poll BREAKING - DOMAINS CAN NOW BE TRADEMARKED

[Internet.Domains]

https://www.lexology.com/library/detail.aspx?g=f5f76ee7-d39a-409d-afc3-f41d1cd777a7

"After conducting her own analysis, Judge Brinkema found that “when combined with an SLD, a TLD generally has source identifying significance and the combination of a generic SLD and a TLD is generally a descriptive mark that is protectable upon a showing of acquired distinctiveness.”


"Why it matters: Judge Brinkema attempted to define the boundaries of her opinion by noting that not all domain name marks are protectable, but that a generic SLD combined with a TLD can create a descriptive mark that is eligible for protection only upon a showing it had acquired distinctiveness or a secondary meaning. But the decision has made headlines for granting trademark protection of a domain name, a move that flies in the face of Federal Circuit precedent and could encourage similar filings from websites."

What do you think?....Is this good news for domain investors?

 

[Kuffy]

If you are trademarking coffee.shop, then surely the dot forms part of the trademark. This means "coffee shop" is not trademarked. I remember that "coffee cup" was an html editor, and I can see that could be a trademark for editors. I used my BuyAny.com name as an example because "dot com" forms part of the phrase. This only really happens in the domain industry.

 

[ResoluteDomains]

This is very interesting and, legal-wise, I have zero legal experience so its definitely over my head. It would be great if we could get some legal thoughts from any domainer/attorneys out there to chime in.. I havent read the full ruling but I will definitely get to it soon.

 

[Ategy]

.. Also, if people were able to TM a generic term, then why wouldn't an end-user trademark coffee shop and set up their site on coffeeshop.xyz and force the seller of coffeeshop.com either to turn over the domain or prohibit them from selling it because they are infringing on their trademarked generic term.

2 things here.

First trademarks are also territory specific. Meaning that if you have a coffee shop, then the scope of your TM is essentially the city in question. However if you're selling online that makes a huge difference. Same holds true if it's a chain of cafes.

Second and more importantly .. theoretically the trademark would be coffeeshop.xyz .. so they while they could block someone from using coffeeshop.xyz.com .. they would have to claim to coffeeshop.com any more than they would hippopotamus.xyz.

 

[Ategy]

If you are trademarking coffee.shop, then surely the dot forms part of the trademark.

I think that is the most interesting question. I bet the answer to that changes from judge to judge depending on their understanding of domains and technology.

ngTLD's are pushing and marketing on the fact that these new domains are one entity in that "Coffee.Shop" actually means "Coffee shop"

 

[Ategy]

Aside from span the dot domains like the above mentioned coffee.shop, I really don't see this change as any help to domainers in any way. Considering we already own the domain .. and each domain is already unique and technically unusable by anyone else, then the only thing new rules and laws could possibly do is make our claims on the domains we already actually own weaker.

 

[ikhub]

Another lame excuse for reserving ngtlds as premiums by the registry and grabbing domains in the pretext of possible trademarks.

 

[Smiles76]

2 things here.

First trademarks are also territory specific. Meaning that if you have a coffee shop, then the scope of your TM is essentially the city in question. However if you're selling online that makes a huge difference. Same holds true if it's a chain of cafes.

Second and more importantly .. theoretically the trademark would be coffeeshop.xyz .. so they while they could block someone from using coffeeshop.xyz.com .. they would have to claim to coffeeshop.com any more than they would hippopotamus.xyz.

If this is the case, then there is no reason to trademark a domain as there is only one version of a domain in a given extension.

 

[Ategy]

If this is the case, then there is no reason to trademark a domain as there is only one version of a domain in a given extension.

Well .. I think that is the general rule of thumb .. with the most obvious reason to TM otherwise would be if this got out of hand and started to be abused and domains were lost because others somehow managed to TM your domain successfully (shouldn't be able to happen .. but who knows .. all depends on how the policies and laws are written and more importantly interpreted!

