From: MINIOwnersLounge@askMINIUSA.COM
Sent: Saturday, August 09, 2003 8:24 AM
To: polarisint@earthlink.net
Subject: RE:Global Consumer Relations / Sales Issue [#465819]

Thanks for sharing your concerns with us. We appreciate hearing from owners like you. 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.

Sincerely,
Emily Hatley
MINI Division
866-ASK-MINI


--Original Message--

Attention : MINI Marketing / Consumer Relations

My protest is in response to the legal action taken against Minicooperonline.com by BMWNA / MINIUSA lawyers. As you can see from this thread on minicooperonline.com, many MINI owners are very upset about this litigation:

<https://www.northamericanmotoring.co...hpBB_14&fi
le=index&action=viewtopic&topic=14098>
https://www.northamericanmotoring.co...pBB_14&fil
e=index&action=viewtopic&topic=14098

I am a dedicated MINI Cooper S owner, and have turned to this on line community for help on many issues. Friends have turned here to make the decision to buy a MINI, even after numerous new vehicle problems after it's release in the US were realized. SO, why does the legal team choose to litigate this, or other sights for the use of the "MINI" name ? Now after 1 year of release in the USA, with untold numbers of sights, vendors etc with this somewhere in their name do you now ( or recently to be correct ) choose to pursue this issue ? You must realize you very well may be opening "Pandora's Box" here with this approach, and will seriously hurt your image, and product sales with these tactics by seriously tainting those that support the product so vigorously. YOUR CUSTOMERS !!!!

I am certain this is not what you want, or BMW given the effort to promote this product line on a global basis. The word will get out, and very possibly the July sales figures will not be representative of sales figures to come. Lest not you forget that BMW as whole has been largely "boosted" my MINI sales in the last two years, and I am sure they don't wish to change this anytime soon. Hitting the Grass Roots Community with such ridiculous litigation is no way to keep all your customers coming back, not to mention drawing in new ones ..............

Reconsider this path, as I feel you are only doing yourselves untold irreparable harm in the " Consumer Relations" department.

One very angry and disgusted MINI Cooper S owner !

 

I think it is a pretty fair response. MCO clearly states that it is an independent site from BMW and mINIUSA. So what's the problem?

 

Here is my reply that I sent out this morning back to MINI USA ............... ;

Emily,

Thank you so much for your replies, I do appreciate them. Another question / clarification then please ........

Since the web sight in questions DOES have listed at the top AND bottom of their home page that they are independent, then what is the issue ??

Example from top of home page disclaimer ;

The Independent North American community of MINI owners and enthusiaists

Example of bottom of the home page Disclaimer :

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.

Twice on one page !

Further, I and surely MINI / USA cannot construe this sight as a commercial identity. Because they list links from other commercial sights does not mean they are in a commercial business. They may, I am not sure, charge fees to list these sights, but if so it is only to cover the perpetual costs of keeping this sight up and running, for example server fees relative to space and web traffic. This community is free to all users, with no registration fees and thus represents no commercial value. It is more a “portal” for all to exchange knowledge, comments, and ideas.

SO again, relative to your comments, how can this conflict with your comments as outlined relative to trademark protection? Additionally, does this in turn mean that MINI USA Legal will pursue the myrid other Web URL’s out there that ARE commercial sights and do have MINI , Cooper or other in their web addresses ? What further of web URL’s that are outside the USA ? Will these be looked over, many of which have been in existence before MINI USA acquired any trademark licenses BECAUSE they are outside the USA ?

I do kindly ask for your detailed replies as I am confused then what is the issue relative to MCO as they are a web based enthusiast community, and NOT a sight striving for commercial “for Profit” existence.

Thank you for your time and efforts !

 

I received the exact same response from that Emily Hatley person, I'm eager to see if they respond back to you again jigster. Keep us updated

 

If MCO is selling advertising, then it IS a commercial site, just like any online magazine or newspaper who doesn't charge it's readers.

I can understand BMW's position regarding the minicooperonline.com domain name. However, I can't see how they can possibly stop third-party companies from putting "mini" in their domain name.

James

 

>>I think it is a pretty fair response. MCO clearly states that it is an independent site from BMW and mINIUSA. So what's the problem?

I believe the problem - and pardon if this has been covered in some of the other threads (I can't keep up with the original thread much less its spawn) - is that MCO has banner ads and clearly supports commercial endeavors. I've looked at some of the other marque enthusiast sites, and while they may in fact be "commercial" they very much hide that fact relative to MCO. I think that BMW wants to own all commercial-related endeavors that pertain to MINI (e.g., see their aggressive interest in marketing and branding all manner of junk that's not specifically related to cars). It's as simple as that. If Mark could/would stop (or at least do a good job of hiding) the ads, then there'd be no problem.

