On behalf of MINI USA, thank you for your comments regarding this issue, and we are sorry to hear of your concerns.

With reference to our trademark protection, we have no wish to prevent independent businesses from trading. However, just like any other business, MINI USA is duty bound to defend its MINI trademarks, and also needs to ensure that consumers clearly understand when they are dealing with official MINI outlets.

Also, we wish to make clear that we do distinguish between enthusiast and commercial websites. We welcome enthusiast-only websites, and they are free to use the MINI wordmark in their domain names, tradenames and otherwise, as long as they are clear that the sites are independent of MINI.

To ensure our trademarks are protected, we ask that third parties engaged in commercial MINI-related activities make clear that they are not officially licensed, and limit themselves to “fair use” textural references to MINI in their literature. For example, a commercial website may not use MINI in its domain name or tradename, nor may it make trademark use of the MINI mark. It must ensure there is no suggestion that it is an authorized, licensed, sponsored or affiliated MINI portal. Neither enthusiast nor commercial sites may use the MINI logo or any imitation thereof without permission.

We hope that you understand our obligation to protect the MINI trademarks. Again, thank you for your comments and concerns.
_________________
MINI USA Customer Relations

 

That would appear to these unlegal-minded eyes to be in direct contradiction to what the lawyers are saying. I see the disclaimer at the bottom of the MCO home screen as well as the large banner at the top the says "The Independent North American community..." every time I come to this site. Spin doctors and lawyers really need to get on the same page.

 

So if MCO were to post a much larger, more visible disclaimer of "This site is in no way related to MINI USA, BMW, or any related official MINI enterprise" or something of that sort, then it would seem like we could call this whole thing off, no?

 

>>>For example, a commercial website may not use MINI in its domain name or tradename, nor may it make trademark use of the MINI mark. It must ensure there is no suggestion that it is an authorized, licensed, sponsored or affiliated MINI portal. Neither enthusiast nor commercial sites may use the MINI logo or any imitation thereof without permission. <<<

What about the elf painters at http://www.minimotion.com? Or any other url with the word mini in it? They assume they own the word outright. they are clinically moronic. Of course the MINI mark is untouchable, but variations of it are not... the MINI mark is NOT unique, as we have all seen before... like the good ole steak and shake!

This is silly.

 

>>So if MCO were to post a much larger, more visible disclaimer of "This site is in no way related to MINI USA, BMW, or any related official MINI enterprise" or something of that sort, then it would seem like we could call this whole thing off, no?
>>
I was just sitting here thinking the same thing - does the fact that MCO has had a disclaimer from day one - not mean anything???
donna@dcmetrominis.org

 

>>For example, a commercial website may not use MINI in its domain name

Disclaimers don't address THIS problem that MINI USA has with this board.

 

>>To ensure our trademarks are protected, we ask that third parties engaged in commercial MINI-related activities make clear that they are not officially licensed, and limit themselves to “fair use” textural references to MINI in their literature. For example, a commercial website may not use MINI in its domain name or tradename, nor may it make trademark use of the MINI mark. It must ensure there is no suggestion that it is an authorized, licensed, sponsored or affiliated MINI portal. Neither enthusiast nor commercial sites may use the MINI logo or any imitation thereof without permission.
>>_________________
>>MINI USA Customer Relations

The issue in MCO's case is the monetary issue. MiniCooperOnline is making money from the names MINI and Cooper as they directly relate to the car brand. With a mark, use for "commercial" (read monetary) gain without payment of a royalty, license fee or other renumeration is an infringment on the rights of the owners of the mark. As such, MINIUSA is obligated to "protect" their mark.

However, from a PR standpoint and a defacto use standpoint (by virtue of mini division posts), they have condoned this specific usage of the mark. To protect their rights to the mark and set precident for others' use of the mark, they should work out a royalty/license fee with MCO. The amount does not need to be disclosed. This way, MINUSA can do the right thing by MCO (after 18 months of condoning their operation) by charging a minimal ($1??) fee and charging anyone who comes in after up the wazoo.

Comments?

 

So if the domain name was changed to http://www.MCEnthusiasts.com the lawyers and hassles would all go away? I say go for it!

