Have you had any of the following questions pop into your head recently?

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:

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 went ahead and introduced a new logo in an attempt to keep the transition moving forward and demonstrate good faith. As part of this I spent many hours reviewing domain name options in an attempt to find both a name with and without MINI in it that would convey the purpose of the site without sounding unprofessional or overly cute. Around the second week of July my counsel submitted a letter in which we said that the name that we would be moving to was MINIApex.com. During the third week of July we received another letter from BMW’s counsel that indicated that this would not be acceptable either. Based on this response my counsel called BMW’s counsel in an attempt to better understand why this was not acceptable and learned the following:

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.

Based on this view, I decided that I would submit an email to Jack Pitney, General Manager of MINI USA, and ask that he reconsider this position. In this letter, emailed to him on July 31st, I attempted to make him aware of the position that the legal team was taking, its impacts to our site, the potential effects on the MINI-related aftermarket and communities surrounding the MINI.

As of this morning, Monday August 4th, I have yet to receive a response from Mr. Pitney and felt it was time to make this long-running issue known to the membership of MCO.

To move past this situation one of three possible things need to happen:

Based on the situation and timing I believe it is, at a minimum, prudent to move ahead with coming up with a new name for the site. As I’m sure there will be many with suggestions here are some guidelines for naming:

1) The domain cannot contain MINI in the name. The exception to this is that the letters “ M I N I” are actually letters in another word
2) The domain should be descriptive as to what the site is or provides…at least to the point that if someone saw it on a t-shirt, decal, etc. that they would be able to remember it or be intrigued enough to write it down. I am also open to very short names that would be catchy and easy to remember. Likely I will provide a tag line with the domain to the effect of “The North American MINI community”.
3) The domain should be no longer than the current minicooperonline.com name. Ideally it would be shorter.
4) The domain must be available in .com, .net, and .org variations. The domains must not be registered or be available for purchase at no more than the cost of the original registration fees
5) All domain name suggestions should be emailed to mferguson@northamericanmotoring.com for consideration
6) We need to have a new name selected by August 12, 2003 (next Tuesday). I'll review from any names that have been submitted and make a selection that best meets the above criteria.

Given all this news, here are the answers to the original questions at the top of this post:

There you have it…a major issue for the site and potentially the entire aftermarket and community that has developed around the MINI here in the States.

Sincerely,

Mark Ferguson
President and Founder
MINI COOPER Online.com

 

Maybe if we show support in grassroots ways like this MINIUSA/BMWUSA will be able to see the level of support for MCO (hint: it's more than the depth/breadth of support the rear fog light had).

I think it's important that we show our displeasure in a respectful manner and not make threats.

To that end, here are a couple of satirical signature images.

Let's Litigate



[IMG*]https://www.northamericanmotoring.com/albums/album04/ewn.jpg[/*IMG]
copy the link above and remove the two * characters to use in your signature

Let's Take A Stand



[IMG*]https://www.northamericanmotoring.com/albums/album04/ewo.jpg[/*IMG]
copy the link above and remove the two * characters to use in your signature

 

Mark...was there ever anything in MINI's correspondence that suggested that the name "Cooper" could not be used, or will that be a JCW issue?

 

Mark,
If you could provide us with an e-mail or snail-mail address for Jack Pitney or another MINIUSA contact, we could all send our support to MINI USA, letting them know that they are killing grassroots support for the car and brand. We have stlmini.com, and I hope that they don't come after our tiny site. MCO is such an essential part of the community; It can't be taken away because of overdone litigation.

Let us know where to send our support and we'll do it!

Long live minicooperonline.com!

Aaron Geiger

 

Well! And people wonder why we give lawyers a hard time on MCO... Mark, I know I speak for all of us when I extend enormous thanks to you for all of your continuing effort on the site's behalf. Hope this is resolved soon! Dave, I love that first "sig"!

 

Mark, have you considered putting out a press release regarding this? A little bit of bad press and BMW may not feel the need to persue it...

Just a thought.