That said, I think that MCO does a great job with sponsors. I personally enjoy and benefit from being able to find and utilize the sponsors of this site. I would be MUCH more likely to purchase from an MCO sponsor than from MINI/BMW directly...and that's actually the point. BMW doesn't WANT me to do that (not at least without getting their cut)...and they're going to work the law to make sure that I don't get a fair chance to try. Well, I say BAHHHHHH on that.

But, I do understand their point...even if I don't accept it.

In the end, it's the marketing that made this car a reality, and it'll be the marketing that will possibly kill it. I guess that's life, but sad.

 

I, too, think this is a pretty fair response. Could this all be respoved by simply changing the name of the site? Then we could all get on with being enthusiasts.

 

I would think that if the URL was changed it might resolve the whole issue. That said, since Mark owns the URL of MCO and perhaps even Mini Motion, I think he should "SIT" on it, not sell it, and move forward. I too will look forward to a answer to my reply letter, IF I get one. As regards the AD banners, Mark in some way has to cover the costs of the web sight, otheriwse it is a No Go effort which is quite evident. IF he could show that he is "Not For Profit" and perhaps even list MCO as a corporation that way, then he only needs to make sure the expenditures match the income so there is no profit. Listen, if the PTL / Jim Baker can get away with the crap he did, then why can't we have an enthusists sight for all to converse on with no registration fees. Costs are costs, and unless Mark wants to "****" money out the window just for fun, then he does have to make it up somewhere. Those are my thoughts ...............

 

I have had reason to talk and correspond with this "Emily Hatley" back in very early '02, when my MCS was one of the first customer-spec cars on order. Just so you can know how lightly BMW/MINI are taking this matter, Emily Hatley is a low lever customer service flunky. They're too gutless to even have a person of authority respond to you!

 

Whether she is a "flunky" or not, her response is fair and completely understandable. Either get rid of the advertising or change the name. It's a simple and reasonable request.

 

I can see both sides of this discussion, however it seems that MINI is doing more harm in "protecting" the brand than they may think. I fail to see the value in bullying a not for profit website into obscurity that's sole purpose is to provide a forum for the brand's owners and enthusiasts. This is especially more confusing to me since MINI has participated in the forums on behalf of the brand. The company has gained tremendous insight on quality control issues and the future wants and needs of MINI enthusiasts. While initially making headlines with avant garde marketing techniques and fostering the enthusiasm enthusiasts, MINI is trampling their own garden with this targeted attack on the MCO website. I don't understand how they feel by changing the website that this will enhance the MCO site to better serve their needs. I can understand the commercial application issues as they would pertain to aftermarket manufacturers, but I can clearly see that several if not all of the BMW CCA websites sell advertising wether in their monthly magazine or on their internet sites to offset the costs of management. Are the BMW/MINI Legal Advisors (like Motoring Advisor, only different) hunting down CCA club members in the same way. For MINI this is a double edge sword. I can understand the nature of protecting the brand identity. I understand that it should and needs to be done, however the company shopuld exercise some discretion and take in to account the value of the enthusiast website and it's role in building the future of the brand. I think what MINI needs to do is to have a panel of advisors to govern the content of the websites and decide who was acting the brand's interest. Joe

 

>>I received the exact same response from that Emily Hatley person, I'm eager to see if they respond back to you again jigster. Keep us updated


Either she is one productive admin assistant, or MINI is very, very short staffed. I got the same response, same person.

 

Joe, nice post. However, I'm not sure that MCO is set up as a not-for-profit web-site. I doubt it. Second, nothing would kill this site sooner than a MINI-appointed board of governors. The friendly moderators here at MCO are more governance than most here can handle. We're a rebellious bunch, by nature.

 

It is hard for me to believe that a single corporate entity such as BMW can own an adjective such as "mini". Go into any store and look at how many items are described as being "mini". Just in the grocery store frozen food section, I have seen mini corndogs, mini eggrolls, and mini ice-cream sandwiches. I have a mini watercolor set.

And as for the winged logo. Steak and Shake has had the winged logo for a lot longer than BMW has owned MINI. I would love to see Steak and Shake's attorneys take on MINI for stealing their logo.

 

The big difference is MINI is not an adjective. MINI is a noun.
Neither Steak n' Shake or MINI are trading on each other's brand or image. MINI wouldn't give a toss if a non-profit bird watching club used a knock-off of their logo. It's folks who run MINI-related sites selling MINI-related products that get their dander up.

 

Wow, Emily is a busy little MINIUSA gal. I got the same letter. On a Saturday, no less??? How curious, I thought MINIUSA was CLOSED on Saturday??? Who else thinks that Emily is just a name on staff they used so they would sound like it was a response from a real person? How many of the 159 guests online now are actually "Emily"??

 

I was response #465736, I got the same generic response.

 

>>It is hard for me to believe that a single corporate entity such as BMW can own an adjective such as "mini". Go into any store and look at how many items are described as being "mini". Just in the grocery store frozen food section, I have seen mini corndogs, mini eggrolls, and mini ice-cream sandwiches. I have a mini watercolor set.


