UDRP shopify.ai

[Igor Gabrielan]

Today the company Shopify started a dispute with me regarding the name shopify.ai .
I have many excellent arguments, which I will describe later.

 

[MSN-Domains]

Godspeed Igor

 

[WillW]

Even if that was the case, Shopify is TM'd and that's all that matters.

 

[Future Sensors]

I'm not so sure if it's helpful to discuss this particular case here on the forum.

 

[jberryhill]

Although objectively I had great chances

You are the only person in this thread who believes that. "Shopify" is not a word, and English is not German - we don't just string things together and make up words as we go along. The arguments along the lines "putting -ify on the end of a word is normal" or "someone else would have registered it" do not mean anything in a UDRP dispute. Since English is not your native language, you are probably not a good judge of what looks normal in English and what doesn't. "Shopify" is not some sort of existing or inevitable word.

It doesn't make sense because what would it mean? To make something shoppy? To turn something into a shop which was not a shop? It just does not work as an English word, and I don't think you are at all qualified on the subject of what "feels right" to English speakers. There's a loudmouth self-proclaimed expert domainer on Twitter who doesn't realize that his English sounds like a bad spam email. Hey, I get it, I can barely get by in broken Spanish and your English is phenomenal. But surely you understand that native speakers have a "feel" for what works and what doesn't. Yes, we have a lot of "-ify" words like "beautify", to make or increase a thing's beauty; "diversify", to make something diverse; humidify, to make something more humid. But you can't just stick -ify on the end of any English noun and come up with something that makes any sense. Shopify, to make something more like a shop? In most cases, the root word also ends or combines with -ty or -ity in a pair, like qualify/quality diversify/diversity humidify/humidity dignify/dignity, but the point is there are words that work well with "-ify" and words that don't work well. Now, as a trademark, "shopify" is borderline suggestive/fanciful because if it was a word, then it would sort of fit the idea of turning your website into a store.
But, bottom line, it is not a word, any more than cybersquattiousness - which, yeah, you could work out a meaning (like, the quality of having a tendency to engage in cybersquatting), but it is just not a freaking word. Its awkwardocity exceeds its meaningness.

Additionally, trademarks are not about who "invented" some made-up word or whether it is shares a suffix with other words. "Coca-Cola" is just the names of two plant ingredients - coca and cola - which go into making it. So what? Who cares? The point is that many people around the world know exactly who and what "Coca-Cola" is.

Likewise, anybody on the planet who knows anything about e-commerce knows who Shopify is and what they do.

Look at your first sentence in this thread:

Today the company Shopify started a dispute with me regarding the name shopify.ai .

"the company Shopify" - What company Shopify? You don't say, "Shopify, an e-commerce platform provider" in order to give us some idea of just what this company might be. And you don't have to for a simple reason: We all know who Shopify is.

Your first sentence in this thread assumes the fact that your audience knows who you are talking about when you refer to "the company Shopify". That, right there, the way you said that, demonstrates that it is a strong and well known trademark. We all know that. We don't react by thinking, "Gosh, whomever could he be talking about? I mean, "shopify" could mean so many different things." No, the reaction is more along the lines of having someone come in complaining, "I just went to a face slapping contest and got my face slapped!" Yeah, what did you think was going to happen there?

You did not have great chances, and there is no one who agrees with you. Now, sure, if you had some sort of expertise in the UDRP, that wouldn't be much of a problem. I'm frequently the bearer of bad news to people who have overly optimistic ideas of how strong are their arguments and how good are their chances. But, then again, there is no one else on the planet who has defended as many UDRPs as I have, so I'm really not too bothered if someone who has never been involved with a UDRP disagrees with me.

But, you might notice that Namepros members usually tend to be on the optimistic side of these things. Someone will show up, post a truly awful domain name, and Namepros members will go on about ridiculous reasons why it would survive a UDRP. Certainly, you have to have noticed this over time.

So, given that general background, when you are getting feedback from several others here who are not usually among the loonies (although I could go either way on that with one of the folks above), and they are telling you that it is utterly ridiculous to believe that a junior domain registration of "Shopify" dot anything was going to work out well, then you should really take into account that, most of the time, these threads are practically cheering sections for questionable domains supported by flimsy arguments.

You can't simply take that sort of consistent disagreement as a mere offense to your pride and dismiss every one who disagrees with you as an idiot. Granted, their disagreement may be expressed in harsh ways, but it is a harsh world, and they are at least telling you their honest opinion, regardless of how dopey a lot of the opinions around here tend to be.

That is all. Good luck with the CIIDRC, and I hope that someday you see your money back from Epik.

 

[MSN-Domains]

The representative of the company greatly underestimates the imagination of domainers.
I am sure that the domainers 'invented' this word before the company Shopify.

 

[tonyk2000]

I hate to mess with a lawyer after he's been digging through my dirty laundry.
Let them decide on this issue without me.

Do not forget that in most cases such large companies are unaware that they started udrp. It is all done by lawyers. The lawyer found your domain. The lawyer sent a bill to their client shopify. Shopify paid. It is likely that nobody @ shopify really wants your domain, and no human being at shopify bothers about Anguilla domain...!

 

[xcloud123]

shopify will win ，shopify is not a dictionary word，you know this brand，you reg it late，

 

[jberryhill]

As of Jan 1, 2023 we do not accept UDRP challenges for domains where there is only 1, 2, or 3 characters before the ".ai".

