# Shutterfly sent me a cease & desist



## natedidit

I just got a cease and desist email from Shutterfly.com threatening to sue me for "cybersquatting" under the The Anticybersquatting Consumer Protection Act. They say I have to take down my shirt site, Skutterfly.com and GIVE them my domain name by December 12th. 

WTF. 
Sure, the names are similar but they do photos. I print t-shirts for kids. Skull+Butterfly=Skutterfly. It has nothing to do with shutters, cameras, OR photos! I would totally understand if my site looked anything at all like theirs, or if my product had anything at all to do with client-supplied photos. 

Anybody dealt with anything like this before? I'm thinking of just ignoring the email until I receive something certified mail. 

Nate


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## paulo

natedidit said:


> I just got a cease and desist email from Shutterfly.com threatening to sue me for "cybersquatting" under the The Anticybersquatting Consumer Protection Act. They say I have to take down my shirt site, Skutterfly.com and GIVE them my domain name by December 12th.
> 
> WTF.
> Sure, the names are similar but they do photos. I print t-shirts for kids. Skull+Butterfly=Skutterfly. It has nothing to do with shutters, cameras, OR photos! I would totally understand if my site looked anything at all like theirs, or if my product had anything at all to do with client-supplied photos.
> 
> Anybody dealt with anything like this before? I'm thinking of just ignoring the email until I receive something certified mail.
> 
> Nate


Actually its not really cybersquatting if you are using the site for your business. So as long as you use it, you should be ok. 

--I am not a lawyer, so knows.


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## Comin'OutSwingin

I wouldn't ignore it. But I would tell them exactly what you just told us. Tell them why your site it called skutterfly.

But I wouldn't send it in an email. I would send it certified mail, and in it I would tell them to go fly a damn kite after you explain it to them!

EDIT:

I just went to your site and read the letter. They had the nerve to tell you "Happy Holidays" at the end!

They are trying to scare you. If you can afford it, get an attorney. My opinion is that they don't like it, but don't have much a leg to stand on.

They want it down, and figure they may be able to scare you into taking it down. They may also have the money for a long legal battle if it means that much to them.

I don't think they would win, and I don't think THEY think they would win. But they are betting you can't afford a long legal battle.

Good luck to ya.


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## mystysue

we have a neighbor who started a business called online collector car trader
and had the business name, web site, bussiness cards, and 2000 flyers made, vehicle graphics, banners for shows and more..
They got a cease and desist letter from autotrader.com stating they had all the car trader names registered.. they also demanded he turn over the domain name.

He has a business lawyer and was told that if he fought it the chances of him losing were 50/50 but that it would cost him prolly real big bucks to fight it.. and would drag on for years. and that. in the mean time.. he would prolly have to take the site down..

It really ticked me off that big companies can do this and do this.. as he was not trying to copy them.. The problem came in with the fact that his web site had very good rankings.. (was #3 in google) and getting loads of visitors each day.. 

He changed his companies name.. rather than fight.. on the advice of the lawyer..


But all that being said.. it would seem that your names are differant.. I think they are afraid of you getting traffic from typos.. of thier name..

I think you really need to see a lawyer if you can afford it.. and find the best course of action.


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## natedidit

The Happy Holidays part was written by me.


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## mk162

You need to contact a lawyer. And I've heard tons of complaints about prepaid legal, so don't even think about switching to that route if you think they might try it again.

See if anybody you know has somebody the can recommend. It's a lot better than going out there on your own and getting screwed by some lawyer that thinks you just want some advice. You know, kinda like the countless customers that walk through our doors and waste our time and then order from somewhere else.


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## brentonchad

I wouldn't take it too lightly. Your domain name is fairly close to shutterfly. For them to win they have to prove you registered the domain name in "bad faith" - which one of the tests for bad faith is intent to profit - which you do since you sel shirts. Looking at this from an outside point of view it could be very easily viewed from the court that you registered this name with intent to get traffic from typo's in order to sell shirts. So I would definetely not just sit on it - but get some real legal advice. It's amazing how a laws like this get twisted by lawyers and end up hurting the consumers that they were designed to protect. 