Believe it... Apple goes after people 100% of the time if they use anything close to the word Mac and it has anything to do with computers. It's not the ownership of the word Mac or Mini, it's the word Mini as in reference to the car that BMW manufactures or the word Mac in reference to any computer such as to make people think it's an Apple Mac!

The only exception is a site that does not make any profits - IF I pay for it all and I run the site for the enjoyment of others, then it's ok. Like I have own a home and only live there, it's not a commercial property, but If I run it like a business, making a profit from it, then it's not my home, it's a commercial property! Even in real estate they know the difference.

So use MINI corndog all you want as long as it in no way connects anything to the car. Even using the MCO would be wrong. IF someone asks what MCO means you'd be saying the M = Mini the car!

and yes, I'm sure that it took the BMW attorneys a few days to draft a legally acceptable response letter. I'm sure they have given that lady this as a project and she is directly responsible for making sure any and all letters from customers about the MCO name get the legal answer just as it was drafted and approved.

You know she hates her job right now!

 

...and my response to Emily...

Dear Emily:

I certainly look forward to receiving my MINI, it is sitting on the docks in
Southampton waiting for passage this week on the Jingu Maru.

Thank you for your response. I understand your wanting to protect a
trademark. However, I don't agree with your position on this matter. There
is no reason that you should not be able to come to terms with Mark
Ferguson, allowing the use of the minicooperonline site name for a nominal
fee, in recognition of the enormous value the site has to current and
prospective (like me!) owners.

I continue to believe that this position conflicts with MINI's stated values
and will not be in the best interests of BMW or MINI.

I urge you to reconsider.

 

Look, BMW/MINUSA ***MUST*** defend their trademark. If they don't, they lose it. It's that simple. However, they can certainly license the trademark to others. It's done all the time. Here is my reply to the canned message we're all receiving from MINIUSA:

I understood this need to protect your trademark from the very beginning. If you'll notice my original text below, you'll see that I offer a solution. Mark Ferguson has helped MINIUSA immensely. Many users have stated that it was because of MINICOOPERONLINE.COM that they bought a MINI. Rather than shut his web site down, work out a no-cost arrangement that protects your trademark and allows Mark Ferguson to keep MINICOOPERONLINE.COM.

TEXT FROM MY ORIGINAL MESSAGE:

> I understand the need to protect copyright and trademarks. I
> understand that
> BMW/MINIUSA can't set precedent of being soft on trademark infringement.
> MINIUSA can sell rights to use that trademark, however. I suggest MINIUSA
> work out an agreement with Mark Ferguson, the owner of
> MINICOOPERONLINE.COM.
> You could quite easily assign a value to the goodwill and
> owner-satisfaction, and value-added benefits that the site provides to
> MINIUSA, not to mention the number of people that his site ultimately
> delivers to your MINI dealerships. You could then charge Mark Ferguson a
> trademark usage fee that just happened to equal the value that his site
> provides to you. The net result would be no cost to either party, yet you
> could show legally that you were charging for the use of the trademarked
> name. If you had shutdown MINICOOPERONLINE.COM in its infancy, it would be
> an entirely different manner. But in laymen's terms, we have squatters
> rights. MINIUSA allowed the site to build, communities to form, and
> membership to the site to sky-rocket. Now that the site is a success,
> MINIUSA comes in to try to shut it down. That hardly seems the least bit
> fair to me.


Furthermore, you actively participated in the forums of MINICOOPERONLINE through the user MINIDivision. You have weakened your own case by linking to and participating in the forum.

If you choose not to work out an agreement with Mark Ferguson, as described above, or a similar arrangement, it clearly shows MINIUSA's marketing was simply empty promises. If you continue to attempt to take MINICOOPERONLINE.COM away from Mark Ferguson and the MINI enthusiasts, I will boycott all future products from MINIUSA. I will tell everyone I meet of my dissatisfaction with your corporate actions. I will contribute to a legal defense fund, and I will do everything I can to assist MINICOOPERONLINE.COM in defeating your actions in a court of law.

What a shame that your actions have caused such anger and outrage, when it could have quietly been worked out in an agreeable manner. Now, the cult-like following will dissolve, people will begin to discuss their MINI's openly, they'll be far more willing to state all of the problems they have had with their car, like the stumbling issue, the leaking coolant tanks, the shoddy interior paint, the rattles, and the many other problems that are so common. Before, when these issues were raised, the MINI enthusiasts would rise to the defense of the car. I think you'll see that through your legal team's actions, you have silenced your defenders.

Do the right thing, here. You can work out a license arrangement with Mark Ferguson and allow him to keep the name of the site. His site has been a tremendous asset for you; treat him with the trust and respect he deserves.

------------------

That's my take. They must protect their trademark, they do NOT have to do that by disallowing the use of the name minicooperonline.com. They can work out a compromise -- IF THEY WANT TO.

See ya,
JS