 

Mark,

I love the Mini and MCO.... I say BMW needs to get a grip before they loose this customer and many others for being such greedy capitalists.... Pigs get fed and Hogs get slaughtered....... It makes me want to trade in my car right now. It proves its all about the money not us the customer!

Corbyzz

 

Sheesh.

Best of luck trying to reason with the lawyerly types.

 

Mark - I'm glad you've decided to make this issue public. MINIUSA has a history of responding well to public pressure and we can only hope they will do so in this case as well.

I'm posting a story regarding this on my website as we speak.

 

As for the domain, you already have "brand recognition" with MCO, so perhaps you could use a derivative of that? MCO-CLUB.COM, MCO-FORUMS.COM, etc.

 

>>Mark...was there ever anything in MINI's correspondence that suggested that the name "Cooper" could not be used, or will that be a JCW issue?

To date there has been no discussion in regard to the use of Cooper. Given the length of discussions I've gone through I have my doubts as to whether Cooper could be used. Their stance on name usage has continued to evolve into a more and more restrictive pattern over time. I would suspect that this will, at some point, apply to Cooper as well (when used relative to automotive products and services).

Mark

 

I have two e-mail addresses for BMW/MINI Customer Relations

Customer.Relations@bmwna.com
MINIOwnersLounge@askMINIUSA.COM

I have a few more for individuals at MINIUSA too, but I'll hold off on posting those for now.

Dave

_________________
PM Dave
This life is more than just a read through.

 

Mark,
A few months ago I posted this link for someone else who had questions of treadmark infringement. I believe the Supreme court would be on the side of MCO. I am not an attorney. I do not know all of the laws. I know it is very expensive for you to try an fight this and that is what BMW is banking on. BMW have set themselves up in a sense by offering a list of acceptable names with the mini word in them. Take a look at the article and the issues it addresses:

LATEST NEWS
March 4, 2003
Victor's Little Secret victorious over Limited Brands
The U.S. Supreme Court has rejected a claim by lingerie retailer Victoria's Secret that its business is being harmed by a Kentucky shop with a similar name that sells lingerie and sex toys.


Victoria's Secret, a unit of Columbus' Limited Brands Inc., sued Victor and Cathy Moseley, alleging trademark violations after the couple in 1998 opened Victor's Secret in Elizabethtown, Ky. The company had argued the similar name was "likely to blur and erode the distinctiveness" and "tarnish the reputation" of its trademarks.

The Moseleys changed their store's name to Victor's Little Secret after receiving a letter from Victoria's Secret lawyers, but that didn't satisfy the company, which sued and won in federal district court.

The Moseleys appealed to the 6th U.S. Circuit Court of Appeals in Cincinnati and lost again.

The couple then appealed to the Supreme Court, which in a unanimous decision handed down Tuesday said the mere possibility of dilution isn't enough to prove a violation of trademark protections.

"There is a complete absence of evidence of any lessening of the capacity of the Victoria's Secret mark to identify and distinguish goods or services sold in Victoria's Secret stores or advertised in its catalogs," said Justice John Paul Stevens in the opinion.

Proof of trademark dilution will be hard to find, the court said, and it might require some kind of market study to be clearly established. Still, the court said a company need not wait until it is losing sales to establish its trademark had been diluted.

Victoria's Secret welcomed that part of the decision, saying in a release that, "We will continue to vigorously protect and defend the Victoria's Secret brand, and the court's decision allows us to do that."



© 2003 American City Business Journals Inc.

Litigation is expensive and they don't want ot lose. If we (as a group) can help, set up a paypoint account that we can donate $$ to MCO. I, for one, will help finance the cause!!!!

 

The press release is a really good idea. Making this public will hopefully make them realize that most of the MINI community really cares about MCO. They will really look bad if they start hunting down all the clubs and commercial sites that have MINI in the name; some have been around for years. Why does MINIUSA have a great ability to shoot themselves in the foot on a monthly basis?

>>Mark, have you considered putting out a press release regarding this? A little bit of bad press and BMW may not feel the need to persue it...
>>
>>Just a thought.

