Domain name owner sues media company after receiving cease & desist letter.
Semoran LLC, which owns the web site and domain name FloridaWeekly.com, has filed a lawsuit against a Florida media company in response to that company’s request for the FloridaWeekly.com domain name.
Semoran received a cease & desist letter from MacFarlane Ferguson & McMullen, which represents Florida Media Group, LLC. It appears that Florida Media Group recently launched a newspaper that uses the domain name Florida-Weekly.com. That is, of course, a horrible domain name for any purpose. Many people will not type the hyphen and end up at FloridaWeekly.com.
FloridaWeekly.com was registered in 2003, long before Florida Media Group’s launch of Florida-Weekly.com earlier this year. But that didn’t stop Florida Media Group from asserting that Semoran was infrining on its trademark. The cease & desist letter demanded that Semoran hand over the domain name for no more thena $1,000.
Technically, this doesn’t qualify as a reverse hijacking case unless Floria Media Group files a UDRP. But it’s basically the same thing. A company realizes it doesn’t own what it wants, so it tries to bully a small guy without deep pockets. But in this case Semoran scrapped together enough money to hire a lawyer. Semoran filed a lawsuit against Florida Media Group to get it to drop its pursuit. Semoran is not asking for any money.
On the FloridaWeekly.com web site, Semoran says, “We felt like someone moved into our neighborhood and then they told us that they wanted our house for a fraction of its true value or they would knock it down.”
The Internet Commerce Association led Semoran in the right direction in this case.
Rob Chandler says
Great job on the part of the domain owner! They clearly have the lawful right to their domain. I hope that the media company, and the law firm they hired, get the negative publicity they deserve as a result of their bully tactics! I received my fair share of cease and deceist letters early on (back in ’98) and gave in to them beacause of the fear and intimidation they instilled in me with their mention of possible fines and even jail time! I was a recent graduate back then more worried about starting and maintaining a career.
DomainerPro says
And FloridaWeekly.com is not just a parking page, either. It’s a genuine, active blog. Amazing that the other company thought they could just take it away.
nysit says
Great find! Thanks for sharing this story.
Bo says
Florida Media Group, LLC have no right and domain owner should also sue for his legal costs. He should really do a Web blitz listing the papers they own with phone and e-mail address and get the public to contact them to stop their bullying. Bad publicity sometimes works better than the legal system.
Ken says
Florida Media Group LLC has retained new counsel and fired their first law firm, and our lawyer reports that this new counsel appears to be professional. That bodes well for a mutually agreeable solution, but one never knows what the other party wants.
Their deadline for a response had nearly passed before their new counsel, Holland and Knight, contacted us to ask for an extension. We granted them an extension to file their response and we have again offered arbitration before the INTA (International Trademark Association). We’re now waiting to hear back from them on that.
They also filed to remove the case from state court and send it to Federal court. Now the state trademark and their recently filed Federal trademark application are combined in the case.
Support:
We have posted some of our domains for sale on our support page . More extensions will be added soon. We are also offering advertising on floridaweekly.com as well as some of our other domains. Please contact us at [email protected] for more information. We are raising money and awareness to support this fight against a trademark bully.
Thanks everyone.
Andrew says
Thanks for the update, Ken.
Ken says
I just want to give everyone an update on the case.
We’ve tried for more than a month to negotiate with Florida Media Group LLC and their lawyers. We’ve even offered them arbitration and early mediation again and they have refused both. Their terms and responses to date have for the most part been unreasonable.
As of today we have told them to file their response to our lawsuit. If this pushes forward everyone will have an opportunity to see all the evidence once discoveries are completed.
Andrew says
Thanks for the update, Ken. We’re all pulling for you.
Ken says
The defendant, Florida Media Group LLC, has finally filed their response to our Federal lawsuit against them. We are still reviewing it before we fill our response back so I cannot issue any specific comments here about it until then. I will say that we were very happy that they finally stepped up after dragging this out for almost four months. Now we can get to the brass tacks.
You’ll find some of my next comments very interesting …
Ken says
The USPTO has [B]refused[/B] Florida Media Group’s Federal application for the “Florida Weekly” mark (http://www.floridaweekly.com/legal/USPTO%20refusal%20of%20FMG%20trademark.doc). They filed this application on the very day we spoke to them for the first time. They have only used (first use in commerce) the name “Fort Myers Florida Weekly” since April 2007 so they cannot even get a 2(F) registration.
Couple that with the facts that we bought and have been using the names two years before they existed and their recent admission (response) to making offers to buy the domain back in June 2007 before they even notified us about their recent use or C&D letter.
We’ll have more soon after we’ve reviewed the rest of their response…