Here is piece I found on the "bad faith" part - but I would definitely check with a lawyer on this.

In order to win a case of cyber squatting, plaintiff must prove that defendant has a bad faith intent to profit from the mark that is identical or confusingly similar or dilutes plaintiff’s mark. The key element is that plaintiff must prove that defendant has“bad faith intent to profit from the mark.” What this means is that if defendant merely registers the domain and does nothing with it commercially, plaintiff will have a difficult if not impossible time proving bad faith.* Typically, intent to profit is shown by the use of the domain as a commercial site which sells goods or services*


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## charles95405

I think that I would pay to have an attorney send the letter with the info you first posted...why the name...etc...and see what happens... This is a case where you could win the battle and lose the war...by that I mean it *could *cost a ton of money to be right. Unfortunately the little guys often are right but still have to comply


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## Rodney

natedidit said:


> I just got a cease and desist email from Shutterfly.com threatening to sue me for "cybersquatting" under the The Anticybersquatting Consumer Protection Act. They say I have to take down my shirt site, Skutterfly.com and GIVE them my domain name by December 12th.
> 
> WTF.
> Sure, the names are similar but they do photos. I print t-shirts for kids. Skull+Butterfly=Skutterfly. It has nothing to do with shutters, cameras, OR photos! I would totally understand if my site looked anything at all like theirs, or if my product had anything at all to do with client-supplied photos.
> 
> Anybody dealt with anything like this before? I'm thinking of just ignoring the email until I receive something certified mail.
> 
> Nate


Hi Nate, 

I deal a lot in domain names and this happens pretty often.

It seems obvious here that you didn't register the name in bad faith, but their lawyers feel that your domain is very similar to their trademark.

In the "domaining" world this is called "reverse hijacking". Where big name companies try to take smaller companies domain names that are similar based on the cybersquatting laws.

There are places like the EFF that defend cases like this for free. No guarantee that they'll take your case, but it might be worth contacting them with the details.

Here are some links that may help you with your case:

Domain Name Journal - Domains, Trademarks & The Dispute

The Impact Of "Reverse Domain Name Hijacking"

Sedo - Domain Name Law and Legal Help with Domain Name Disputes

I'm not a lawyer, but I wouldn't ignore this  I would suggest doing some research and maybe even contacting a few of the domain name organziations. Here's a lawyer that specializes in this type stuff: John Berryhill

Maybe even media attention might help.


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## Comin'OutSwingin

I think "bad faith" intent is the key, here. 

Chad I would have to disagree with you a little bit. One of the tests of "bad faith" isn't intent to profit, but HOW you intend to profit. If your products are similar to the one in question, then that is the "bad faith" intent. If you are intending to profit by not having any useful content on the site, and are holding on to it simply to profit by selling to the company in question, that's bad faith.

Take a look at this info from domains magazine:

Cybersquattors, Domain Name Disputes, And UDRP And ACPA

Here's a little bit for those that don't want to read the entire page:



> However, you must distinguish cases where the cybersquatter is obviously acting in bad faith, from situations in which the individual has merely registered the domain with the good faith intent of doing something else with it (that is unrelated to trademark owner's goods and/or services).
> The ACPA excludes a finding of bad faith where the domain name holder reasonably believed that the use was "fair use" or otherwise lawful. Accordingly, bad faith is the biggest component in an ACPA claim. So what is bad faith? There are several elements the federal courts will consider such as:
> The trademark ownership rights held by the mark owner; The closeness of the domain name and the cybersquatter's name; The cybersquatter's commercial use of the domain name for access to a web site; The cybersquatter's intent to divert web traffic from the mark owner; The cybersquatter's offer to sell the domain name to the mark owner; Whether the defendant gave misleading information when registering the domain; and Similar or repeated cybersquatting on other marks. For example, in Hasbro Inc. v. Clue Computing Inc.[66 F. Supp.2d 177 (D. Mass 2000)], the district court held that Clue Computing's use of its registered domain name clue.com, was in fair use, despite Hasbro's existing registration of the trademark "Clue" for its famous board game. The two company's fields in which the names were used were not related; Clue Computing had registered the disputed domain name first, used it in legitimate commerce, and not attempted to sell the domain name to Hasbro.


