Legal action threat advice

I have been running a couple of sites for a few years now and on my forum I have had mention of the name Auto Trader Spain.

Yesterday I received the following contact

Dear Sirs

We represent Trader Publishing Limited, a company registered in England and Wales (Company No. 03909628). Our client is a market leading publisher and produces a number of publications and websites in connection with the automotive industry including publications and websites under the mark AUTO TRADER in the UK and across Europe.

Our Client's Rights

Our client is the proprietor of numerous trade marks for 'AUTO TRADER' across the UK and Europe. Its registrations include Community Trade Marks ("CTMs") for the trade mark 'AUTO TRADER'. It is also the proprietor of the Spanish Trade Mark 'AUTO TRADER' as a word and device mark (Registration number 2019133).

The Law

Article 9(1)(a) of Council Regulation 207/209 ("the Regulation") provides that a mark is infringed whereby someone uses a sign which is identical to the mark in relation to goods or services which are identical to those for which the mark is registered.
Article 9(1)(b) of the Regulation provides that a mark is infringed whereby someone uses a sign which is identical or similar to the mark in relation to services which are identical or similar to those for which the mark is registered and there is a likelihood of confusion on behalf of the public.
Article 9(1)(c) of the Regulation provides that a mark which has acquired a reputation is infringed whereby someone uses a sign that is identical or similar to the mark in relation to identical, similar or dissimilar services and the use of the sign is without due cause and takes unfair advantage of, or is detrimental to the distinctive character of the repute of the mark.

Your Activities

It has come to our client's attention that, without our client's authorisation, you are offering, via the domain names www.autotraderspain.net and www.autotraderes.net classified car listings under the name 'AutoTrader Spain'. There are no contact details on either of these sites, and we are therefore contacting you via this website.

Your use of these domain names and the AUTO TRADER mark as described above infringes the exclusive rights held by our client. Our client is entitled to bring proceedings in relation to the infringement of its right. In such proceedings our client would be entitled to claim:
1. an order to prevent further acts of infringement including the transfer of the domain name to our client;
2. an order for delivery up of all infringing goods, materials or articles which you may have in your possession;
3. damages
4. legal costs
Our client regards any infringement of its intellectual property as a serious matter and if necessary will commence proceedings to protect and enforce its rights. However, our client has no wish to engage in litigation if it can be avoided. If you confirm to us in writing by no later than 20 August 2009 that you will immediately cease all infringing activities and transfer the domain names to our client within 21 days of that confirmation our client will refrain from issuing proceedings, and will waive its claim for damages and costs.

If you choose not to provide this confirmation, all of our client's rights are reserved. Please provide your response, including details of your company/trading name and registered address via email to ##### (copying in #######) by no later than 20 August 2009. We would suggest that you take urgent legal advice on the contents of this communication.

If these assurances are not received from you the above date our client will take legal steps to stop the infringement and bring about the transfer of the domain names. In such circumstances, it will seek to recover its costs in taking such action and reserves its right to seek damages for the infringements.

We look forward to hearing from you.
Yours faithfully

Then today after killing the two offending websites

Dear Sir or Madam
I am responding to your email below. I note that you state you will remove ‘reference to the Auto Trader Spain trade mark’ from the three websites listed below. For the avoidance of doubt, we require the removal of all references to our client’s trade mark ‘AUTO TRADER’ from across all three websites.
Further, as set out in the second contact with your site (entitled ‘Second complaint re www.autotraderspain.net & www.autotraderes.net) these two domain names contain our client’s trade mark and we require that these domains (along with any others held by you/your organisation which contain our client’s mark) be immediately transferred to our client.
In addition, we require your written confirmation that you will immediately cease all infringing actions. Please find below the wording of this confirmation, which should be precisely retyped onto your business letterhead paper, signed and returned to us no later than 20th August. In the interim, please provide via email your name, business trading name and postal address.
Assuming you comply with all of these requirements, our client will take no further action in this matter. However, if you do not comply, all of our client’s rights are expressly reserved, including its right to seek damages and costs.
Yours faithfully

Im not a company, just a private individual.

Am I in the proverbial or what advice would you guys give

as the names are their registered trademarks there is not much you can do. However as far as i know if you purchased these domain names before trademark registration , you should be able to continue using those domains.

As you are a private individual , you should sing those papers with your personal information.

They have "auto trader" registered in Spain, from some checks I have just done. Which does seem an open ended term to a certain extent.

They have no publications or website to be in conflict with.

How would the law stand if they are a UK based solicitors and Im in another country, which laws and judicial system apply

Its taken them two years to even notice the offending website when its been page one for a year or so for the term.

I suggest you to get legal advise on this matter as these kind of things may require some specific laws on the country you are living at.

Personally, I would tell 'em where to shove it, or simply not replay at all until something certified in the mail came in.

You want my name? take me to court. I won't do it over email.

You can tell Brians back

Thats the lines Im tempted to go down. They have no operation listed in Spain
Contact Us - Trader Media Group

So what the hell they are doing pursuing me over web sites I have been running for several years which had no resemblance to their own apart from it was giving free classified motoring adverts.

Plus my contact details are hidden on all my websites and then you will only get a PO Box, if you pursue it any further.

There are legal channels they can persue... but who's to say it's even legit? I wouldn't do anything until something from the courthouse or something else comes in.

I delt with something similar years ago with the company lowes. I owned a domain that they didn't like. Since they were the trademark holder, and I said I wanted money for the domain over the amount that I purchased it for, they got me for rules under ICANN. Specifically:

"your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and"
"your domain name has been registered and is being used in bad faith."

After a large packet arrived at my house from their lawyers, I gave up and handed over the domain.

Notice that lowes owns just about every domain that has their name in it - including ones like lowessucks.com

Now, I don't know the reach of the ICANN domain rules, but I guess it depends on what country/court will recognize them.

I can tell you now that AutoTrader will take you to the cleaners. They are another Dell when it comes to protecting their brand.

So is it any use of the two words in a title thats prohibited under copyright.

For example #### and motoring ##### Spain

Would that be acceptable or would you still fall into the naughty books so to speak

This phrase seems to make it look like they are just trying to shit you up (although as I said before they do fight for brand exclusivity):
"If you choose not to provide this confirmation, all of our client's rights are reserved."
In other words we are going to threaten you, but we reserve the right to do jack.

Just remove the trademarked work and redirect the domain name to something their trademark doesn't cover (like a garden center or medical website etc). Let the domain name drop when it expires. That's the probably the easiest way to deal with it.

I certainly would ignore any threats until you hear something from your ISP or a lawyer.

I had to deal with similar situation in the past. I received notification by email and certified mail. Usually you should receive the name and contact info of the Lawyer handling the case if that's the situation. I personally think you can still use your domain name auto trader it is an "activity" and not a brand name. As long you are not associating your website to their entity.. a small disclaimer stating you are not affiliated to them should be a legal help.
Good luck.

Isn't your site called Auto Trader Spain? Have they registered "Auto Trader Spain"?