 

I can see the restriction on using the MINI logo, but the MINI name? The motorcycle groups can't use the propellor emblem but they still incorporate the name: BMWRRA, BMWMOA. The Harley clubs get to incorporate the name: HOG.

If you go to the BMWMOA site right now there are advertisors on there. I know their magazine is full of ads. Best part of that rag, IMHO.

Is the MINI2 site facing similar hassles?


_________________

 

Mark,

You did the right thing sharing with the community. We ALL stand behind you and MCO. These forums are an invaluable asset to us and to BMW. Can you IMAGINE the extra work our dealers and MINIUSA will have to compensate for if we didn't have a way to learn from each other like this??

Lead the way, I'm behind you 100%

Ben

 

Mark,

Before you sign away your website, check with an intellectual property attorney. There may be issues that you or BMW have overlooked, and an additional kilo of grey matter on your side could be cheap insurance.
As for BMW's trademark fixation, well, one needs only look as far as the Carrol Shelby fiascos of the past and present to see what happens when you don't aggressively pursue trademark copyrights. Sorry that they want to pick on MCO.

 

>>As for the domain, you already have "brand recognition" with MCO, so perhaps you could use a derivative of that? MCO-CLUB.COM, MCO-FORUMS.COM, etc.

That is true but the problem I have with that path is that I would NEVER be able to tell people what MCO stands for. When we are running the TEAM MCO car or someone sees a car with a decal on it (when we can actually offer these)...and they are interested in MINIs they won't necessary know that it is a site for enthusiast information about MINIs. That said any name without MINI in it will suffer a similar fate so I expect I'll have to include a tag line with it like "The North American MINI Community". At this point if we are being forced to change the name I'd like to explore the ability to come up with an interesting new name.

Mark

 

I don't go on MINI2.com much but I guess they're screwed too

How about MCO.com since you will be stating that it is an independent North American community of MINI owners and enthusiats on adverts and T-shirts anyway.

 

MINI2 is British based and it is my understanding the MCO is being threatened by BMWUSA/MINIUSA, not MINI International.

Also, if people want to share their opinions, in addition to e-mailing the above, calling your local dealership and telling your sales person would be another way to start working this issue up to the top of MINI/BMW from within the organization.

 

Mark, as a MINI owner and a Motoring Advisor, I am very sorry to hear this. Good luck in your struggle.

 

I know this sucks, but its not unusual. BMW and Mini USA are protecting their brands and as a corporate marketing type I know how easy it is to lose control of your own brand and image.

I suggest something easy like MConline.com with a tag like "The Cooper Place for you".

Just my $0.02.

Miniwanna

 

Ya, I don't get it either. They say you can't use "MINI/mini" but then suggest sites with that in it. I think they've gone so nutz that they've confused the bejesus out of THEMSELVES!

Geeze, and then there's our local club's site, http://www.pdxmini.org. It meets the criteria of using MINI/mini only for non commercial useage...but we do have a membership fee and are directly linked to MCO, which is commercial, so that kills us, no? Damnit, I'm confused now.

And since WHEN have car companies limited clubs based off their own products to not use the car name in their club?!?!?!?!

My vote is for http://www.make-up-your-mini-MINI-mi...p-motoring.com

Is/are variations of "flying brick" taken?

R

 

REPOOCINIM.com? ...or is that too smart ars!?

 

>>... the problem I have with that path is that I would NEVER be able to tell people what MCO stands for.

First, I'd like to express my dissapointment in BMW for such harsh and self-punishing course of actions. Mark, you have done a great job in creating a place where MINI owners and owners to be can share their experiences and thus promote the brand.

As to MCO name, there's a well established computer hardware review site that is called [H]ardOCP. One of their slogans is" "so hard, we fordot what OCP stands for"

I think that with continued support from MINI community and perhaps some press, MCO will not have to be explained. It will just be a brand, like A&P (not many know what it stands for) or even BMW (not many know the meaning either)

Eager supporter,

Phobol.