If t-shirts are being sold, I hardly see how it's "bad faith". 

The case Microsoft has against some defendants is "bad faith". 

Microsoft Launches Enforcement Campaign Targeting Web Site “Cybersquatters” Who Use Online Ads: New lawsuits allege defendants illegally registered domain names to intercept Internet traffic and profit from it.

They were registering domain names that consumers looking for microsoft products would likely type in. Then all they would see is a list of names. The domain registrars would get paid per click. No useful content, or anything.

That's bad faith in my opinion.

Going to a site with a similar name, but finding out that it has nothing to do with what you were trying to find even though there is useful content, doesn't seem like bad faith on the part of the similar site.

I think shutterfly is completely overreacting.
.


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## natedidit

Thanks guys. Great info!
Nate


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## brentonchad

I definitely don't think the intent was bad faith. I have just experienced how some of these lawyers will twist and turn anything to make it look that way. And unfortunately in the world of law it is how things are presented and perceived. 

The easiest arguement here is that you made your name similiar enough to steal traffic and why not use butterskull.com or skullerfly.com, etc. Instead you chose to use skutterfly.com so that you could steal traffic from shutterfly for your own personal profit. They could say you were using the same marketing technique as grocery stores - they put items that haven NOTHING to do with what you are looking for right in front of your face so that they can sell to the impulse buyer - Hence you "bad faith" intentions were to do the same with everyone that was intending on visiting shutterfly.com but instead found t-shirts for kids.


Again I am just throwing this out there and not accusing you. I have had first hand experience with lawyers doing this to me - not with domains but other legal battles. They have a knack of taking something completely innocent and making you look like your evil of all evils. 

The whole legal world is crazy and sometime just the opposite of common sense.


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## plan b

My 2 cents----------- I think in order to show bad faith you would have to have similiar to identical products offered ,, you have none of those offerings,, I think that they would be hard pressed to argue that they are damaged because of your name only,,, 

R.


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## Comin'OutSwingin

I see what you're saying, Chad. But I think Nate's biggest ally is the case of clue that I referred to earlier.



> ...the district court held that Clue Computing's use of its registered domain name clue.com, was in fair use, despite Hasbro's existing registration of the trademark "Clue" for its famous board game. The *two company's fields in which the names were used were not related*; Clue Computing had registered the disputed domain name first, *used it in legitimate commerce*, and not attempted to sell the domain name to Hasbro. UDRP or ACPA?


Nate, I would tell them to take a look at this, and see if they want to take their chances.

I'm sure they're betting on you not knowing what's going on, getting scared, and just giving it up. That makes it easy. 

If they see that you have some knowledge on the matter, and are familiar with a case that's similar, then they may come to their senses.
.


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## neato

Send it to every news media agency you can. This sounds like something I'd read about on Fox News. (I know, that's an oxymoron)

Good idea putting that on the home page of your site. I'd try to attract as much attention to this as possible!


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## tim3560

My question is how long have you had the site running and how much would it impact your site to change the domain name? If you've only had it for a couple of months and you haven't built up a great clientele list, there wouldn't be a big loss in starting fresh. If you do have a great clientele list, maybe there's a way to notify them that the site's name has changed and things can go on that way. 
If I were in your shoes, I don't know exactly what I would do, but going up against a company with millions of dollars at there disposal would'nt be much of an option for me. Don't let ego get in the way of making a sound decision. Surely you have records of the customers that you've shipped to, you could easily send them a letter notifying them of the change.


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## binki

just a few thoughts here.

