NSW Trademark in username part of email address

[R2ckAUi8]

Context:

I own my own personal domain name, and have done so for many years. Because I own my own domain, I have literally infinite possible email addresses. I use this by giving a different email alias to every organisation I ever deal with... usually of the form similar to:

theirOrganisationName (at) myPersonalDomain.net.au (note: this forum won't let me post the at-symbol, substitute that accordingly when reading)​

Each address is only ever given to that same organisation (as my personal contact address), and only ever used by me when I deal directly with that organisation. This is very handy because I have fine-grained control over filtering/managing emails - I can see who is selling my details to spammers; if my personal info is leaked I can tell where the leak came from, I can unilaterally stop communications from my end; and so forth.

Issue:

Since the day I started working for a former employer (let's call them CompanyA), I had been using CompanyA (at) myPersonalDomain.net.au as my personal email address if they needed a contact outside of work (eg. as a backup email address for the HR department, and as a contact for the retirement fund they managed). When I left that employer, it was on good terms, and (I believe) we still remain on good terms. They still regularly send official correspondence (retirement fund, alumni broadcasts, etc.) to that same email address. And in line with the context above, I have never given this address to anyone outside that company, and have only ever used that email address for corresponding with that company.

A couple of days ago I received an email from a law firm, claiming that I was violating the Intellectual Property of this former employer... simply by having their organisation name in the "username" part of an email alias at my personal domain. In their words:

"Your use of the email address CompanyA (at) myPersonalDomain.net.au may infringe on a firm trademark and create the misimpression that your communications are on behalf of CompanyA."​

They want me to immediately stop & disable that email address, and have given me 7 calendar days (over the Christmas break no less!) to respond with compliance. I have independently reached out directly to CompanyA for clarification, but given the holiday season I am not expecting to receive a response before the deadline.

I have had that email alias for years, and have no desire to spend time & effort changing it.

Notes:

• My myPersonalDomain.net.au domain name is clearly an Australian domain name, with an Australian name registrar. CompanyA has their headquarters in the USA. Their official domain CompanyA.com does not look anything like mine.
• The law firm does exist (in the USA), but I am not convinced that they actually represent CompanyA (they did not explicitly claim to represent them in their email).
• The words I am representing above as CompanyA and myPersonalDomain do not look anything alike. Personally I don't think any reasonable third-party would assume any communication coming from CompanyA (at) myPersonalDomain.net.au would represent official communication from CompanyA instead of myself... particularly when the only communication to/from that address is between CompanyA & myself anyway.

Questions:

1. Do they even have a leg to stand on?
2. How should I respond if CompanyA confirms the law firm represents them?
3. How should I respond if CompanyA denies the law firm represents them?
4. Are there any other actions I should take?

Any advice greatly appreciated.

 

[Scruff]

1. A trademark provides exclusive use but they are "territorial", which means that it only applies in the country where it was applied for, or in the case of an international trademark, the countries specified. This means that it is only enforcable within Australia if they have the trademark registered in Australia, or if they have an international trademark where Australia is one of the countries covered.

2. Don't get into a legal fight over something so trivial. I know it's a hassle, but change the email address. I do the same as you for protection against identity theft, spam, etc - but I always reverse the company name to avoid any issues like this one. For example, if we have a company called "Acme Ltd", I use "emca.ltd(at)..." instead of "acme.ltd(at)..."

3. Give the company the details of the law firm so they can take appropriate action if they wish to, and clarify that they are okay with your use of the name for the specified purpose (get this in writing - email is fine). I would also demand that the company explain how a third party got your details (after all, this is the very reason for using the name in the first place).

4. Wait for a response from CompanyA then act according to #2 or #3. Don't respond to the law firm if you have any doubts as to whether or not they represent the company.

Finally, given the circumstances, a breach of this kind would be unlikely to even make it into a court. Just make sure that you clarify to the comany axacly why you are using the name and that it is only used for correspondence with them.

 

[R2ckAUi8]

Brilliant - thanks for the sensible advice, very much appreciated. If it makes any difference, the trademark in question is just two letters - could reasonably be someone's actual initials, or any other plausible abbreviation. Seems unreasonable to expect that to be reserved as a username at every domain in the entire world!

Anyway - will update this thread with results, when there is one.

 

[Leonard Mancini]

A trade mark with two letters are unregisterable in Australia. Did they quote any trade mark regustration numbers in Australia?

They cant claim domain name abuse under icann or auda if the domain itself does not contain the trademark.

That means it has to be either trade mark infringement or misleading and deceptive conduct.

If you only use the email with the company in question they are not going to be confused as you say. So not deceptive or misleading.

That leaves tm infringement. In Australia The “sign” needs to be used as a tm. That is, you putting yourself out there as the same source as the tm owner. Thats clearly not the case here.

I cant see any australian laws you could have broken.

Is it a dot.com or dot.com.au domain?

My guess is they have no leg to stand on and its a spurious claim.

Would be interested to know if they are alleging you are breaching us or australian tm. Hard tk breach a us tm if you do not trade in the us using it.

Sounds like a try on to me.

 

[R2ckAUi8]

Thankyou too Leonard. Yes, my initial reaction was that it's a shakedown attempt.

• My domain is in the AU top-level (and it's not .com.au either). Theirs is a pure .com domain that in no way resembles my domain. Their only conceivable grievance is with the username part of the email address, not the domain part.
• No trademark registration numbers were supplied in their email.
• Country of alleged breach was also not specified - being a US firm I'll assume they believe it's the US.
• I don't use any email address in this domain to trade, in the US or otherwise. It's a personal domain. Any business I do is conducted entirely through other domains.

