Labeled as discuss in Niche Domain Discussion started by Swag tikka, Jul 6, 2019.
I am curious about those people in your profile. Everyday a new face
No .. the company was NOT a tax company .. it was a SOFTWARE company that happened to make Tax Software! There is a HUGE difference.. if it was a tax (accounting) firm, then the trademarks would not be compatible (unless that accounting firm also sold software). So the trademark(s) of the compnay was likely in classes 9 and/or 42 .. which encompasses almost everything digital in nature.
The possible bonus with it being tax software is that they might also have trademark rights in financial services categories .. which might then cover gambling depending on how gambling is regulated in various jurisdictions.
Again .. trademarks are USAGE based .. the apply to how you use them .. and more specifically you are protected for the entirety of the classes of that usage.
So the company that they bought the trademark from had protection in software classes .. that means that Facebook now owns the American trademark for the term "Libra" when it comes to EVERYTHING within the specific trademark classes (essentially anything software related).
Again .. trademarks are USAGE based. My guess is that Astrology falls in an Entertainment related trademark class. So there is no conflict there for you to use Libra for an Astrology site ... but that goes back to .. who the heck is going to pay any serious money to buy a Libra astrology domain. Buying Libra astrology isn't a bad idea because of trademark problems .. it's a bad idea because you simply won't have a good probability to sell the domains at a high profit .. but to be clear .. you can own and develop all the astrology sites you want with the word Libra in it!
As for gambling .. that's a bit trickier ... they might or might not be safe. I'm thinking there could also be some issues as there might or might not be overlaps in trademark classes.
But again .. Libra+Gambling domains would be most valued by potential developers who would want to build on top of the Libra blockchain .. which would certainly be a violation the moment they were using software as a bridge to connect to the blockchain.
In the end, due to the heavy digital aspect of "online" gambling, chances are the Libra lawyers could very easily find something ... although to be clear .. it could potentially be possible to have some random gambling website completely unrelated to crypto or software and actually be safe .. AS LONG AS .. there is no hinting that the website focuses on gambling with Libra crypto.
At the end of the day you can use any Libra domain you want as long as it doesn't interfere in whatever classes Libra Crypto covers.
But that's my point .. in theory almost all Libra domains will be safe ... AS LONG AS they aren't used in any way related to the cryptocurrency .. which means that while you are legally safe holding an inactive domain ... no end user with trademark knowledge is ever going to use Libra in their own tradeamrk .. and therefore will never develop a Libra domain .. and therefore never buy a Libra domain ... thereby making most Libra domains effectively worthless unless they were already good domains to begin with.
For example .. LibraCasino actually makes for a good Casino brand (completely unrelated to Libra crypto), so YES .. it's a good domain.
Libraology and LibraEmpowers are domains with no significant potential end users .. so I'm sorry to say they are not very good domains outside the context of what will likely be a massive awareness campaign surrounding Libra crypto. HOWEVER ... that said .. if someone just wants to make a fan page or news site about Libra .. then they are possibly safe. A lot depends on if/how they make money .. and how extreme the Libra Foundation will be at protecting their brand. While in theory even selling advertisements on a website isn't allowed, they might only go after companies actively selling products and services.
It's still too early to say anything more specifically .. but at the end of the day .. Libra domains just aren't worth the bother in my opinion .. unless they make for a good brand in something completely unrelated already.
If you are correct in saying the TM (Tax) that Facebook bought covers cryptocurrency, then please explain why the Libra Foundation filed an application for specifically cryptocurrency?
My point is the Facebook TM does not cover most usage and that is why the Libra Association filed a much more detailed and lengthy application.
In addition, Facebook does not own or control the cryptocurrency so having a TM in that class seems mute.
Again .. that is not what I said .. they acquired the trademark from a company that likely had their trademark in one or both of the digital product trademark classes (9 and 42 I think). Since cryptocurrency is effectively a digital product, then it is recognised as being in the same trademark class. Whether Facebook is using it for crypto or any other software it doesn't matter.
Likely because they want to expand and/or clarify and/or strengthen their newly acquired trademark.
What you don't seem to understand is that "cryptocurrency" is not a trademark class. There are about 50 trademark classes and cryptocurrency likely falls into a few depending on what's being done.
With the case of Libra, the Libra Foundation will be intermediaries of financial transactions .. so beyond "Digital Products"/"Software", they will likely also be operating within financial services trademark classes.
Other cryptocurrencies that are completely decentralised would probably not fall unto that category.
I'm am no expert and just have general broad knowledge .. so I can't say for sure which trademark classes are in play.