1- if you were registered first then you win. go to court with that
2- if #1 is not true then send in your plea to them
3- if #2 doesn't work, try going to the press and get some negative pub. for them. 
4- don't give up without a fight. hopefully you are a C-Corp, LLC, or some other protected entity so your personal assets are not affected. 
4a- make them out to be the evil empire and you the little guy being squashed by greedy corporate suits. it will help if you are a cute and cuddly person. 

Good Luck

Edit here:
#1 is no good, they beat you by 6 years. Since your site sell t-shirts and theirs sells pictures I think it is worth fighting. 

Again, Good Luck


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## Solmu

natedidit said:


> I'm thinking of just ignoring the email until I receive something certified mail.


You probably will. It may or may not go further than that, but I wouldn't be surprised if it does.

They have a case, and you have a defence case as well. Personally I believe yours is the stronger (I am however no lawyer), but it would be taking a large risk to ignore it and hope it goes away. There's enough substance there that they could do you some harm.

I agree with the others that are suggesting you think _very_ carefully about exactly what your site is worth to you. If it's worth it, fight it. But you'll need to know when to give up or you could get dragged down with it.


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## natedidit

Thanks everybody. I have received a referral to an attorney that is going to go over some options with me tomorrow. Tim and Lewis have a good point about trying to keep my ego out of it. It won't be easy, but it is necessary. If worse comes to worse, changing domains will not have as much impact on the business as I (my ego) originally thought. But I still don't want to back down until I'm sure that it is the best decision....which I am not yet. 

If anything else, this will be good for the forum, in case anyone runs into anything similar in the future. I'll keep the thread updated.

Nate


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## binki

This reminds me of Sun sending out letters to anyone who had ...java... in their name. A blurb on this is here: JavaWorld News Briefs (7/03/96) - Java World


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## plan b

Hi, Please keep us informed on what happens....

Good luck

Roger


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## Solmu

natedidit said:


> But I still don't want to back down until I'm sure that it is the best decision....which I am not yet.


Absolutely. I think it would probably be premature to back down yet. It just needs to remain an option is all.


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## charles95405

I am not assuming that there was any attempt to hijack shutterfly but honestly with only one letter different...I sure would not spend very much money or time in fighting...Unfortunately the little guy in the right does not always win in court...and this is where I see this heading


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## natedidit

After reading the procedure for filing an ICANN domain dispute it seems apparent that the procedure is only for the trademark owner (shutterfly) to register and resolve a complaint against the domain name owner (me). There is no procedure that I can find allowing the owner to file a complaint against anyone else. 

Shutterfly could be found be guilty of Reverse Domain Name Hijacking if they abuse the ICANN dispute procedure, and I think that is why they didn't go that route. Instead, they are counting on me not having enough money to funds to hire a legal team that can match theirs. Which would be an accurate assumption. 

I spoke with a lawyer today at length about this, and it basically boils down to what is more important to me: the time and effort it would take to rebuild using a new domain, or the time and money it would take to fight them in court. And he's fairly certain that it will come down to fighting them in court. He's dealt with Shutterfly before and said they were not the easiest people to deal with. 

He said that I could write a letter explaining the importance of my domain name and send it to a top level person at Shutterfly, asking them to back down. He didn't sound too optimistic. If they don't, I'm stuck in a legal battle that I may or may not win, if I even have the funds to see it all the way through.

He said that if I feel I can afford the legal battle, and have the time to see it through, then he would start by filing a lawsuit against them for accusing me of cybersquatting, and take it that direction. 

Unfortunately, I don't feel that I can afford it, or that it's worth it. One thing that was great was this: if I decide not to fight it, he encouraged me to get online and start blasting them anywhere and anyway that I can, even to involve the media. 

I'm waiting to see if I get a positive response from EFF.org regarding my request for legal aid. if I don't, it's f(*&##' on. I'm a designer and a screen printer. My opinion WILL be heard!