 

[Leonard Mancini]

Thankyou too Leonard. Yes, my initial reaction was that it's a shakedown attempt.

• My domain is in the AU top-level (and it's not .com.au either). Theirs is a pure .com domain that in no way resembles my domain. Their only conceivable grievance is with the username part of the email address, not the domain part.
• No trademark registration numbers were supplied in their email.
• Country of alleged breach was also not specified - being a US firm I'll assume they believe it's the US.
• I don't use any email address in this domain to trade, in the US or otherwise. It's a personal domain. Any business I do is conducted entirely through other domains.

Not quoting tm registrations is a big flag. Not quiting a country is the same. Either would tend to suggest its groundless otherwise they would be quoted

 

[R2ckAUi8]

First update: I confirmed (independently with CompanyA through my existing direct relationship with them) that this WAS indeed a legitimate representation. Their response:

"We received your inquiry regarding the correspondence that you recently received from our outside counsel who is actively engaged to monitor and protect the CompanyA brand. As we are sure you can understand, maintaining information security and the confidentiality of our company’s, employees’ (including former employees’), and clients’ private information is of the utmost importance. It is for that reason, that we regularly monitor and act on suspicious email addresses."

"While it is not our intent to prevent lawful activity (including the organization of your personal email communications, which we are not opposing), it is our intent to prevent any unauthorized use of company trademarks in a manner that creates or appears to create an impression that communication is being sent on behalf of or sponsored by CompanyA. We trust that this clarifies our intent and appreciate your cooperation in not using CompanyA trademarks in a manner that hinders our intent."​

 

[Scruff]

Okay, so are they okay with you using the address solely for communicating with them or not?

They appear to be okay with it, but then the last line certainly places some doubt on that "appreciate your cooperation in not using CompanyA trademarks in a manner that hinders our intent."

Do they consider what you are doing as "hindering their intent" or not?

Paragraph 2 seems to be a bit of a merry-go-round. Read sentence one, think everything is okay - read sentence two, get confused - go back to sentence one...

 

[R2ckAUi8]

Second update: I acknowledged CompanyA's reply, and sent them back a follow-up:

"Thankyou for the clarification. Now that I know LawFirmB are (apparently) authorised to represent CompanyA on the matter in question, I will respond to them directly."

"For what it's worth, the email address in question CompanyA (at) myPersonalDomain.id.au :

1. has been actively used by CompanyA, for nearly 6 years now... even before the first day I was hired as a CompanyA employee.
2. serves the sole purpose of organising & managing my personal email communications directly with CompanyA (and now that LawFirmB are involved, apparently also CompanyA's appointed representatives).
   • From your earlier response, CompanyA are not opposing this purpose.
3. has only ever been used (and is only ever intended) for direct communication between myself & CompanyA, regarding legitimate CompanyA matters (eg. HR/alumni communications, managing my CompanyA pension fund, etc.)
   • No third party should ever be given that email address.
   • No third party should ever receive mail from (or have any cause to send mail to) that email address.
   • Nobody could possibly get the misimpression that my "communications are on behalf of or sponsored by CompanyA" when the only parties ever involved in any communication via that email address are (a) myself and (b) CompanyA!
4. clearly could never be mistaken for an official CompanyA email address by any reasonable person.
   • Just look at it - the domain name myPersonalDomain.id.au alone makes that visually obvious.
   • The ID.AU domain is tightly controlled by auDA, and has been for many years. It is not a free-for-all, like a generic ".com" domain. ID.AU domains are widely known to exist solely for personal (and specifically not commercial) use. They are restricted to individual Australian citizens/residents, and they have to match the registrant's own name or have some other close & substantial connection to it. This is all clearly spelled out in the relevant auDA policy.
   • The entire myPersonalDomain.id.au domain is also fully configured & compliant with standard best-practice sender authentication frameworks (including DKIM, DMARC and SPF). CompanyA also use these very same frameworks too, but with their own keys. These frameworks allow any recipient's modern mailserver to clearly authenticate & differentiate any mail from my domain, as distinct from any CompanyA domain. These frameworks also make it much more difficult for any hypothetical malicious third party to successfully spoof any email address from myPersonalDomain.id.au. This includes the email address in question."

"I am a proud CompanyA alumnus. We parted on good terms and I still regard the firm very highly. I have never used any CompanyA trademark in a misleading or deceptive way, and I have no intent to ever do so. Furthermore, I have taken all reasonable steps to secure the email address in question, in order to prevent anyone else from using it in any manner contrary to it's pre-existing purpose as stated above. In short, I believe I am already fully cooperating with CompanyA's desires on this matter. If CompanyA's internal Legal department have considered these points and still disagree with my perspective, I'm sure we can sort it out directly with a brief, amiable phonecall. Frankly, that should've been the first course of action in this case anyway."

"In the meantime I'm going to treat LawFirmB's demand as both groundless and ill-considered. Also, them harassing their client's own alumni with unverifiable legal threats for trivial and easily-resolved matters is stupid enough - but doing it with a tight response deadline right in the middle of the Christmas holiday season is particularly tone-deaf... the kind of thing that precipitates a PR disaster. I hope that if they're foolish enough to send you a bill for this, you won't be paying it."​

 

[Scruff]

Literally laughing here - that last paragraph is classic.