1000-Year-Old Village Told To Stop Using Name Because Of Trademark Claim From Hotel Chain Founded There

Trademark

from the base-ingratitude dept

Tue, May 5th 2015 1:04am — Glyn Moody

Techdirt has covered its fair share of idiotic legal threats over trademarks, but the following example is spectacular even for a field that has many superb examples of corporate bullying. It concerns the village of Copthorne (population 5,000), in the English county of West Sussex. It's rather well established: it's been around for a thousand years, and is mentioned in the Domesday Book, which was compiled in 1086. Recently, though, its village association was threatened with legal action for using the name 'Copthorne' on its Web site, as the Plymouth Herald newspaper reports:

A residents' association in the village of Copthorne was threatened with legal action by a multinational hotel chain founded there -- for using the name Copthorne.

Brand protection officers acting on behalf of Copthorne Hotels, which has a large hotel in Plymouth, wrote to the small local group -- saying it was infringing its trademark.

As that notes, the hotel chain took its name from the village where it was founded. But there's no sign of gratitude for that in the threatening letter the residents' association received from Millennium & Copthorne International Limited (MCIL), which owns 33 hotels around the world: It has come to our attention that you have registered, without MCIL's permission or authorization, the domain name [copthornevillage.org], which includes a protected trademark of MCIL. This unauthorized use of MCIL's intellectual property falsely suggests MCIL's association with or endorsement of your website and is likely to cause confusion in the minds of the public that the website is associated with or connected to MCIL and the products and services offered by Millennium Hotels & Resorts. As a result, substantial damage is likely to occur to the goodwill and reputation of these trademarks.

We require that you immediately disable all content hosted at copthornevillage.org and allow the domain name to expire. Please confirm by return that you have done so within five (5) working days of the date of this letter.
After the village group sent off a "strongly-worded letter" mentioning its millennial history, that threat was rescinded. Millennium and Copthorne communications advisor Peter Krijgsman is quoted by the Plymouth Herald as saying: "I can now confirm the 'cease and desist' letter sent to the Copthorne Village Association was sent in error in the course of an exercise carried out by Mark Monitor, a brand monitoring/protection agency.

"Mark Monitor will be contacting the administrator of the Copthorne Village Association website to explain this and to apologise for any inconvenience."
The "sent in error in the course of an exercise" excuse sounds rather unlikely; this is surely yet another example of legal threats being fired off without even looking at the facts of the case, something that happens all-too-often in the world of trademarks. At least the company concerned admitted the error and apologized -- something that by contrast happens all-too-rarely.

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Filed Under: copthorne, ownership, trademark
Companies: copthorne hotels, mark monitor

43 Comments

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That One Guy (profile), 4 May 2015 @ 11:56pm

That would do it alright
"I can now confirm the 'cease and desist' letter sent to the Copthorne Village Association was sent in error in the course of an exercise...

Yeah, I don't think so, the odds of a screw-up this glaring being 'accidental'?

...carried out by Mark Monitor, a brand monitoring/protection agency.

Oh.

Actually never mind, I can totally see a 'mistake' of this level happening given who they hired. If anything I'm surprised the hotel company didn't receive a similar C&D against their own site for violating their own trademark, given the 'accuracy' of the ones they hired.
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That Anonymous Coward (profile), 5 May 2015 @ 1:18am

Mark Monitor... when you absolutely positively want to look like idiots.
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That One Guy (profile), 5 May 2015 @ 1:27am

Re:
You'd think at some point companies would actually do a little research before hiring another company to work for them, and realize that hiring this one in particular is pretty much guaranteed to end poorly.
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spodula, 5 May 2015 @ 1:32am

Probably was accidental.
This is going to be a mistake.
to quote inbrief.co.uk:

Use of own name and address

If a company uses their name and address as a trademark then this will not be seen as trademark infringement. There is a qualification, however, that the use of their name and address must be in accordance with honest practice. Accordingly the name must be one by which they are ordinarily known.

Thats before non-commercial use, and myriad of other defenses the most moronic solictor could see covers this.
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Anonymous Coward, 5 May 2015 @ 3:02am

Maybe Copthorne should force the hotel chain to change it's name with a similar lawyer.
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Anonymous Coward, 5 May 2015 @ 3:26am

Oh look, another ebay.