ImageIt said:


> It would seem that skutterfly is in now way an attempt to hijack the good name of shutterfly. It is not any sort of version of the name which could easily be miss typed. The sites look distinctly different and are not in the same type of business.
> 
> After a quick review of the law, it would appear that there is an arbitration procedure. I'd rather roll the dice with arbitration and avoid court. It would seem that it should only cost the price of having a lawyer draft a letter.
> 
> fred


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## plan b

Nate,, I will help you bash em around,, I hate bullies, and even more than that I hate corporate bullies,, also I think there is 20 or so k of people here that knows whats going on and it could be someone else here facing another bully,, its free enterprize if you have enough money,,, very sad...

R.


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## acanvas

2 things Nate: I went to your site.....Your **** ROCKS!!!!!!
2ndly, because your shirts ROCK...get coverage all over the media cuz when people go there...their gonna buy!
Good job!


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## Solmu

natedidit said:


> Shutterfly could be found be guilty of Reverse Domain Name Hijacking if they abuse the ICANN dispute procedure, and I think that is why they didn't go that route.


This is purely me speculating, but even if the arbitration ruled in your favour, I really don't see Shutterfly being found guilty of abuse. Even if they lose, it doesn't seem unreasonable to have filed (we're only talking about one letter). I'm guessing they didn't go that route because it's riskier than intimidating you into backing down, simply because at the end of the day, if they lose, they don't have the domain.


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## Wombat

i know people who didn't show up to jury duty because it was never sent registered mail...They just simply said they never recieved it...They couldn't do nothing to them...

We live in a world of fear...If i were you, i would just have another name ect ready to go if they actually take the next steps which would be registered mail ect...

How in the world does someone just send something like this thru an email...I would have an alternate plan ready to go but would just blow this thing off as if you never recieved it...

Its only going to cause stress for you...My guess is you must have known thru your research before even starting a business that the name was close...Unless you had your domain first then i'm totally wrong...

Either that or you could send them a cease and desist order thru registered mail and see what happens..


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## tim3560

That would be awesome if you could get on Yahoo news or something like it. I read those things every day. I just read one yesterday about a woman taking kmart to court for taxing her toilet paper. Apparently in PA, they're not supposed to. She went to court as a consumer advocate and one $100 plus court costs. Was all of the trouble she went to worth it? I bet that 9 out of ten would say no. She was only charged what? around 50 cents? I guarantee that this won't be the last time that she's taxed on toilet paper. I also guarantee that the story seemed so rediculous to me that I'll remember it for a while.
I might not care if I read that Shutterfly claimed that you were trying to steal from them, but I probably would at least check out your site. If I were you, I'd make a creative video pleading your case in a memorable way and slap that puppy on youtube. Make it dramatic like they're beating on the little guy and that you stand to lose a lot if they come down on you. Start a petition or something as a consumer advocate. Say that you need the help of regular people who won't stand to see big companies bash the dreams of the little guy.......and then flash the name of your website saying please visit to add your name to our petition. There are a lot of people who will sympathize with you. You've probably seen an increase in traffic to your site just from adding this thread.


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## Wombat

tim3560 said:


> That would be awesome if you could get on Yahoo news or something like it. I read those things every day. I just read one yesterday about a woman taking kmart to court for taxing her toilet paper. Apparently in PA, they're not supposed to. She went to court as a consumer advocate and one $100 plus court costs. Was all of the trouble she went to worth it? I bet that 9 out of ten would say no. She was only charged what? around 50 cents? I guarantee that this won't be the last time that she's taxed on toilet paper. I also guarantee that the story seemed so rediculous to me that I'll remember it for a while.
> I might not care if I read that Shutterfly claimed that you were trying to steal from them, but I probably would at least check out your site. If I were you, I'd make a creative video pleading your case in a memorable way and slap that puppy on youtube. Make it dramatic like they're beating on the little guy and that you stand to lose a lot if they come down on you. Start a petition or something as a consumer advocate. Say that you need the help of regular people who won't stand to see big companies bash the dreams of the little guy.......and then flash the name of your website saying please visit to add your name to our petition. There are a lot of people who will sympathize with you. You've probably seen an increase in traffic to your site just from adding this thread.


 
thats a great idea...Keep it under 2 minutes...Tell everyone you didn't even know what the other site was...ect ect...