I'm thinking with big companies trademarks, trademarks are like patents .. where they try to include sooooo much information, that ultimately their patent covers everything. That's a big issue in the patent industry is that many patents are too broad and too powerful .. but because they got through the initial process, the company can make a lot of $$$ licencing things they really should not have been able to patent in the first place.
To make things simple .. let's say you have a software platform you call Red Cake. Then in theory you are protected for "Red Cake" ... but if you were smart you'd try to trademark "Cake", so that way you would be protected for Anything+Cake. This sort of thing might or might not pass .. but big companies surely know the best tricks (certain trademark/patent offices are known to be less strict than others for example).
Then when giving a description you get as detailed as possible to cover as many trademark classes as possible which in turn strengthens your rights and protections across a broader spectrum of potential competition.
In this case they are likely trying to establish and protect usage in the financial services class (#36 I think) .. and very likely others.
ALSO .. remember that they only bought the patent in the USA as far as I know. With domains, international trademark coverage is often outright assumed in UDRP cases ... but remember that the Libra trademark is about more than just domains .. so they will likely have to do multiple registrations all over the world. Each one will be different depending on the requirements and more importantly, depending on potential existing trademarks in each location.
At the end of the day .. if they use Libra for "crypto", and say there's a bank called "Libra" in a country .. but the back management doesn't really see or understand that Libra is actually infringing on their trademark, after a certain amount of time, there isn't anything they can do about it if they didn't contest the trademark in the first few years as Libra establishes itself. I'm thinking that's what Facebook hopes will happen with most of the other trademark holders around the world (although some will certainly contest .. and from there anything can happen .. although FB might just money their way through it all)
They will obviously pass along the TM to the Libra Foundation when the time comes .. it doesn't really change anything.
Below is the first paragraph of the TM that Facebook bought. For clarity, this is not the Libra Foundation's newly filed application. The point I am making is that the TM does NOT mean all software, it specifically mentions TAX software. It is a long stretch to overlap TAX software to include everything under the cryptocurrency umbrella.
IC 009. US 021 023 026 036 038. G & S: Computer software for use in tax planning, tax calculation, and tax return preparation and filing, processing tax payments; computer software for use in tax planning, tax calculation, and tax return preparation and filing, processing tax payments of virtual currency holdings. FIRST USE: 20140203. FIRST USE IN COMMERCE: 20140203
As far as I know, the specifics within the trademark class doesn't really matter. Yes they put it in the description, but I think the moment that they operate or register within the particular trademark class, then they have the trademarks rights for the entire class(es) in question.
In this particular case I think Tax Software falls into Class 9 (of USA patents). It could be it was needed to be specified by the original company because maybe there are other trademark classes where other types of software would fall. So I'm pretty sure that as long as they are doing ANY on thing within Class 9, then they have rights to the trademark for ALL of Class 9?
So effectively if financial (crypto) software falls in the same Class (9) as Tax software, then in terms of TM protection it's the same protection and falls under the same umbrella (why they bought the trademark in the first place). For what they are doing with Libra they will likely need more than just class 9 however .. which is why you're seeing other actions being taken.
Maybe we could get @jberryhill to give us the exact rules if an existing trademark in a class covers the entire class or just the specific sub-descriptors (sub-classes?)?
All that said .. establishing TM rights on a global scale for what they are hoping to be a planet-wide digital currency is a monstrous undertaking. You're going to see a lot of actions taken by FB and ultimately the Libra Foundation. Doing one thing does not replace another .. most of what they are likely doing will be complimentary work to fill out the missing classes and missing jurisdictions. We will very likely see them paying more companies for other TM rights before this is all done (if indeed they do stick with "Libra" as the name).
Yes, all things are possible. This is all new and unprecedented territory. For that reason there remains a risk as well as an opportunity. Only time will tell.
Facebook and the Libra Association will decide if the community can use and build websites and other innovations that includes the term Libra. My guess is that they will allow and possibly have already. The innovations obviously have to be built within the Libra framework and approved by them. I'm sure Facebook will offer a way to allow inclusion and development.
And at the end of the day, every domainer knows the registrations could end up being highly profitable or they could lose everything. But as someone as already said, only time will tell.
Also, I think Facebook will keep the term Libra. They do face a roadblock in Israel though as an insurance company there already offers a crypto currency for their members called Libra and it has a wallet too... But, as a whole, facebook will be ok.
There are some general factors, but there are not "exact rules". The belief that there are "exact rules" which cover all possible factual scenarios is one thing that tends to lead domainers astray.
But let's be clear what we are talking about here. A Swiss corporation, the Libra Association, was established some time ago, and recently filed this US trademark registration application:
The recited goods and services are extensive, and I'm not going to copy and paste them here. The nonsense about some other registration limited to tax services has utterly nothing to do with what is recited in this application.