For those that didn't know, ebay has deals with major registrars that prevent you from registering *any* domain name with "ebay" in the title. You have to use sketchy random registrars, then transfer to "good" ones, and have to argue with their legal department that they stifle innovation, prevent free speech, and are online bullies... then you usually get to keep your domain.
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Anonymous Coward, 5 May 2015 @ 3:32am

Mark Monitor called, they want their idiot back.
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That One Guy (profile), 5 May 2015 @ 3:37am

Re:
Did you tell them to check their CEO's office? Perhaps the office of the brilliant mind that's in charge of aiming their lawyers before letting them loose? I'm sure they could find several in their offices if they care to look.
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Yes, I know I'm commenting anonymously, 5 May 2015 @ 3:55am

Yet another good reason to ban using a 3rd parties in IP enforcement. Only the rightsholder or its own employees may search for infringement (pretty unenforcable, but still nice to have on the books), send C&D notices and even litigate over it. (It will put a large burden on the rightsholders but we do need to push back hard at the moment).
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That One Guy (profile), 5 May 2015 @ 4:00am

Re:
A 'large burden'? Tough, they're the ones in the best position to know what is and is not authorized, and it's their stuff, so they should be the only ones able to send out C&Ds and legal filings anyway. And given how often they're trying to push all the work on other parties, as though every other industry and company should be just thrilled to act as unpaid investigators and enforcers, they deserve to be forced to do it themselves anyway at this point.
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Ninja (profile), 5 May 2015 @ 4:15am

Intellectual Property has become so ingrained in the businesses out there (specially the bigger ones) that they simply don't detach an employee to maintain a very simple review process (enter the goddamn site and check what the heck it's about).

IP abuse needs to be punished lest the companies will keep up with such abuses.
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me, 5 May 2015 @ 4:36am

I think the 1000 years thing gives them precendence over the hotel.
So... suck it.
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PaulT (profile), 5 May 2015 @ 4:44am

Re:
Better still, just implement actual punishment for obvious misuse and abuse of the system. Mistakes happen, but when things like this occur repeatedly it should not be innocent third parties footing the bill, and serial abusers should be punished severely.

The problem isn't so much that rightholders use third parties, it's that the field is full of incompetent scam artists who are never punished for their actions. The system desperately needs fixing, but I have no more problem with IP enforcement through third parties than I do with firms using external legal, accounting, marketing, etc. services (as difficult as they can be sometimes) That is, as long as they're not thinly veiled conmen and extortion artists, as is the case with Mark Monitor.
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Bt Garner (profile), 5 May 2015 @ 5:16am

Re:
Only the rightsholder or its own employees may search for infringement

How about simply making whoever sends the errant C&D being financially liable for it? Say something like costs plus 50%, minimum of $500 ?
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Spaceman Spiff (profile), 5 May 2015 @ 5:25am

Sue! Sue! Sue!
Where is Sue when you need her? I would suggest that the village sue the hotel chain to have their trademark revoked since the village name precedes that of the hotel chain by almost 1000 years, so it (the village) has a prior claim.
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Anonymous Coward, 5 May 2015 @ 5:37am

Copthorne Virgin
They're lucky they can't grow olives in that climate, otherwise the "Copthorne Virgin" oil brand would be in REAL trouble.
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OldMugwump (profile), 5 May 2015 @ 5:45am

Re: *any* domain name with "ebay" in the title
Really?

So eBay has a problem if you try to register for example:

BiscayneBay.org
ChesapeakeBay.com

etc?

Somehow I doubt it.
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Roger Strong (profile), 5 May 2015 @ 5:56am

I feel sorry for anyone named Mark Monitor. They've no doubt been receiving 'cease and desist' letters too.
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tqk (profile), 5 May 2015 @ 6:55am

Re:
Or, licence the use of the name to the hotel chain, alleviating the inhabitants of having to pay tax ever again.
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Anonymous Coward, 5 May 2015 @ 6:59am

that hotel should be forced to change its name.
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tqk (profile), 5 May 2015 @ 7:22am

Re: Re:
How about simply making whoever sends the errant C&D being financially liable for it?

Not enough. This is dangerously stupid negligence, from which society deserves to be protected. It's an insult that the village has to even bother defending itself.

"Scorched Earth" is what's needed here. Revoke their business licence, and throw the lot of them out of the legal profession. Think of the children. The hotel chain should fire and sue the idiot who hired them.
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kallethen, 5 May 2015 @ 7:54am

Re: Re:
"How about simply making whoever sends the errant C&D being financially liable for it? Say something like costs plus 50%, minimum of $500 ?"

Common sense says this is a good idea. Therefore, it'll never happen.
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Anonymous Coward, 5 May 2015 @ 7:57am

Re: Re: *any* domain name with "ebay" in the title
Yes. Try it. Take away the doubts. Ebay are one of the worst "tech" companies out there.

I had to buy (now owned by someone else) ebayquotes.com through internet.bs because reseller club, tucows and a few others all prevented it, as the request of ebay.

When I bought from internet.bs, I got a nice little threat letter from ebay accusing me of damaging its brand name.

Had to consult with lawyers to see what my options were, and with their advice I told them they failed the moron in a hurry test and they left me alone... until the project died and the domain expired.