 

Sorry to hear what? That MINI Division has been on this site for a year and only in February did MINI/BMW have any issue with the name? That they suggested clubmini.org as a suitable replacement and then backpeddled and renigged?

How would anyone be confused by this:

MINI COOPER Online is an independently operated web site supporting owners and enthusiasts worldwide. As such it has no official relationship with BMW AG, MG Rover cars, or BMW of North America.

All original artwork and design is Copyright © 2002-2003 minicooperonline.com.

So why do the lawyers say otherwise? Does MINIUSA, even now, not know even now what the BMW Legal team has set as boundaries in naming? Here's a refresher:

BMW will be taking a hard line on any domain name that uses MINI as part of the name when it is relative to the automobile. Any sites that are commercial (offering products and/or servvices for the MINI) will not be allowed to use MINI in their domain name. Furthermore any non-commerical site (e.g. – a club site or fan site) with MINI in its domain name will be subject to this same standard if it provides hyperlinks to any commercial site selling MINI-related products and or services.

Again, I point you to the MCO disclaimer. I will also make an arguement that MINI COOPER Online should *NOT* be considered a commercial site (see below).

Thank you for further muddying the waters. Your post does not address some of the key issues like the LINKING of enthusiasts sites with mini in the domain name to commercial mini related sites. It also does nothing to address whether MINI COOPER Online is viewed by BMW as a commercial or enthusiast site.

The Case for MINI COOPER Online as an Enthusiast site with MINI in the Domain Name:

Who says MCO is a commercial site and not an Enthusiast site anyway?

Sure it makes money through advertising, but it's not selling a product, it's connecting up enthusiasts. The advertising pays for the server costs and allow for further development of the site. It is totally unreasonable to expect that such an enthusiast site with 9000 users and massive growth, such as this, would be run out of the goodness of Mark's heart and that he would just eat the costs associated this the upkeep and maintenance of the site. The fact that this type of site is so involved to keep growing also mandates that at this point he works full time on it. Thus, what is the problem with drawing a salary for that upkeep? Especially when the site growth is helping helping MINIUSA directly by giving enthusiasts a place to gather.

Then there is the fact that MINI COOPER Online is also helping the MINI Community immensely by providing server space for a large number of club sites. MCO is an enthusiast site through and through.

How does MINIUSA explain being so protective of it's trademarks while launching MINI Motion and not realizing until MARK TOLD YOU that he owned http://www.mini-motion.com and had since September of last year. It would seem that if you were so concerned about naming and preventing confusion you wouldn't launch a product line of clothing without doing a basic web search for the URLs that match that name. Surely MINI would love to get it's hands on http://www.mini-motion.com

It really doesn't seem like MINIUSA, BMW, and BMW legal are on the same page yet.

 

>>We hope that you understand our obligation to protect the MINI trademarks.
>>_________________
>>MINI USA Customer Relations

... and we really would like the use of the domain "mini-motion.com" since all other variations have been aquired by non-MINI related sites.

Just a slight oversite :evil:

_________________
-goin440

<h3><b>VOTE: MCO, good 2 go!</b></h3>
Cast your vote <a href="http://www.petitiononline.com/mco080...ion.html" target="_blank">now</a>!</h2></p>

 

The interesting thing I take away from the original thread post is that this wasn't originally posted on MCO but on the MetroplexMINI.org site as a unsolicited post. Here is the direct link to the post

Rocketpop simply posted this to MCO so we could see it. Given that we have not seen any "official" post or even a call/email to either myself or my attorney I don't feel that this is a entirely credible post as it doesn't address the issues and policy that BMW's external legal team is pursuing. The person making it is likely on the Customer Service team.

Mark

 

Rocketpop - It seems to me that MCO fits the very definitiion of an enthusiast site. The mere fact that it offers sponsorship opportunities from independent MINI supplier to keep it afloat does not transform it into a commercial site. Is MINIUSA speaking to its legal department or are they taking the "scattergun" appraoch to quashing anything using the MINI name. Considering the extraordinary efforts made by MINIUSA to establish goodwill and a grassroots base for the new MINI, this latest attack seems destined only to bite the hand that feeds it. Let's do the right thing so we can get back to Motoring.

