What's My Name Got to Do With It?

By Bernadette Walker

For about 3 years I had been studying graphic design and finally after much searching decided to use bmw-design.com for my domain name. I chose bmw for my initials Bernadette Maria Walker. I searched for availability on Network Solutions and was happy to see that it had not been taken, so I registered my new domain name. This all seemed very innocent to me and I even designed my logo around this name. Then 5 days later I got this letter via FedEx from BMW Motor Company in Germany:

"Dear Ms. Walker, We recently became aware of your registration of the domain name 'bmw-design.com', which includes the trademark BMW. Please be informed that BMW is a registered trademark owned by BMW AG in over 140 countries worldwide, including the United States. Through substantial use and promotion, the BMW mark is considered a famous mark, which is afforded a broad scope of protection under U.S. trademark law. We are concerned that the use of BMW within 'bmw-design.com' is likely to cause confusion as to the source, sponsorship, or affiliation of any web site located at bmw-design.com, all in contravention of federal and state trademark laws. Furthermore, use of the domain name will dilute our BMW trademark in contravention of federal and state anti-dilution statutes. Accordingly, we hereby request that you sign this letter acknowledging that you will take immediate steps to cease this and any other unauthorized use of BMW trademarks, and that you undertake to take all necessary steps to effect a transfer of the domain name 'bmw-design.com' to BMW AG. We ask that you return this signed letter to us no later than 30 days from the date of this letter. If we do not hear from you by this date, we will not hesitate to pursue all legal remedies, which are available to usI have read the above and hereby confirm that I will cease and desist all use of BMW trademarks and logos and that I will abide by BMW's requests. Signed by me"

Then almost 2 month later I get this letter from them:

"Dear Ms. Walker, Thank you for your letter. We have noted your comments that the letters "BMW" stands for your initials. However, that does not change the fact that BMW is a registered trademark of our company, and that the status of this trademark as a world famous mark gives us a very wide scope of protection. The fact that someone incidentally has the initials 'B', 'M', and 'W' does not allow them to name their company or do business as BMW. Further, the fact that you are in the graphic design business does not alleviate any confusion between our respective companies. The term 'design' in your trading and domain name could easily be taken to refer to car design. In any case, we are heavily involved in the design of many other products, such as clothing and accessories. We also have a subsidiary in California, which specializes in international design consonancy, including the field of graphic design. That said, we would like to emphasize that we are first and foremost interested in bringing this matter to an amicable settlement. We therefore offer you US $1500 for a transfer of the domain name to BMW AG. You will also have to change your business cards and stationary so that there is no reference to the term BMW Design or BMW-design.com."

Despite further disputes, BMW-design was ultimately forced to accept a very small settlement from BMW due to lack of funds to fight in court.

By Bernadette Walker, Graphic Designer

Related topics: DNS, Domain Names

Comments

Re: What's My Name Got to Do With It? webdesigner  –  Jun 27, 2003 4:04 AM PDT

I have same problem.. -.-;;;