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## natedidit

Solmu said:


> This is purely me speculating, but even if the arbitration ruled in your favour, I really don't see Shutterfly being found guilty of abuse. Even if they lose, it doesn't seem unreasonable to have filed (we're only talking about one letter). I'm guessing they didn't go that route because it's riskier than intimidating you into backing down, simply because at the end of the day, if they lose, they don't have the domain.


Yeah, I don't think there are any specific penalties for reverse domain hijacking other than losing your case. Oh, and there is a $1500 fee for UDRP (Uniform Dispute Resolution Policy) arbitration.


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## natedidit

Ok, so last night I went online and found emails of Shutterfly's top level management team, including VP of Marketing, VP Legal, CEO, etc. I sent them all the following letter:

Monday, December 2, 2007

To Whom It May Concern:

I recently received an email from a company, CitizenHawk Domain Recovery, claiming to be working on your behalf. In the email (included below) they demanded that I shut down my Web site and turn over to them the domain name that I legally purchased over a year ago, SKUTTERFLY.com. The company is accusing me of violating the AntiCyberSquatting Consumer Protection Act (ACPA), and claim that "it is clear that [I am] trying to capitalize on [your] very strong trademark rights in the Shutterfly Mark by using a confusingly similar domain name to divert traffic to your site."

We are hesitant to respond to CitizenHawk Domain Recovery directly, as we have no assurance that the email was not simply a phishing scam, and that is why I am writing to you directly.

About two years ago my wife and I had our first child. Shortly thereafter we began designing and screen printing shirts for my daughter because we were tired of being flooded with the sea of pink flowers and kittens that inevitably follows the birth of a baby girl. We wished to dress our daughter in the same alternative styles with which we had grown accustomed, so we converted the shed out back into a makeshift studio for screen printing. The first shirt design we printed for her was a cross between a skull and a butterfly, hence Skutterfly.

After that we began selling extras to friends, then on ebay, and eventually ended up creating a small online store. We hoped that the online store would made it possible for my wife to stay home with the baby, and that was our primary goal when deciding to sell shirts online under the Skutterfly name. There was no bad faith involved, which is necessary to fit the definition of cybersquatting. We never intended on piggybacking on your respected brand, and haven't heard of a single instance of a customer or site visitor confusing our site for yours...or vice versa. We firmly believe that this is due to the fact that the design of our sites share no similarities, our products share no similarities, and our branding shares no similarities.

We humbly ask that you respect our right to run our very small business.
Thank you for your time and consideration.


------------------------------------
And I just got the following response: WHO-HOO!!
------------------------------------

The executive team of Shutterfly.com has forward your email to us. Thank
you for your attention in this manner, and quick response.

After learning about your inspiring home business, the legal team at
Shutterfly.com has decided to not continue pursuing this domain.

We hope your family and business continues to do prosper.

Best Wishes,

Domain Recovery
CitizenHawk, Inc


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## plan b

Wow, big corporation with a heart,, I am about to fall over,,,, I would send them a thank you card.. That is Great!!!!

R.


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## sunnydayz

Wow that is go great  I guess it just goes to show that showing a human side to a situation can make a difference. congrats


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## Rodney

natedidit said:


> Ok, so last night I went online and found emails of Shutterfly's top level management team, including VP of Marketing, VP Legal, CEO, etc. I sent them all the following letter:


Nice work, Nate!

What a great ending 

That was a well written letter. Professional, to the point, addressed the issues.

It's nice to see the big corporation doing the "right thing" here.

Congrats!

PS. Nice use of the blog on your site. At the very least, it will be an interesting story to read for future visitors to your site.


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## perrolocodesigns

That's awesome Nate...now go sell some more shirts.


