domain and does nothing with it commercially, plaintiff will have a difficult if not impossible time proving bad faith. Typically, intent to profit is shown by the use of the domain as a commercial site which sells goods or services
I think that I would pay to have an attorney send the letter with the info you first posted...why the name...etc...and see what happens... This is a case where you could win the battle and lose the war...by that I mean it could cost a ton of money to be right. Unfortunately the little guys often are right but still have to comply
I just got a cease and desist email from Shutterfly.com threatening to sue me for "cybersquatting" under the The Anticybersquatting Consumer Protection Act. They say I have to take down my shirt site, Skutterfly.com and GIVE them my domain name by December 12th.
WTF.
Sure, the names are similar but they do photos. I print t-shirts for kids. Skull+Butterfly=Skutterfly. It has nothing to do with shutters, cameras, OR photos! I would totally understand if my site looked anything at all like theirs, or if my product had anything at all to do with client-supplied photos.
Anybody dealt with anything like this before? I'm thinking of just ignoring the email until I receive something certified mail.
Nate
Hi Nate,
I deal a lot in domain names and this happens pretty often.
It seems obvious here that you didn't register the name in bad faith, but their lawyers feel that your domain is very similar to their trademark.
In the "domaining" world this is called "reverse hijacking". Where big name companies try to take smaller companies domain names that are similar based on the cybersquatting laws.
There are places like the EFF that defend cases like this for free. No guarantee that they'll take your case, but it might be worth contacting them with the details.
Here are some links that may help you with your case:
I'm not a lawyer, but I wouldn't ignore this I would suggest doing some research and maybe even contacting a few of the domain name organziations. Here's a lawyer that specializes in this type stuff: John Berryhill
Chad I would have to disagree with you a little bit. One of the tests of "bad faith" isn't intent to profit, but HOW you intend to profit. If your products are similar to the one in question, then that is the "bad faith" intent. If you are intending to profit by not having any useful content on the site, and are holding on to it simply to profit by selling to the company in question, that's bad faith.
Here's a little bit for those that don't want to read the entire page:
Quote:
However, you must distinguish cases where the cybersquatter is obviously acting in bad faith, from situations in which the individual has merely registered the domain with the good faith intent of doing something else with it (that is unrelated to trademark owner's goods and/or services).
The ACPA excludes a finding of bad faith where the domain name holder reasonably believed that the use was "fair use" or otherwise lawful. Accordingly, bad faith is the biggest component in an ACPA claim. So what is bad faith? There are several elements the federal courts will consider such as:
The trademark ownership rights held by the mark owner; The closeness of the domain name and the cybersquatter's name; The cybersquatter's commercial use of the domain name for access to a web site; The cybersquatter's intent to divert web traffic from the mark owner; The cybersquatter's offer to sell the domain name to the mark owner; Whether the defendant gave misleading information when registering the domain; and Similar or repeated cybersquatting on other marks. For example, in Hasbro Inc. v. Clue Computing Inc.[66 F. Supp.2d 177 (D. Mass 2000)], the district court held that Clue Computing's use of its registered domain name clue.com, was in fair use, despite Hasbro's existing registration of the trademark "Clue" for its famous board game. The two company's fields in which the names were used were not related; Clue Computing had registered the disputed domain name first, used it in legitimate commerce, and not attempted to sell the domain name to Hasbro.
If t-shirts are being sold, I hardly see how it's "bad faith".
The case Microsoft has against some defendants is "bad faith".
They were registering domain names that consumers looking for microsoft products would likely type in. Then all they would see is a list of names. The domain registrars would get paid per click. No useful content, or anything.
That's bad faith in my opinion.
Going to a site with a similar name, but finding out that it has nothing to do with what you were trying to find even though there is useful content, doesn't seem like bad faith on the part of the similar site.
I definitely don't think the intent was bad faith. I have just experienced how some of these lawyers will twist and turn anything to make it look that way. And unfortunately in the world of law it is how things are presented and perceived.
The easiest arguement here is that you made your name similiar enough to steal traffic and why not use butterskull.com or skullerfly.com, etc. Instead you chose to use skutterfly.com so that you could steal traffic from shutterfly for your own personal profit. They could say you were using the same marketing technique as grocery stores - they put items that haven NOTHING to do with what you are looking for right in front of your face so that they can sell to the impulse buyer - Hence you "bad faith" intentions were to do the same with everyone that was intending on visiting shutterfly.com but instead found t-shirts for kids.
Again I am just throwing this out there and not accusing you. I have had first hand experience with lawyers doing this to me - not with domains but other legal battles. They have a knack of taking something completely innocent and making you look like your evil of all evils.
The whole legal world is crazy and sometime just the opposite of common sense.
My 2 cents----------- I think in order to show bad faith you would have to have similiar to identical products offered ,, you have none of those offerings,, I think that they would be hard pressed to argue that they are damaged because of your name only,,,
I see what you're saying, Chad. But I think Nate's biggest ally is the case of clue that I referred to earlier.
Quote:
...the district court held that Clue Computing's use of its registered domain name clue.com, was in fair use, despite Hasbro's existing registration of the trademark "Clue" for its famous board game. The two company's fields in which the names were used were not related; Clue Computing had registered the disputed domain name first, used it in legitimate commerce, and not attempted to sell the domain name to Hasbro. UDRP or ACPA?
Nate, I would tell them to take a look at this, and see if they want to take their chances.
I'm sure they're betting on you not knowing what's going on, getting scared, and just giving it up. That makes it easy.
If they see that you have some knowledge on the matter, and are familiar with a case that's similar, then they may come to their senses.
.
Shutterfly sent me a cease & desist 
I would suggest doing some research and maybe even contacting a few of the domain name organziations. Here's a lawyer that specializes in this type stuff: 
