The Charges are

Cybersquatting and Cyberpiracy    August14,2001

 

Below is the body of the letter that I received from the attorneys for the Friends of the Hunley, Inc. It is interesting start to a legal battle that is about to begin. First off, the letter was hand delivered to me on August 2, 2001, but was dated July 2, 2001. When I approached the attorney about the discrepancy and the need to correct the date, he stated that I had refused delivery by certified mail back in July 2, 2001. Well I told him that was not possible, I am in my home office 24/7 and never received a certified letter.  We all know that the post office will leave three notices before returning the letter to the sender.  It never happened. I talked to my IP who was also hand delivered the same letter and they too never received notice of an attempt to deliver a certified letter. So I asked the attorney for the Certified Letter # so that a trace on both of them could be made and so far he has refused to produce the tracking number. The only response I received from their special Counsel was to get an attorney and have him contact them.  Well at this point, since I really can't afford an attorney, I will represent myself. Of course we all know that this is ill advised, but Cyber law is a very new realm and I am as up to speed as any of those bottom feeders can be.  The following is the body of the letter hand delivered to me on August 2, 2001.

 

Dear Mr. Penington:

This Firm represents the Friends of the Hunley, Inc., a South Carolina charity tasked with raising money for the raising, restoration and conservation of the H. L. Hunley submarine. As you know, the Charity operates a website, www. Hunley.org, to support its operation and charitable fundraising efforts. Your web page , www.thehunley.com, wherein you seek "donations" and commercial sales, pirates narrative and photographs from the Charity's website and represents copyright infringement. And, your use of the domain name, "the hunley.com" has resulted in trademark dilution, trademark infringement and cyber piracy, as prohibited under the Anti Cybersquatting and Consumer Protection Act codified at 15 U.S.C. § 1125(d).

Accordingly, on behalf of the Friends of the Hunley, we demand that you immediately cease operating your website and formally relinquish the domain name of "thehunley, com." Absent your compliance, we will be forced to initiate legal proceedings against you and parties related to your website.

Anti Cybersquatting and Consumer Protection Act codified at 15 U.S.C. § 1125(d). Cyberpiracy prevention

If you own a trademark and find that someone is holding it hostage as a domain name until you pay a large sum for it, you may be a victim of Cybersquatting. Cybersquatting means registering, trafficking in, or using a domain name with bad-faith intent to profit from the goodwill of a trademark belonging to someone else. It refers to the practice of buying up domain names reflecting the names of existing businesses, intending to sell the names for a profit back to the businesses when they go to put up their websites.

In the letter from the attorneys for Friends of the Hunley, Inc. they state “your use of the domain name, "the Hunley.com" has resulted in trademark dilution, trademark infringement and cyber piracy”, as prohibited under the Anti Cybersquatting and Consumer Protection Act codified at 15 U.S.C. § 1125(d).

First of all a trademark is defined as a word, phrase, symbol or design, or combination of these used to identify the source and quality of a business product.  For example, “Nike” identifies a particular brand of athletic shoe. Generally a trademark for goods appears on the product itself or on its packaging. A trademark allows you to protect the goodwill that your business has earned in the market place.  Business names can become trademarks when they are used in the marketplace to identify a product or service, such as the name “Microsoft”

FOTH-Logo.gif (13925 bytes) I assume that this is the Friends of the Hunley trademark which includes their business name.
thehunleyadobe2.gif (4487 bytes)
THE HUNLEY .com
I assume that this is my trademark and business name.

     

Trademark law grants one entity a legal monopoly to use, and exclude others from using, a mark and confusingly similar marks in the market in which that trademark is used.

To get protection of a trademark the courts look to a number of factors. 1)The distinctiveness of the mark, 2)the duration and extent of use and promotion of the mark, 3)the geographical extent of the trading area where the mark is used, 4)the degree of recognition of the mark, 5)the extent of third-party use of similar marks, 6)whether the mark has been registered in the U.S. Patent and Trademark Office.

Now to charge trademark dilution, Friends of the Hunley, Inc. must first define what their trademark is and if in fact they have a trademark. Are they claiming that, “The Hunley”, The CSS Hunley, The Hunley Submarine, The CSS H.L. Hunley, The H.L. Hunley, and all other derivatives and combinations using the words “Hunley” are their trademark and that they have a legal monopoly of these words. I have done considerable research and can not find a registered trademark belonging to the Friends of the Hunley, Inc.

There is such a thing as “Common Law” trademark rights which is developed solely through use, if you can show that you enjoy goodwill and name recognition to a product or service name. To claim a “common law” trademark it still has to be distinct and recognizable.

Trademark infringement without the consent of the registered mark owner.

Involves any person who uses in commerce any reproduction or copy of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or cause a mistake or to deceive.  First there is no registered trademark to infringe upon and there is no goods or services for sale using Friends of the Hunley, Inc. logo or trademarks. Assuming that there is a "common law trademark" I have never used it to promote goods or services. But to avoid any chance of confusion there are postings on each page of http://www.thehunley.com/ to alert readers that this is not Friends of the Hunley, Inc. or hunley.org website, also a disclaimer is posted for all to read.