Proof? Here you go. http://pastebin.com/GpWYmL06

If you try to buy from one of the registrars listed above, you get a message stating explicitly that you are not allowed to register names with ebay in the title.
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Blackfiredragon13 (profile), 5 May 2015 @ 9:58am

Re: Re:
I've never heard of them. Mind filling me in?
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James Burkhardt (profile), 5 May 2015 @ 10:02am

Re: Re: Re: *any* domain name with "ebay" in the title
Ive read the nastygram you got, but ebayquotes.com does have actual concerns regarding trademark confusion, as it, on the face, appears to be related to eBay and likely deals with eCommerce. To turn around and say that, for instance, you cant buy BiscayneBays.org is a little out there. I did a little research. Reseller club doesn't appear to be a registrar for unclaimed domains from what I can tell, only domains someone else already owns and won't do anything for me until I sign up. So I can't tell about them. It is possible they had a legal restriction barring them from trying to transfer ebayquotes.com that your sketchy registrar never recieved. But tucows domain registrar arm, Hover, will apparently sell me BiscayneBays.org. As will GoDaddy. In fact, GoDaddy offered to sell me ebayquote.com (ebayquotes.com is taken).

It would seem your small 2 website list isn't as comprehensive as you thought. And your website, again just looking at the name as I don't know what the website looked like, suggests e-commerce in some way related to ebay.
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Anonymous Coward, 5 May 2015 @ 10:12am

Re: Re: Re:
Try searching for them in the search box at the top of this page.
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John85851 (profile), 5 May 2015 @ 10:18am

Re:
How is this another ebay? When did eBay (the company) file a notice against a 1,000 year-old town named eBay? Where is the town called ebay?

So, sorry, your experience trying to register "ebayquotes" doesn't quite compare to a hotel chain filing a notice against a 1,000 year-old town which the hotel took its name from.
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FM Hilton, 5 May 2015 @ 11:31am

Names
I rather doubt it was done accidentally. The hotel obviously thought that this village was filled with idiots, and they could take advantage of it.

Problem is, the village idiots went to work for Mark Monitor.

I'd say a village with a 1000 year old history has plenty of legal precedence to use their name..but they really should charge that hotel triple for the right to exist and operate in their midst.

There have been other examples of this kind of thing, and some have not turned out quite so well. LL Bean did it and won-but it certainly wasn't dealing with Freeport and telling them to change their name because LL Bean happens to reside there.

Some things are sacred, you know.
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Anonymous Coward, 5 May 2015 @ 12:42pm

I got about one third through this article and thought "I'll bet this was MarkMonitor." Sure enough, it was!

In reference to a comment above, I'm pretty sure MM is responsible for the eBay enforcement letters. I think they also do Facebook.

It's my belief that there's no oversight on the warning letters. They find a site that has a mark in the content or the domain name and off goes a letter. If it's a domain, there's a fairly good chance the letter will contain a demand to surrender control of the domain to MM.

Once, I processed a letter from them where they were claiming trademark infringement for some bank (I don't remember which). I reviewed the site and found that the name of the bank was being used... in a repost of a database from the US Senate on who was paying for lobbyists. So, I responded to the letter and asked MM if they were really claiming that they held the trademark on public data released by the US government. Never got a response on that one.

Another time, I processed a letter where the complaint was from the company "Public Storage" against some random storage unit provider, because in their site content they described themselves ONE TIME as "a provider of public storage in Denver." Apparently this is trademark infringement in the eyes of MM, because they actually responded to me on this one and demanded that the site was taken down. I can only imagine the site owner didn't want to deal with it, as he just re-worded that sentence.

So yeah, MM is contributing directly to the ridiculousness of IP claims.
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Anonymous Coward, 5 May 2015 @ 1:36pm

Should've just burnt the nearest hotel in the chain to the ground.
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That One Guy (profile), 5 May 2015 @ 4:47pm

Re: Re: Re:
They've shown up on TD a few times, and each time they've come out looking bad.

Whether it's sending a C&D over a positive review of a company's product...

claiming that a game mod was a tv show...

or claiming that HBO's own site was infinging on it's copyrights...

... they constantly and consistently show the the kind of accuracy you would expect from a drunken, one-armed man handed a rifle when he's never fired one in his life.
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That Anonymous Coward (profile), 5 May 2015 @ 5:00pm

Re: Re: Re: Re:
You missed that they sit under the same umbrella as the 6 Strikes outfit.

Thompson Reuters bought up a buncha of little snake oil wagons, repackaged the "elixir", and now roll into towns offering salvation & cures for the modern ailments... and have spectacularly failed multiple times.

What is actually worse, that someone might "misuse" a trademark in some unimportant way or that you get a media blitz about how your brand targeted the wrong people, went way to far, and made you and them look like inept idiots?