Not really. It's done all of the time under the various treaties which allow a filing in one place to be treated as if it were filed on an earlier date established elsewhere.
That is why, if you look at the data in the US application linked above, you will find that the application claims the priority right of this earlier-filed application under "Foreign Information":
Foreign Application Number:
Foreign Application Filing Date:
Jan. 16, 2019
Foreign Application/Registration Country:
Now, there are a number of reasons to do that. One of those reasons is that it is very hard to get current filing information from Turkmenistan. Another popular place to quietly file applications is Trinidad & Tobago. An application can be filed in places like that, nobody will know about them, and then months later used as a priority basis for a US filing, once one has put their other ducks in a row.
So, my first observation in all of this "Libra" nonsense is that 99% of what people have been discussing in terms of US trademark documents is pure horsesh*t.
But there is a much more important observation to be made here, because I know there are going to be people who, with scant knowledge of how disputes are actually decided, raise a number of illusory issues about the application status and other things which they believe to be "exact rules" that don't really exist.
Let's have a look at a common UDRP principle used to make decisions:
3.8 Can bad faith be found where a domain name was registered before the complainant acquired trademark rights?
3.8.1 Domain names registered before a complainant accrues trademark rights
Subject to scenarios described in 3.8.2 below, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. (This would not however impact a panel’s assessment of a complainant’s standing under the first UDRP element.)
3.8.2 Domain names registered in anticipation of trademark rights
As an exception to the general proposition described above in 3.8.1, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.
Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application.
If you go to the link, you'll find that the WIPO Overview also includes links to relevant decisions that will give you some sort of idea of the cases in which this principle has been applied.
So, and this is really the point:
QUIT OBSESSING OVER TRADEMARK DOCUMENTS AND TAKE A LOOK AT THE BROADER OBVIOUS REALITY HERE.
The reality of the situation is this. In June (or whenever) of 2019, Facebook announced they were going to explore the launch of a cryptocurrency product in some sort of affiliation with a Swiss company that was set up for this purpose. Before making that announcement, they bought some tangentially related IP assets, and filed a foreign priority registration application in Turkmenistan, to attempt to cover the waterfront and secure a position in the future to be the exclusive licensor of "LIBRA" for any purpose connected with the product they intend to launch.
They didn't prepare that legal foundation for squirts and laughs.
Now, the way this is going to shake out, is as follows:
1. Some dumb schmuck, in June (or July) of 2019, registers the following domain names:
2. Fast forward to 2021. The LIBRA product has been launched and become popular. The Libra Association files a UDRP against the dumb schmuck who registered those domain names back in 2019.
3. The dumb schmuck files his "defense" claiming, "Oh, 'libra' has been a common word and a horoscope sign for a long time. I registered these domain names as social media sites for people born under the sign of Libra to share information about their coin collections" or some stupid sh*t like that.
The dumb schmuck also says, "They didn't have a registered trademark when I registered the domain names and the product didn't even exist at that time" and, my personal favorite, "I wasn't using the domain names for any infringing purpose, I just offered them for sale."
Okay, so, given those facts, there is no question what the outcome is going to be:
Nobody is stupid enough to believe that the dumb schmuck registered those domain names right in the midst of all of the media attention simply because it was a coincidence of timing.
Nobody is stupid enough to believe that the dumb schmuck didn't register that list of those names for any reason other than they are directly relevant to the product that Facebook announced its intention to launch.
Nobody is going to give a sh*t what the technical status of some trademark application was, or what is the specific recitation of goods and services in the application (by 2021 a registration).
And nobody is going to believe the dumb schmuck or care about the dumb schmuck's lame arguments, because the obvious reality of the situation is that the dumb schmuck heard that Facebook was going to be launching a product named "Libra" and the dumb schmuck thought he could secure a position wholly based on goodwill attributed to the brand name of that financial product.
Now, do remarkable coincidences happen sometimes? Yes they do.
Is there room in the world for legitimate nominative use of trademarks? Yes there is.
But unusual circumstances require strong and persuasive evidence. Registering a roster of names clearly timed with major media attention to a forthcoming product brand, with lame-brained justifications for having done so, does not do that.
There's some irony when a lawyer call's a person a "dumb schmuck."
...says the guy who suggested there was some area of ambiguity around the IRS having completely limited 1031 exchanges to real property.
Don't worry. You can laugh at me from the balcony of your mansion when you get rich from these names.
You come with a great wealth of knowledge, but you really need to work on your delivery.
More accurately - they will decide who is allowed to, who they will tolerate, and who they will not.
How can "AMAZON" be the trademark of an online retailer? Hasn't the Amazon River, or the Greek myth of the Amazons, existed for a long time before the internet?
