The Lawsuit That Wasn’t


On September 29th, I received an email from a student at Sealholm high school with the nickname Operative 6. He said that his school had a Flex program that was was regularly updated on the web. His school purchased: Flex.org: so the students there would have a convenient place to check the regularly updated page. Enter: Revlon, the owners of Flex Shampoo. Here’s the email I received from the student at Seaholm high school….

“this should interest you a bit… evidently revlon (yes, the hair products revlon) is SUING (is that how it’s spelled?) our school. why? because we own the domain www.flex.org. why do they care? because they have “flex” shampoo. so, they’re suing us for the domain name and “any profits we may have made from the use of it”. they’re basically charging us with cybersquatting (they DID say this). thing is, were NOT cybersquatting, we actually use the website to post notes on films, schedules, and upcoming events for our flex program in school. what’s flex? its kinda like social studies/english/philosophy rolled into one class. if you want, i can type the letter they sent here word-for-word for you (just be sure to e-mail me back saying so). i wonder if this is the first abuse of the cybersquatting act…

E-mail me back for more details”

So I take a look at flex.org and it’s basically exactly what Operative 6 said. Right across the top of the page it says “Seaholm High School’s Flexible Scheduling Program”. Then there are several updates about various things happening in the Flex program. Now maybe it’s just my cynical nature, but my first thought was “Maybe this kid is trying to do some kind of prank on me. I don’t see any possible way that Revlon could possibly have any claim on this page.” So I emailed Operative 6 back and asked for details including a copy of whatever information Revlon’s lawyers had sent to his school.

A couple of days later on October 2nd, I received a reply. Operative 6 sent me the letter from Revlon. Enjoy the threatening legalese. Italics were put in by me in order to emphasize certain points. Asterisks were used to block out certain names, addresses and numbers.

“John N. O’Shea Vice president, trademarks

September 18, 2000

Federal Express

Flexible Scheduling Program ****************** ******************

Re: FLEX – Trademark Infringement by Flexible Scheduling Program (Our File: **********************)

Dear Sir/Madam:

I am Trademark counsel to Revlon Consumer Products Corporation (“Revlon”) the owner of the famous FLEX trademark. Revlon has marketed and sold a variety of beauty care products under the FLEX trademark since 1958. The FLEX mark is the subject of united states patent and Trademark Office Trademark Registration nos. 787622; 218898; 1651882; 1651583; 1912138; and 1863442. Revlon has spent a great deal of time, energy, and tens of millions of dollars since 1958 advertising and promoting the FLEX products in the United States and throughout the world. As a result, the FLEX trademark has become famous.

It has come to our attention that you have registered the following internet domain name: FLEX.ORG (“Disputed Domain Name”) using “FLEX” which is identical in sound, appearance, and commercial impression to the famous FLEX trademark. Please be advised that this unauthorized use of the FLEX mark may be subject you to cancellation or transfer of the Disputed Domain Name and liability for monetary damages: pursuant to section 43(d) of the Lanham Act (“Anti-Cybersquatting Act”) as well as cancellation or transfer of the Disputed Domain Name under the Uniform Domain Name Dispute Resolution Policy.

Moreover, the use of the distinctive FLEX trademark, without the authorization and consent of Revlon, is likely to cause the trade or consumers to think that you or your products or services are either associated with or authorized by Revlon thereby creating confusion, mistake, and deception.: Such use constitutes trademark infringement under section 32 of the Lanham Act, trademark dilution under section 43(c) of the Lanham act, and unfair competition under section 43(a) of the Lanham Act, Violation of these laws: may entitle Revlon to injunctive relief, monetary recovery of your profits and of our losses, punitive damages, as well as recovery of attorneys’ fees and court costs.: You should be aware that in any legal action taken by Revlon we will seek such remedies.

Under the circumstances, we demand that you immediately cease and desist from any usage or preparation for use of the mark FLEX on or in connection with an internet domain name, an internet web site, or in any other manner whatsoever. Moreover, you are hereby requested to immediately transfer the domain name to Revlon Consumer Products Corporation: by executing the enclosed Network Solutions Transfer Agreement to effectuate such transfer and returning these forms to us. The agreement must be signed in the presence of a notary public.

Unless we receive a response from you by returning to us the executing form, or otherwise, by the end of business on OCTOBER 2, 2000 we will actively pursue legal remedies to protect our rights, which may include legal action for compensatory and punitive damages, attorney’s fees, and all other equitable and legal remedies available to use.

The demand made here shall not waive or prejudice any rights or remedies which Revlon may have with respect to the subject matter of this letter, all of which rights and remedies are expressively reserved.