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## dawnpoetic

That is by far the best thing I've read today! Congrats to you and kudos to Shutterfly for being reasonable about the whole thing!


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## tim3560

Way to go, and that didn't even cost you a penny!


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## Comin'OutSwingin

Great news, indeed!

I think if they had contacted you first about the site, instead of a quick cease-and-desist, then it would not have gotten this far. I guess that's the big corporate mentality at work: shoot first, ask questions later.

In any event, it's good to see that they could be reasoned with. 

Way to go!!!!!!!!!!!!!!!!!


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## recrisp

natedidit said:


> Ok, so last night I went online and found emails of Shutterfly's top level management team, including VP of Marketing, VP Legal, CEO, etc. I sent them all the following letter:
> ------------------------------------
> And I just got the following response: WHO-HOO!!
> ------------------------------------
> The executive team of Shutterfly.com has forward your email to us. Thank
> you for your attention in this manner, and quick response.
> After learning about your inspiring home business, the legal team at
> Shutterfly.com has decided to not continue pursuing this domain.
> We hope your family and business continues to do prosper.
> Best Wishes,
> Domain Recovery
> CitizenHawk, Inc



Nate,

That really is VERY GOOD NEWS!
I'm really happy for you, and also, glad that there are people out there that actually listen when someone talks, I'm floored, I surely didn't expect this, and you probably didn't either.

You may feel as though this was for nothing, but I 'magine that _you done learned some smarts _through this ordeal, and we did too, so thank you for letting us go on the tag along and learn vicariously through you. 

Congratulations on writing the letter in the way you did, perfectly done.
I tell people all of the time to stop, take your time, write the worst letter they can to get their feelings out, then _read it again the next day_, then edit until it's like yours. heheheh

Randy


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## ryan6916

The letter was perfect, great job. Glad to see that they seen it your way. Hope you business keeps growing.


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## hiGH

wow... what a great ending. congrats on the victory


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## splathead

Unbelievable. I would have never thought it.


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## mothertongues

Great ending! I also hope you continue to prosper! (And get lots of clicks because of the story!)


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## Wombat

Very good news...You can now sleep easier at night...


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## acanvas

wow! Very Exciting...big business with a heat! yeah!!!


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## natedidit

Thanks to whoever wrote this blog post at domainjunkies - a domainers blog. It's awesome! 

I went ahead and Dugg it.

Digg - A Case of Reverse Domain Hijacking with a Happy Ending

Nate


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## gumbydave

I am not a lawyer but I would put my money on " they have no case"

I would inform them they have no case and any legal action will result in them having to pay your legal fees



> Defenses to infringement
> A defendant in an infringement action may rebut the presumption of copying by a showing of *independent creation*. It is possible for an author to create a work independently while bearing similarities to another. If access is not established, there is no copying, even if there is a striking similarity between the two works.[31] For this reason, corporations will destroy or return unsolicited mailings from authors as a policy.[32]
> The legal doctrine of _de minimis non curat lex_, "the law does not care about trivial things," provides a _*de minimis*_ *copying* defense against infringement. When the plaintiff establishes only a trivial use of the copyrighted work by the defendant, there is no infringement. For example, an out-of-focus copyrighted picture appearing only momentarily in the background of a commercial is not infringement.[33] The Beastie Boys successfully used this defense in a lawsuit over the use of three musical notes in the song "Pass the Mic."[34] The Beastie Boys had obtained a license to use the recording, but the rights to the song itself were retained by the original composer (copyrights can be divided). The court held that use of three notes was not a sufficient use and amounted to _de minimis_ copying. However, the Sixth Circuit has held that the _de minimis_ defense is not available for the sampling of sound recordings because of their intrinsic value in saving the sampler time and costs in hiring musicians to perform the music however short.[35]


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## gumbydave

plan b said:


> Wow, big corporation with a heart,, I am about to fall over,,,, I would send them a thank you card.. That is Great!!!!
> 
> R.