 

I'm a little surprised that MINIUSA (via MINI Division) has apparently posted to the Metroplex site, but won't comment directly to Mark or his attorney (or to the main thread) about the particulars of their "newest" position. I'm also suprised that they commented off MCO before the weekend, but apparently won't be commenting over the weekend (one would presume).

It does seem to me that the best way for MINI to have damage control at this point is to have BMW legal contact Mark and his Attorney, come to a meeting of the minds, where by MINI COOPER Online is recognized for what it is - An Enthusiast Website and therefore able to use MINI and COOPER in the name (for a nominal licensing fee if necessary). THEN, BMW Legal should request that Mark create a new User I.D. for BMW Legal to post under. That way Mark would be able to vouch for the fact it was legit. ATTN MINI the user name MINI Division has lost credibility on MCO because BMW legal's position undermines what the customer service arm of MINI is posting. It would be best to have BMW Legal post after communicating the same information to Mark and his attorney directly.

That's my advice anyway.

Dave

_________________
PM Dave

 

Just to clarify, I did not write the statement above, I only posted it here on MCO because MINI Division posted it on out local club board and not here.

I am not in bed with MINI or BMW.

 

Rocketpop,
Thanks for posting this to MCO. We wouldn't have known about it otherwise. Thanks again!

Mark

>>Just to clarify, I did not write the statement above, I only posted it here on MCO because MINI Division posted it on out local club board and not here.
>>
>>I am not in bed with MINI or BMW.

 

>>The issue in MCO's case is the monetary issue. MiniCooperOnline is making money from the names MINI and Cooper as they directly relate to the car brand.

I think one could argue against that. Mark is making money from the advertisers who want to sell products to a community of MINI owners. In no way is he selling un-authorized MINI merchandise, or any MINI or Cooper branded products.

Rocketboy_X

 

......maybe they want you to add "PROUDLY independent of BMW/MINI NA"..

 

>>The issue in MCO's case is the monetary issue. MiniCooperOnline is making money from the names MINI and Cooper as they directly relate to the car brand. With a mark, use for "commercial" (read monetary) gain without payment of a royalty, license fee or other renumeration is an infringment on the rights of the owners of the mark. As such, MINIUSA is obligated to "protect" their mark.
>>
>>However, from a PR standpoint and a defacto use standpoint (by virtue of mini division posts), they have condoned this specific usage of the mark. To protect their rights to the mark and set precident for others' use of the mark, they should work out a royalty/license fee with MCO. The amount does not need to be disclosed. This way, MINUSA can do the right thing by MCO (after 18 months of condoning their operation) by charging a minimal ($1??) fee and charging anyone who comes in after up the wazoo.
>>
>>Comments?

EXACTLY Blue -

This is clearly one effective settlement compromise that would be discussed. There are many others.

BMW probably won't (and certainly doesn't have to) say or do anything until this settles down a bit. They have a corporate strategy with regard to the defense of this trademark and the settlement will reveal just how they are going to handle this case and others like it.

I ran a BMWCCA autocross today with blue masking tape over the "COOPER". No one asked me about it and the one guy I told about it didn't know what I was talking about. Unless one of the wire services pick this up and the press runs with it the only ones who will know or care are us Mini enthusiasts a.k.a, the best customers BMW will ever have.

 

BMW legal and the little guy.....a while back, but examples of bending owner
enthusiasm.

http://www.motorcycle.com/mo/mcdaily/day0045.html

http://pi0051.uvt.nl/no_bmw.htm

http://www.vimy.org/newsandevents/pr.../18July01.html

 

>>BMW legal and the little guy.....a while back, but examples of bending owner
>>enthusiasm.
>>
>>http://www.motorcycle.com/mo/mcdaily/day0045.html
>>
>>http://pi0051.uvt.nl/no_bmw.htm
>>
>>http://www.vimy.org/newsandevents/pr.../18July01.html
>>
>>
>>
Thanks for the links. Those bastards.

X2

 

The post RocketPop got from MetroplexMINI.org is exactly what I received from Emily Hatley at MINI Division this morning after I had ask why MCO had been removed from the Owner's Lounge Links. I think they now have a genaric reply to everyone's emails.

 

This is also the message I received from MINI in response to my post in the MINIOwnersLounge. Seems it is their canned statement to all who question their actions against MCO and probably any other "trademark infringement".