Also .. other possible exceptions would be domains that could legitimately be used like "BuyA.com" or "GetYour.com", etc. In theory registrars could use those terms like "Get Your .Com here". Again, I don't think such terms could be trademarked as they are too generic and common calls to action legitimately used as common language ... but again .. get the wrong judge on the wrong day and who knows the can of worms that could be opened .. lol

 

[atinc]

It will raise domain prices IMO

Who is providing this service tho?

 

[Ategy]

Who is providing this service tho?

It's not a new service or anything different than the regular trademarks you get via the government that have been available for decades. It's a regular trademark with the only different being that the term you're registering is a domain .. otherwise I'd think the process, paperwork and fees are exactly the same because it is in fact exactly the same (you submit to the same site, the same people review it, it isn't treated any differently simply because the words are formated a little differently). For example, in the US you'd simply go through The United States Patent and Trademark Office.

 

[pokainc]

The number of UDRP cases is going to go through the roof.. interpretation of this law is going to cause alot of confusion until several of these cases end up in courts and rulings are finalized.. all I see is more money for lawyers, especially when a company sees for example coffee.shop is trademarkable, registers the TM then tries to get CoffeeShop.com claiming it's too similar

 

[ResoluteDomains]

The number of UDRP cases is going to go through the roof.. interpretation of this law is going to cause alot of confusion until several of these cases end up in courts and rulings are finalized.. all I see is more money for lawyers, especially when a company sees for example coffee.shop is trademarkable, registers the TM then tries to get CoffeeShop.com claiming it's too similar

Thats what I am afraid of too.

 

[atinc]

It's not a new service or anything different than the regular trademarks you get via the government that have been available for decades. It's a regular trademark with the only different being that the term you're registering is a domain .. otherwise I'd think the process, paperwork and fees are exactly the same because it is in fact exactly the same (you submit to the same site, the same people review it, it isn't treated any differently simply because the words are formated a little differently). For example, in the US you'd simply go through The United States Patent and Trademark Office.

I know there should be a class code to register the trademark for domain only.

Never seen that before.

Just checked WIPO but didn`t see the class number for registering the trademark for domain.

 

[dgmweb]

I do not think it is really a good news. Why? Someone can trademark you domain name and collect the domain name from you.

That was my thought exactly - already too many trademark trolls.

 

[Ategy]

I know there should be a class code to register the trademark for domain only. Never seen that before. Just checked WIPO but didn`t see the class number for registering the trademark for domain.

I think you're looking at it the wrong way though .. take a step back.

The term isn't registered as a domain .. it's the domain that's registered as the term.

I'm not sure of the exact specific classes of trademarks available, but I'm making a couple up to illustrate my point. Essentially you could have a TM for Apple.com in a class for tech sales. Then someone else could have a TM for Apple.com for selling fruit. The 2 classes don't overlap so in theory 2 different companies could use "Apple.com" to promote their different class of product.

The problem that arises obviously is that only a single instance of "Apple.com" can actually exist, so I'm not sure what the point of having a TM for "Apple.com" would be if you don't actually own the TM. Unless it's to ultimately use it as justification for starting a UDRP against somebody who isn't ACTIVELY using the domain.

In terms of this new development the concept people need to understand is that if domains are trademarkable, then "Apple.com", "Apple.xyz", "Apple.sucks", "Apple.ca" and even simply "Apple" are all completely different trademark terms .. each of which that can be trademarked by different individuals or companies regardless of the Class being used. You could have 3 companies using "Apple.com", "Apple.xyz" and "Apple" as 3 different companies selling computers.

Now obviously when it comes time to approving the trademarks it will be up to the Trademark Offices to judge if "Apple.com" and "Apple.xyz" and "Apple" are different enough for the 2nd and then 3rd company to actively use.

But note that "Apple.xyz", would ALWAYS need to refer to itself as "Apple.xyz", and could never use "Apple" in any way at any time. If "Apple.xyz" switched to "Apple.net", it would need an entirely different trademark.

Soooooo much of whether this could be good or bad from domainers depends on the specific details and more importantly the guidelines for approving the various trademarks. I don't think there is anywhere near enough information or details to really have a final opinion on the matter.

What I fear most is that the rules and laws could be written a little too broad and vague, leaving way too much room for interpretation by judges or Trademark officials who don't understand domains or the internet.

