MINIUSA Legal Goes After MINICooperOnline.com

Sections: Uncategorized Aug 4th, 2003 14 Comments

p>An unfortunate thing happened today when MCO founder Mark Ferguson had to make public his long running problems with MINIUSA/BMW of North America. Here's a portion of his post on MCO:

“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. …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.

[after several name changes were denied by BMW legal]…

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.”

This of course is just a small portion of Mark's original post but it should give you an idea of the problem that MCO and indeed the rest of the MINI web may be facing. You can check out the entire post here.

Mark is not only a great asset to the MINI community but also a good friend who has put an enormous amount into his website. MCO went from being an unknown newcomer of the MINI web world to one of the absolutely best forums based MINI sites out there in less than a year due to his efforts.

I urge any of you who would like to speak your mind about this issue to call MINI customer service at 866 ASK MINI or email them at MINIOwnersLounge@askMINIUSA.COM.

Written By: MF Staff

John

I can't believe bmw/mini would shoot themselves in the foot like this. They should be encouraging these types of communities online, not treating them like crap.
Allen

I'll bet that BMW/MINI has retained the services of Dewey, Cheatham, & Howe for this latest maneuver.
http://bridger.us/mini Gabe

I've been working with Mark since February on names and possible logos for MCO. Each subsequent idea has been met with a resounding no from the legal team – very frustrating.

But it's very important to realize that BMW legal doesn't actually speak for MINIUSA in many ways. I would go so far as to say that the vast majority at MINIUSA don't know how strict legal is being with this case. Futher I would bet that quite a few at MINI probably aren't in favor of this legal action at all. It doesn't take a masters degree to guess what this will do to the health of the brand in regards to MINI's core audience of enthusiasts.

Many times in cases like this it's a case of overzealous lawyers trying to impress their bosses or make their weekly hours seem appropriate and not the actual company or it's employees. Complicating this issue is the fact that (to my knowledge) MINI uses BMW of North America's legal team and MINIUSA may or may not have final say as to what they go after.
http://www.chicagominiclub.com Matt

i have a tinsy bit of experience with intelcopyright law and i don't believe BMW would ultimately win any litigation. however, they do have deeper pockets than any of their potential litigants and can extend the litigation untill they achieve their desired result.
http://www.chicagominiclub.com Matt

why not start taking up an MCO.com legal-defense fund?
Ansel Olson

I think that a large — and thoughtful, no flaming — response from the Mini community showing support for independent Mini websites could go a long way. Anyone that would like to copy my email and send it themselves, please feel free to do so. Here is a copy of the email I sent to MINIUSA…

>

Dear Mini Team,

As a Mini owner, I find the collection of independent websites that distribute information about Minis to be very helpful. From them I have learned a lot about my car, which has only helped to encourage my enthusiasm for what is a truly great automobile. I haven't liked a car as much as I like my Mini since I learned how to drive.

I recently read that the BMW/Mini legal team is forcing a hard line on the use of the Mini name in independent websites that distribute content about Minis. Would you please ask them for me to ease off on this domain name campaign, and let sites like minicooperonline.com continue to provide the useful service that so many of us appreciate?

I fully understand the value and necessity of building and protecting a brand, but we all need to remember that a strong enthusiast community is a precious component of a strong brand.

Thank You,

Ansel
http://thatjenngirl.blogspot.com Jenn

Kind of makes you wonder what BMW Legal does all day, does it not? I can picture them all sitting around, swiggin' Starbucks, thinking to themselves, “Hmm. What can we do today? Oh, I know!” and there you have it.

Really, all this is so very ridiculous. How will this benefit BMW or MiniUSA for that matter? What kind of profit are people with mini sites making? They are, in fact, providing Mini a free service in advertising. Why? Because it's such an enjoyable car. It's so easy to talk good things about the Mini. A move like this will decrease sales, if anything. Way to go, BMW. I'll be addressing this issue in my e-mail to BMW Legal, as well.
http://www.matthewgifford.com/ Matt

Here's my open letter to BMW North America.
Blake

My friend had a similar problem with his site called VW Addiction.com They (VW) forced him to change to VDub Addiction. vdubaddiction.com It kind of makes you wonder why they aren't going after motor clubs that use the name MINI or COOPER in their names. It's sad when you can't use the word MINI without some sort of legal backlash. What's next, the word “it”?

I think you should keep the site and just put up a splash that says something like “Due to the threatened legal actions by BMW over the use of the word Mini, this site has been forced to move and rename to Name_Url_. Please continue your involvement in the Mini Cooper forums and communities.
http://revorg.org/mini.html Scott

Maybe THAT was what that certified letter was all about. I guess there will be some changes in Madison. No deep pockets here.
vlm

I am also less than impressed with this course of action by BMW's legal dept. Does this mean that local clubs will be threatened by the corporation if they don't change their domain names? And do they really want to undermine the community that's formed around the MINI on the web? If there's a way for them to “measure” the tradeoff between corporate-perceived “brand dilution” and popular support of the brand, I hope they'll opt for the latter. A company confident in its success should not feel it necessary to antagonize those who help promote its products.
Kim

What possible goodness could come out of this?

Like many have commented, my husband and I did extensive research on the web in order to come to the decision that the MCS was the vehicle for our starting family.

Do they think that advertising for the MC will rely on word of mouth alone? I guess, if the BMW lawyers could please point out how clubs and other groups are disadvantaging the Mini,(specifics) I could see their reasoning, maybe? I mean, I haven't seen anyone put the MINi in a bad light, except for that one newspaper writer, (that's a different story). I hope this doesn't happen, much work has been put into supporting this great little car around the world by enthusiasts.
Markus

This is very unfortunate!

Excerpt from my email to

MINIOwnersLounge@askMINIUSA.COM

Customer.Relations@bmwna.com

I am deeply saddened to hear that apparently MINI Division of BMW of NA is attempting to prevent the use of the term / name MINI in domain names of enthusiast sites.

I strongly urge you to reconsider this stance.

I am a proud owner of a 2003 MCS. While I originally became aware of the MINI through the MINIUSA website, I quickly learned more about the MINI through enthusiast websites such as minicooperonline and MINI2. These sites played a significant role in my decision to purchase a MINI.

In addition, these sites have helped me to deal with the quirks of MINI ownership, and while I love my MINI it has lots of quirks!

In this respect you owe a lot to these enthusiast sites. These sites advertise the car for you, and help owners avoid frustrations, help owners learn more about their cars, and take care of many little issues without overloading the dealers with fix-it and repair requests for simple little things.

Furthermore, I would also assume that the exchange of information provided by these sites lends an invaluable hand in diagnosing (potential) problems and issues with MINIs much more rapidly than otherwise possible. This should also be of immense benefit to you, and as such represents a resource you should take advantage of, rather than interfere with.

It appears to me to be contrary to the spirit I have come to associate with MINI, to acknowledge and even participate in such sites for some time, and only after a lengthy period to attempt to interfere with the operation of such sites. This makes me less proud to be the owner of a MINI. To me, being a MINI owner was much more than simply owning and driving a fun car, it was the whole mentality behind it that mattered. This, you appear to be taking away from us.

Please do not do that!
http://hootwirekennel.com debbie perrott

They should be ashamed. They only profit from the publicity we give them. This is half the fun of owning a MINI!!!

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