Because we rarely remember the 'ambulance chasers' they use to send scare letters names, but we do always remember that time they demanded HBO.com have pages delisted & removed because they "stole" content belonging to HBO. They can't even manage to generate any good buzz about Mark Monitor to offset the stupid, how are they still being hired?
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PaulT (profile), 6 May 2015 @ 12:01am

Re: Re: Re: *any* domain name with "ebay" in the title
"I had to buy (now owned by someone else) ebayquotes.com"

Why? That wasn't a domain that happened to contain the letters "ebay" in that order, as you originally claimed. It's a domain name that clearly refers to the name ebay. Since ebay was a name invented specifically for that website, it has no other connotation that doesn't refer to their service. Why would you not expect the people who own that to question your motives?

I visited the URL you registered, and it's just a redirect to another site that looks like it will act as an online job marketplace. In other words, the only reason that the term "ebay" was in the URL was for you to try to market your site as an "ebay" for jobs - as in, you wanted free marketing by referring to their trademark.

So, you're trying to capitalise on their brand name, and they're the bad guy because they're telling you not to? Rubbish. Stop whining because they're correctly applying trademark protections when you're trying to use it without permission.

You can't set up new domains referring to existing well-known trademarks that were invented for another business and not expect comeback. There may be reasons why you can expect to be able to use common words like Amazon and Virgin in your URL without a problem since they're existing words that have many meanings outside of the trademark. If you're going to use words/spellings invented specifically for another business such as eBay or Google, you're a fool if you don't expect some pushback from the people who own the business you're trying to use as free advertising.
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PaulT (profile), 6 May 2015 @ 12:05am

Re: Re: Re: Re: *any* domain name with "ebay" in the title
Hmmm... OK, I didn't read that the project expired, so maybe that job marketplace thing isn't yours.

But - what possible use could you have had for the URL ebayquotes.com that wasn't specifically referring to eBay? You're yet to explain what this project was, and why you needed the term eBay in the name.

"If you try to buy from one of the registrars listed above, you get a message stating explicitly that you are not allowed to register names with ebay in the title."

I didn't get as far as paying for them obviously, but GoDaddy certainly allowed me to put several such domains in my basket.
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PaulT (profile), 6 May 2015 @ 12:10am

Re: Re: Re: Re:
"they constantly and consistently show the the kind of accuracy you would expect from a drunken, one-armed man handed a rifle when he's never fired one in his life"

More accurately, they show the accuracy you'd expect from a company that's incentivised to send notices to as many targets as possible but never faces any punishment for sending them to innocent parties.

The bad PR they generate doesn't seem to stop them gaining new clients, so they will not care how bad they look until someone tries to protect their victims.
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Uriel-238 (profile), 6 May 2015 @ 10:21am

Another tale to add to the list of current problems with trademark law?
The answer, my friend
Is blowing in the wind.
The answer is blowing in the wind.
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Oshoma (profile), 6 May 2015 @ 1:31pm

Why should they Stop Using Their Village Name
It is totally unheard of, they should not change their name which has been in existence for 1000 years because of one hotel. No matter how the at important the hotel is they should never agree to that.
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Uriel-238 (profile), 6 May 2015 @ 1:56pm

this isn't the first time a business has applied pressure to change established custom.
Mc Dpnalds is infamous for attacking any restaurant with Mc in the name, whether McSushi, now We-Be-Sushi or McNally's steakhouse, related to the McNally ranch owned by the McNally family.

It's yet another way that large companies bullynsmall companies.
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Uriel-238 (profile), 6 May 2015 @ 2:04pm

Re: this isn't the first time a business has applied pressure to change established custom.
Don't post while walking.
Don't post while walking.
Don't post while walking.
Don't post while walking.
Don't post while walking.
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Blackfiredragon13 (profile), 6 May 2015 @ 3:08pm

Re: Re: Re: Re:
Ok how are they still in business? Because just wow.
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Reality bites, 11 May 2015 @ 6:24am

The towns lawyers should demand the hotel change its name.
Since the hotel is obviously profiting from stealing the towns name without permission. Time to make them pay or change.
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That Anonymous Coward (profile), 12 May 2015 @ 12:22am

Re: Re: Re: Re: Re:
Because they tell their clients we sent out 10K notices, and never report that 9,999 of them were responded to with laughter.
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Tanner Andrews (profile), 4 Jun 2015 @ 7:20pm

Re: Re: Re: Re: Re:

The bad PR they generate doesn't seem to stop them gaining new clients

Some day they are going to send the C&D letter to the wrong target, and his response will be delivered by deputy sheriffs. ``Here, have these papers. You have been served.''

The C&D letters certain appear to be setting up a declaratory judgment action. If properly pled, the non-infringing recipient might even get his fees back.

I imagine that, when that happens, word will get out to the companies using Mark Minotaur to send these letters.
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