How can "RED BULL" be a trademark? Aren't there people who own red bulls? Haven't red bulls been around for a long time?
How can "APPLE" be a trademark?
How can "BUD" be a trademark?
These are all well known trademarks.
Many common words are also - apart from their dictionary meaning - trademarks.
If you think I'm unpleasant, wait until people start hearing from Facebook's lawyers. They aren't going to show up at Namepros and offer their thoughts for free.
You probably meant the Libra Association's lawyers as Facebook does not own, control or govern the cryptocurrency called Libra.
The point isn't whether or not you can safely reg a TM domain.
The point is that no sensible crypto company will want to BUY a crypto related domain that contains a popular cryoto brand that is already trademarked by a popular crypto company.
Ethereum is trademarked. Look how many domains where sold with the word "Ethereum" in it. Not many... And how many of those sold are actually in use?
They are the same lawyers.
Fenwick and West, the firm identified in the application I linked above, is also the primary firm that handles Facebook's corporate matters.
Before they enforce a TM they need to be granted the TM. What they are proposing is somewhat ambiguous as it competes with FIAT currency. There are legal challenges all around them from governments all over the world. It is certainly possible their claim is denied.
Thanks @jberryhill for the wealth of knowledge
LibraFountain / com
TheLibraHub / com
TheLibraSpot / com
LibraTra / de
If I get a couple of bucks back on any of these I will be happy enough.
Libra is probably here to stay, but the market is to big to get in contact with the end-users for a domain like this I guess.
Whether or not "governments all over the world" don't like cryptocurrency has NOTHING to do with whether they will establish trademark rights in the name of a set of products and services offered under that name.
In the US, for example, cannabis is still illegal under federal criminal law. But...
Word Mark CANNABISNOW
Goods and Services IC 041. US 100 101 107. G & S: Magazine publishing; Publication of on-line magazines; On-line journals, namely, blogs featuring cannabis; Providing on-line publications in the nature of magazines in the field of cannabis; Providing on-line digital publications in the nature of magazines in the field of cannabis via the Internet; Providing a website featuring blogs and non-downloadable publications in the nature of magazines in the field(s) of cannabis; Publication of magazines; Publication of electronic magazines; Publishing of web magazines. FIRST USE: 20101100. FIRST USE IN COMMERCE: 20101100
Registration Number 5792413
If what you are saying is that governments will somehow prevent or stop the actual use of LIBRA as a cryptocurrency, then obviously the domain names corresponding to a non-existent and unusable service are as worthless as the elaborate initial steps they have taken to securing international trademark rights.
I mean, duh, what good are domain names that relate to a service that doesn't exist?
But the whole "granted a TM" paradigm, which you seem to believe matters, is precisely at the heart of why so many domain registrants end up wasting money on domain names with no value, and potential liabilities.
If you think a registered trademark is required to win a UDRP or to bring a cybersquatting action, then you really don't understand the first thing about trademarks in the US (or English commonwealth countries).
This statement here:
..is simply wrong.
In fact, it is the FIRST question in the WIPO Overview of panel views on common UDRP issues - the UDRP FAQ, if you like:
1.1 What type of trademark rights are encompassed by the expression “trademark or service mark in which the complainant has rights” in UDRP paragraph 4(a)(i)?
1.1.1 The term “trademark or service mark” as used in UDRP paragraph 4(a)(i) encompasses both registered and unregistered (sometimes referred to as common law) marks.
No one needs to "grant" anyone common law trademark rights.
The central part of distributed computing systems that make up a blockchain, such as the Libra Blockchain, is the inability of any one party to censor transactions or control who can and can’t be a part of the network. This is the foundation of decentralization. The Libra Association has specifically stated they intend to go decentralized, while initially rolling out being centralized. One has to wonder if this is to confuse the lawmakers and governments.
Is this an attempt to control a system that is meant to be uncontrolled? Do TM's play a factor with true decentralization?
Libra, if and when it becomes decentralized, must address many concerns regarding privacy, money laundering, consumer protection and financial stability. These all play a factor in decentralized technologies and lawyers, lawmakers and governments must understand the short term and long term objectives.
It can be argued that a Trademark is neccessary if it is a centralized blockchain product.
It can also be argued that it can NOT be Trademarked if it is a decentralized blockchain currency.
The Libra Association needs to settle in and let the governments and lawmakers know exactly what their intentions are now and in the future.
We are at a time when lawyers, lawmakers and governments are significantly behind technology. I will wait to see if those behind can catch up before I make a centralized decision on what is and what is not.
In the meantime the Libra Association needs to establish where they stand because as of now the seem to be standing everywhere.
Separate names with a comma.