***Signature***

John N. O’Shea

How’s that for a threatening letter? An enormous corporation demanding that a school give up there legally registered domain name or Revlon will “actively pursue legal remedies to protect our rights, which may include legal action for compensatory and punitive damages, attorney’s fees, and all other equitable and legal remedies available to use.”

On October 2nd, a mere 3 days after I received the first email from Operative 6, I emailed John N. O’Shea (the name on the email from Revlon). I let him know I was planning on writing an article on this issue and asked him if he had any comments. I offered to talk to him via email, chat, or phone to get his side of the story. Here’s that email.

“Mr. O’Shea

My name is John Hawkins from Brass Knuckles Webzine. I have been alerted that Revlon is suing Seaholm high school over the Flex.org domain name. I am currently working on an article on this lawsuit that will be coming out in the next few days. I wanted to contact you and give you a chance get your side of the story out before this article is released to the public. If you’d like to discuss this issue we could do so via phone, a chat client like ICQ or IRC, or via email.

Thank you

John Hawkins

http://www.brassknuckles.net”

Then I decided I better talk to a lawyer myself to get some legal advice on all of this because I personally thought Revlon didn’t have a leg to stand on. I got in touch with lawyer Jeff Gordon through: xpertsite.com: and presented him with the facts of the case as I knew them. Here is some of what he told me about this issue….

“So, to answer your question, Revlon should not be able stop the High School from owning the flex.org domain name…. especially since the flex organization at the high school is not in the same business as Revlon and there would not be, as you have surmised, any likelihood of confusion between the two organizations……….Finally, the word “flex” is not very unique on the broad scale and could apply to just about anything…….there is obviously no possibility of confusion (especially since the H.S. Flex organization is not a commercial one).

So now I had a lawyer confirming my initial impression that this potential lawsuit was standing on very questionable ground.

On October 3rd, I received an email from John O’Shea at Revlon. The contents speak for themselves and I put in the italics for emphasis….

“Mr. Hawkins,

There is no lawsuit, current or impending. To clarify the record, you should be aware that a letter was sent to Flexible Scheduling Program in Birmingham, Michigan as part of a Revlon program designed to recapture a number of the company’s trademarks that have been registered as domain names or parts of domain names by cybersquatters. (As you probably know, such programs are common for owners of well-known brand names.) The letter objected to FlexibIe Scheduling’s use of: . At the time, we were unaware that: was the website for a scheduling system for high school classes. We have since been informed by the Birmingham Public Schools of the nature of the website and, while acquiring thedomain name is something we would like to achieve amicably through future discussions, Revlon has no plans to take any legal action.”

Well that’s quite a change. Revlon went from….

“Unless we receive a response from you by returning to us the executing form, or otherwise, by the end of business on OCTOBER 2, 2000 we will actively pursue legal remedies to protect our rights, which may include legal action for compensatory and punitive damages, attorney’s fees, and all other equitable and legal remedies available to use.”

to

“…..acquiring the: domain name is something we would like to achieve amicably through future discussions, Revlon has no plans to take any legal action.”

Was it simply coincidence or was this really a mistake on Revlon’s part? Although Revlon said that “we were unaware that: was the website for a scheduling system for high school classes” I don’t see how anyone who actually looked at the page could come to any conclusion other than that. Does that mean that Revlon never actually checked the page before they sent out a threatening letter to a high school?

Of course there is another possibility that some of the more cynical among us may believe although it certainly could never be proven. It could be entirely possible that Revlon knew from the moment that they sent that first letter that they had no legal right to Flex.org. However, they may have been hoping that Seaholm high school would just roll over and give them the domain name rather than face an expensive court fight. Then when they found out that an article was going to be written on the case, they decided to handle things “amicably” rather than risk the bad publicity of being portrayed as a large corporation bullying a public school.

On the surface, it seems that things may work out for the best. Revlon avoided a court fight they had almost no chance of winning and Seaholm high school was spared the legal expense of proving themselves right in court. Furthermore, Revlon may even end up paying off Seaholm high school to acquire the flex.org domain name. But, there are still some other troubling issues to consider. What if Seaholm high school would of gotten nervous at the first hint of trouble and would of given up their domain name? How long would Seaholm have been left to twist in the wind if Revlon wouldn’t have gotten a letter from someone wanting to do an article on the whole situation? How many other corporations are intimidating people off of their legally owned domain names under the threat of expensive legal action?

In fact, although Seaholm high school and Revlon may work out their differences, the larger question remains. How many other people is this happening to? Are there people out there with minimal amounts of legal knowledge giving up their legally acquired domain names because of their fear of being taken to the cleaners in court by some corporations high powered lawyers? Don’t be surprised to see this same situation repeated in the future with only the names of the corporations and victims…ehr defendants changing. That is…if it even makes the news next time….

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