The third charge of Cyber piracy:

A person shall be liable in a civil action by the owner of a mark if that person has bad faith intent to profit from that mark.  Friends of the Hunley, Inc. must show bad faith on the part of the domain name registrant, in this case George W. Penington. The Friends of the Hunley, Inc. must prove that the domain name, http://www.thehunley.com/, was registered with the specific intent of selling it back to them for a profit, which has never been the case. I have never offered to sell them my website nor do I intend to.   My site is a free information site with thousands of visitors and supporters, I don't require a log in or password (which I find to be a pain in the rear) and I sure don't charge visitors a fee for information that should be free for all to enjoy. I have a Freedom of Speech that is passed to all of those who supply news articles and research information.

 

The Friends of the Hunley, inc. registered their domain name, http://www.hunley.org/  on October 24, 1998.

Other registered names are:

http://www.hunley.net/  registered 1/16/2000 to Hakon Haugnes  London, UK

http://www.thehunley.com/ registered 2/23/99 to George W. Penington

http://www.hunley.com/ registered 6/7/1996  to Netidentity, Reno, Nevada

http://www.thehunley.net/ registered 1/16/2000 Stephen Lowe, Anderson, S.C.

http://www.csshunley.org/  registered 12/16/99 Veterans Choice Mortgage,  Augusta, Ga.

http://www.csshunley.com/  registered  7/28/2000 Morris and Bailey Charleston, S.C.

www. HL Hunley.com is available

www. The Hunley Submarine is available

www.friendsofthehunley.com is available  Amongst a slew of other Hunley names. 

The Friends of the Hunley had a variety of domain names to choose from and essentially could have registered all the related names for themselves.  I have spent thousands of hours building my web site as a free, one stop site for information about The Hunley. Work they themselves could have been doing to provide interested people information.  Friends of the Hunley, Inc. has taken off the articles and pictures that were once available to the public and are putting them in the private pay area of their site.   It is my opinion that discoveries including pictures and information should be the property of all of us and not just a select few.  After all they are using public money, space, time and tax dollars and donations to perform the recovery efforts.  They are supposed to be non-profit, charitable organization yet they hoard the information as if it is their personal toy.

 Friends of the Hunley, Inc. must show that my intent was to divert consumers from their site and that I could harm the goodwill they represent in their mark, either for commercial gain or with the intent to tarnish their mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the site.My mark is clearly different from their mark, very little room for confusion here. For example if I was doing business as SONI and if I were selling electronic equipment, you would have a possible cause of confusion . I am not selling anything...is there some confusion there...it is a FREE INFORMATION SITE. I do promote books, provide links to other sites, but mostly just report the news and research.

I believe that the problems started when I ask for donations to fray the cost of running this site, after all we had been working on it for over two years and actually started research in 1997. Some of the staff must have been concerned that my asking for donations would hinder their business in some way. They are in business after all and do more to promote the selling of merchandise and making profit than they do to the promotion of information. Now all that donation money and state support money is going to be used on legal fee's. I have done nothing but refer people to them through E-mail and hyperlinks.  They have refused to assist me in what is my donation to the recovery efforts and a tribute to the Brave Crew of the CSS H L Hunley.

 The Hunley.com is used for the disbursement of news, news reporting, and news commentary as well as the scientific research and progress reports on the recovery efforts of the Hunley Submarine.  We offer goods and services and these goods and services are knowledge and research, information that is free to all to enjoy and use.

The Friends of the Hunley must show that I have no right or legitimate interest in respect to the domain name, http://www.thehunley.com/. Does the Friends of the Hunley, Inc. simply covet my domain name or are they pursuing other sites as well.

To win this case, the Friends of the Hunley, Inc. must prove that:

  1. I had a bad-faith intent to profit from their mark.(Still unclear as to what their mark is)
  2. That they (Friends of the Hunley, Inc.) had a mark that was distinctive at the time the domain name was first registered.
  3. That my domain name http://www.thehunley.com/ is identical or confusingly similar to their mark.
  4. That their mark qualifies for protection under federal trademark laws – that is, they were the first to use the mark in commerce.

 There are many concurring uses of the same name that are non-infringing, such as the use of the “Delta” trademark for both air travel and sink faucets.

It is legal to make noncommercial or fair uses of others’ marks online, such as in comparative advertising, comment, criticism, parody or news reporting. Bad faith intent can not be found if the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful. To this minute I don’t believe that anyone can trade mark the Hunley name, that it is a common name to refer to the Hunley Submarine and that variations are used by many.

In conclusion: Is this pending legal battle malicious and uncalled for, waste of tax dollars, and is it frivolous. The money spent on attorney fees could be better spent on the men of the Hunley and the restoration of the Hunley Submarine.

"Accordingly, on behalf of the Friends of the Hunley, we demand that you immediately cease operating your website and formally relinquish the domain name of "thehunley, com."

 

 George W.Penington  Rebel with a Cause



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