 It's not that they "have a heart" it's that they have "no case"


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## natedidit

gumbydave said:


> It's not that they "have a heart" it's that they have "no case"


Yes, but they very well could've pursued it, and in effect shut me down due to the fact that I can not afford to pay for a legal battle up front (and they could have easily gathered that from my letter to them explaining how small my business is).


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## T-BOT

gumbydave said:


> I am not a lawyer....


are sure about that?  

you sure DO sound like one.

where have you been all my life...




:


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## natedidit

gumbydave said:


> I am not a lawyer but I would put my money on " they have no case"
> 
> I would inform them they have no case and any legal action will result in them having to pay your legal fees


The law you quoted there looks like copyright law, which really is not applicable here. They never claimed I was violating copyright law, they claimed I was in violation of a consumer protection law, a completely different animal.


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## printchic

Hi Nate,

Good to hear you have your problem resolved. Just want to suggest you "print" off and keep the original email you received, the letter you sent them and their respond.

Keep a printed copy for your records as you never know... "skutterfly" could blow up tommorrow and then they could be back at your door again claming the same thing. You could then have those records for proof they knew you were using the name you are using, they chose to bypass going after you, etc. 

Just never hurts to keep good records as you never know when you may need them.

Signed,
Printchic


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## gumbydave

natedidit said:


> The law you quoted there looks like copyright law, which really is not applicable here. They never claimed I was violating copyright law, they claimed I was in violation of a consumer protection law, a completely different animal.


 
No doubt, anyway, you handled it well, good job


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## JeridHill

Although I think this is a great thing for not only your businesses, but encouragement for other small businesses, I have to question your site.

After looking at your site, I am wondering how much attention you really want to draw to your site. The site name may not be a spin off of shutterfly, but I'm pretty sure you would have a hard time defending most of the designs on your site of not being taken from major known name brands.

Just saying......


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## Comin'OutSwingin

That would not have been the issue at all.

There would be no need to defend the designs, because the designs were'nt in question.


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## JeridHill

Comin'OutSwingin said:


> That would not have been the issue at all.
> 
> There would be no need to defend the designs, because the designs were'nt in question.


Not yet anyhow. That's what I mean, draw too much attention to the site and the designs could very well be in question.

I just hate seeing the little guys get hit all the time. It was definitely a good thing they let it go.


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## natedidit

From what I've read of trademark law, there is definitely some wiggle room when spoofs are concerned. The main determining factor is usually whether or not the use damages the distinctiveness of, tarnishes or otherwise harms the original trademark. 

None of mine should fit that bill. And I would have no problem pulling any of the spoof shirts off the site if a trademark owner raised concern. Pulling my completely original site and brand down is a different matter though. 



JeridHill said:


> Although I think this is a great thing for not only your businesses, but encouragement for other small businesses, I have to question your site.
> 
> After looking at your site, I am wondering how much attention you really want to draw to your site. The site name may not be a spin off of shutterfly, but I'm pretty sure you would have a hard time defending most of the designs on your site of not being taken from major known name brands.
> 
> Just saying......


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## JeridHill

natedidit said:


> From what I've read of trademark law, there is definitely some wiggle room when spoofs are concerned. The main determining factor is usually whether or not the use damages the distinctiveness of, tarnishes or otherwise harms the original trademark.
> 
> None of mine should fit that bill. And I would have no problem pulling any of the spoof shirts off the site if a trademark owner raised concern. Pulling my completely original site and brand down is a different matter though.


That's good to know. I wasn't sure how the laws worked when dealing with "spoofs".


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## Solmu

natedidit said:


> Thanks to whoever wrote this blog post at domainjunkies - a domainers blog. It's awesome!


Hmm, I wasn't aware of that site previously, but it's run by a regular here who wears more hats than the pope.


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## Comin'OutSwingin

Solmu said:


> Hmm, I wasn't aware of that site previously, but it's run by a regular here who *wears more hats than the pope*.


You've got to be kidding me!

Unbelieveable!


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