Monsta Mo Mini
13th August 2003, 10:03 PM
Some of you may have seen this but just in case you havemt here it is. I don't think any UK based sites have too much to worry about. What next...Mrs M. Mouse had better watch out!
Have you had any of the following questions pop into your head recently?
* Where are the new t-shirts?
* Where are the decals you’ve been asking for?
* Why was the logo changed suddenly (several months ago)?
* Why does Mark seemed stressed all the time?
Well…here is the full scoop on what has been going on behind the scenes of MCO and the situation that has led to the above questions…
In February of this year I received a letter from the trademark litigation counsel of BMW AG and BMW North America asking that I cease and desist using our original logo as well as transfer the domain, minicooperonline.com, to BMW as it was viewed by their counsel to violate BMW’s trademarks. In an attempt to continue development of a strong information transfer relationship with the MINI organization, I agreed to put together a transition plan proposal for the logo, domain name, and provide a means to further emphasize that the site was a community independent of MINI/BMW. This proposal included the time frames as to when and how these elements would be launched along with the ability to retain minicooperonline.com for a period of time to redirect traffic to the new domain name. At the time, it was conveyed to me that the issue with the domain name was that the term “mini cooper” is a trademarked term. Given this I registered minionline.net and indicated that the domain would be made active and redirection of minicooperonline.com to the new domain would be put in place by April 30, 2003. Through a contact at MINI I learned that minionline.net was not acceptable and received the following suggestions from the counsel representing BMW:
* Iluvmini.com
* Ilovemymini.com
* fansofminis.com
* minienthusiast[s].com
* drivingmymini.com/lovingmymini.com
Because of our relationship with aftermarket vendors I wanted to preserve a sense of professionalism in the name and did not want to convey the notion that the site was just my personal tribute to MINI. Based on the type of naming that was provided I assumed that the use of MINI in the name would be acceptable. With this in mind I suggested mini37.com to reflect the number of Paddy Hopkirk’s Mini when he won the 1964 Monte Carlo Rally. The message I received from their counsel was “mini37 doesn't work. How about clubmini.org? It's available”. OK…fine…I can continue to brainstorm. Eventually I come up with MINI Motor Club.com and submitted that as part of a straw man for a settlement document. On April 8th I received a revised settlement document that indicated that MINI Motor Club.com was acceptable. Approximately two hours later a new email arrived which indicated that it was BMW’s understanding that their acceptance of this name was based on their understanding that the site was an enthusiast-only site and not commercial in any way. At this point in time we had approximately 20 advertisers on the site...this commercial element of the site was anything but hidden.
Additionally, that same day, yet another condition arouse…It was learned that I had registered the domain mini-motion.com. This domain, registered in September 2002, was never developed, and in March 2003 I learned that MINI had launched a new apparel line called…MINI Motion. To date no trademark filing has been made for this brand. Regardless, the condition stated that as part of the settlement I would be required to turn this domain over to BMW as well.
My last email on April 10th asking for clarification on why I was being asked to be a non-commercial site (if I wanted to use the name minimotorclub.com) went unanswered by BMW’s counsel.
At this point I felt I was forced to retain my own counsel to protect the interests of the site. While expensive I felt that I was being put in a position where the playing field was constantly being changed.
While bringing my counsel up to date on the issues at hand we
Have you had any of the following questions pop into your head recently?
* Where are the new t-shirts?
* Where are the decals you’ve been asking for?
* Why was the logo changed suddenly (several months ago)?
* Why does Mark seemed stressed all the time?
Well…here is the full scoop on what has been going on behind the scenes of MCO and the situation that has led to the above questions…
In February of this year I received a letter from the trademark litigation counsel of BMW AG and BMW North America asking that I cease and desist using our original logo as well as transfer the domain, minicooperonline.com, to BMW as it was viewed by their counsel to violate BMW’s trademarks. In an attempt to continue development of a strong information transfer relationship with the MINI organization, I agreed to put together a transition plan proposal for the logo, domain name, and provide a means to further emphasize that the site was a community independent of MINI/BMW. This proposal included the time frames as to when and how these elements would be launched along with the ability to retain minicooperonline.com for a period of time to redirect traffic to the new domain name. At the time, it was conveyed to me that the issue with the domain name was that the term “mini cooper” is a trademarked term. Given this I registered minionline.net and indicated that the domain would be made active and redirection of minicooperonline.com to the new domain would be put in place by April 30, 2003. Through a contact at MINI I learned that minionline.net was not acceptable and received the following suggestions from the counsel representing BMW:
* Iluvmini.com
* Ilovemymini.com
* fansofminis.com
* minienthusiast[s].com
* drivingmymini.com/lovingmymini.com
Because of our relationship with aftermarket vendors I wanted to preserve a sense of professionalism in the name and did not want to convey the notion that the site was just my personal tribute to MINI. Based on the type of naming that was provided I assumed that the use of MINI in the name would be acceptable. With this in mind I suggested mini37.com to reflect the number of Paddy Hopkirk’s Mini when he won the 1964 Monte Carlo Rally. The message I received from their counsel was “mini37 doesn't work. How about clubmini.org? It's available”. OK…fine…I can continue to brainstorm. Eventually I come up with MINI Motor Club.com and submitted that as part of a straw man for a settlement document. On April 8th I received a revised settlement document that indicated that MINI Motor Club.com was acceptable. Approximately two hours later a new email arrived which indicated that it was BMW’s understanding that their acceptance of this name was based on their understanding that the site was an enthusiast-only site and not commercial in any way. At this point in time we had approximately 20 advertisers on the site...this commercial element of the site was anything but hidden.
Additionally, that same day, yet another condition arouse…It was learned that I had registered the domain mini-motion.com. This domain, registered in September 2002, was never developed, and in March 2003 I learned that MINI had launched a new apparel line called…MINI Motion. To date no trademark filing has been made for this brand. Regardless, the condition stated that as part of the settlement I would be required to turn this domain over to BMW as well.
My last email on April 10th asking for clarification on why I was being asked to be a non-commercial site (if I wanted to use the name minimotorclub.com) went unanswered by BMW’s counsel.
At this point I felt I was forced to retain my own counsel to protect the interests of the site. While expensive I felt that I was being put in a position where the playing field was constantly being changed.
While bringing my counsel up to date on the issues at hand we