 

[Cal2]

I'm wondering about hyphenated names. Eg. If Booking.com is now a bonafide trademark, can they go after Book-ing.com (already registered by someone, since 2004), because it could be considered 'confusingly similar'?

And the reverse - if Book-ing.com had achieved registered TM status 1st, could they have gone after the Booking.com domain name?

 

[frank-germany]

I'm not sure I understand it correctly...

But, basically, some can own a domain, trademark it, drop it, and still practically own it?

It creates a new form of ownership. Not a good idea, IMO.

trademarks are much more expensive then domain renewals

 

[frank-germany]

Happens all the time. Even Google dropped Google.com.

That's not the only point though. It creates a concept similar to patent trolling. Someone could trademark a domain and no one else could effectively use that domain again, even if it was available or they had the money to buy it.

People could also register/buy domains, trademark them, then drop/sell them. Then, when someone tries to use it, they could show up with their trademark.

You could essentially register a domain for 1 year, and trademark it for a lifetime...

I don't like it.

trademarks are defined by classes
so is there a separate class for domains?

or does the domain have a class like a wordmark?
then the use of the domain would be protected for that class only

so BiPBIP.com could be defined in a class for bird food
but somebody else could use it for music

??

 

[frank-germany]

I think it is good news. As I see it the following facts apply.

• As I own Kuffy.com, I can trademark the name + extension
• As the trademark only applies to the .com, then I dont have rights to any other extension
• If I don't own the .com, then I can be accused of "passing off" if I use the name + extension.
• If I let the name drop, then it is assumed that I have no further interest in the name, and I assume this will apply to the trademark, this will not apply if I own the trademark without the extension.

Now her is an interesting point. I own the name BuyAny.com. If I trademark this, does that mean that no domainer will be able to use the phrase "buy any .com"?

if you get a trademark
in which class?

 

[frank-germany]

I'm wondering about hyphenated names. Eg. If Booking.com is now a bonafide trademark, can they go after Book-ing.com (already registered by someone, since 2004), because it could be considered 'confusingly similar'?

And the reverse - if Book-ing.com had achieved registered TM status 1st, could they have gone after the Booking.com domain name?

book an engineer has nothing to do with hotel bookings

 

[hxp]

trademarks are much more expensive then domain renewals

It's not just about domainers, businesses shoot themselves in the foot by supporting something like this.

How many businesses start, but shut down within 1-2 years?

Imagine the number of domains they would render useless...

trademarks are defined by classes
so is there a separate class for domains?

or does the domain have a class like a wordmark?
then the use of the domain would be protected for that class only

so BiPBIP.com could be defined in a class for bird food
but somebody else could use it for music

??

There are many names that can only really cater to one specific type of business/product.

For Example: ShoeMe.com, Fundable.com, Musica.com, etc.

- - -

I don't know.

I think the current Domain/Trademark relationship works, and is being handled, pretty well.

No need to fix something that isn't broken, IMO.

 

[frank-germany]

It's not just about domainers, businesses shoot themselves in the foot by supporting something like this.

How many businesses start, but shut down within 1-2 years?

Imagine the number of domains they would render useless...



There are many names that can only really cater to one specific type of business/product.

For Example: ShoeMe.com, Fundable.com, Musica.com, etc.

- - -

I don't know.

I think the current Domain/Trademark relationship works, and is being handled, pretty well.

No need to fix something that isn't broken, IMO.

thats why apple com is selling fruits?

 

[hxp]

thats why apple com is selling fruits?

You very well know 9 out of 10 people might otherwise be selling apples.

But, look at the name in question. If, for some reason, "Booking.com" becomes available to the public, you and I wouldn't be able to use it for any kind of booking service again.

If "Computers.com" is granted the same privilege, no one would be able to sell computers on Computers.com again.

Same with Shoes.com, Cars.com, Insurance.com, etc.

...Isn't that ridiculous?

 

[RegBoss]

This could open a world of opportunity here.

Absolutely!
For example https://www.lawdepot.ca/contracts/t...UZ3UFE3DP-trademark-assignmenttextlink&loc=US