Your point being what?

As a ccTLD, they can adopt whatever rules they want.

How many letters are in "shopify"?

 

[DigiNames]

Shopify is a made up word...The company made it up and called their business that before you registered the domain. It is their trademark.

Almost all trademarks are made up words or combinations. You probably could trademark Metaversify if you want to use it for a business and claim it for own if you really want to.

I think they are going to win this one.

 

[kor]

It is important for me to protect the independent value .ai

You're free to protect anything you like. And companies have to protect their IP.

You have to come out of your dream and be prudent.

 

[M999]

@Igor Gabrielan​

This thread is ridiculous. Your registration of this domain is the type of action that pits many against "domainers".

Just transfer the name to shopify and move on. You should have never registered this domain in the first place.

YOU KNOW ALL OF THIS - YOU KNOW BETTER.

 

[jberryhill]

Similar disputes should be held in a neutral country, and the commission should be chosen randomly immediately before the hearing so that a rich company does not have time to bribe the commission. Fighting with a fed-up commission in Canada is really pointless. It is indicative that the company also won a previous similar competition in Canada.
In Ukrainian courts, the judge is determined randomly. It is absurd that in domain disputes it is possible to choose the same pocket commission.

This is just silliness. There are a couple of accredited UDRP providers:

WIPO - an international organization in Switzerland

NAF - a private company in the US

ADNDRC - a Chinese company with offices in Beijing, Singapore and Seoul

CIIDRC - a Canadian arbitration company

and a minor Arabic one in a country I don't remember for a moment.

The CIIDRC's domain name program is run by Ms. Ina Ergasheva. That is a more popular surname in Ukraine than in Canada, if that matters to you:

https://forebears.io/surnames/ergasheva

...but that is really beside the point, since she's not deciding the cases either.

If you think your chances would be any better you are kidding yourself, since over the years, Shopify has filed disputes with most of the UDRP providers since 2017:

Domain	Case	Date	Decision
shopify.cloud	WIPO D2017-1205	2017-08-11	Transfer
shopify.link	NAF 1886309	2020-03-30	Transferred
shopify.media	NAF 1899794	2020-07-13	Transferred
shopifychat.com	NAF 1913150	2020-10-23	Transferred
shopify-service.com	NAF 1915906	2020-11-16	Transferred
helpshopify.com	NAF 1916861	2020-11-23	Transferred
shopifyinbox.com	NAF 1929992	2021-02-23	Transferred
shopify-vn.com	NAF 1935553	2021-04-05	Transferred
shopifyacademy.com	NAF 1949281	2021-07-09	Transferred
shopifybrand.com	NAF 1987533	2022-04-11	Transferred
shopifyshop.com	NAF 1989162	2022-04-18	Transferred
shopifydevelopment.com	CIIDRC 17316	2022-04-27	Transferred
shopifyw.com	NAF 1989778	2022-04-28	Transferred
shopify-koshiki.com	CIIDRC 17318	2022-05-02	Transferred
shopifydeveloper.com	CIIDRC 17317	2022-05-04	Transferred

shopifyfx.com	NAF 1995195	2022-06-06	Transferred
expertshopify.com	CIIDRC 17459	2022-06-21	Transferred
shopifynfts.com	CIIDRC 18526	2022-11-14	Transferred
shopifyappstore.com	CIIDRC 18527	2022-11-15	Transferred
shopifycheckout.com	CIIDRC 18531	2022-11-17	transferred
shopifythemes.com	CIIDRC 18530	2022-11-17	transferred
shopifyjobs.com	CIIDRC 18529	2022-11-17	transferred
shopifycareers.com	CIIDRC 18528	2022-11-17	Transferred
shopifynft.com	CIIDRC 18535	2022-11-18	transferred
shopifylogin.com	CIIDRC 18533	2022-11-18	transferred
shopifyfulfillment.com	CIIDRC 18532	2022-11-18	transferred
shopify.one	CIIDRC 18542	2022-12-13	transferred
shopifyau.com	CIIDRC 18540	2022-12-23	Transfered
shopify-br.com	CIIDRC 18541	2022-12-23	Transfered
shopifysg.com	CIIDRC 18543	2023-01-10	transferred

Nobody had to bribe anyone for those results, from UDRP providers in three different countries and panelists from around the world, for the reasons I posted above. It looks like they started at WIPO, found out the fees at NAF are cheaper, and then moved to CIIDRC after a recent fee decrease there.

It's obvious cybersquatting on a well-known trademark that consists of a made-up word. The arguments otherwise are exactly the kinds of dumb excuses that make domainers look like they don't know what they are talking about.

No, it doesn't take bribery or a team of expensive lawyers to file the same template-based UDRP complaint thirty times. They just make some minor changes to the same document, pay less than $1500 in fees and get the same result each time because it's a well-known trademark that consists of a made-up word.

It's not some global conspiracy at work. It's just your fragile ego which can't handle some very obvious facts you don't like.

By the way, I received another RDNH decision defending a domain registrant yesterday:

https://domainnamewire.com/2023/02/23/iloveart-com-dispute-leads-to-reverse-domain-hijacking/

...so feel free to accuse me of being biased or paid off.

But it is exactly nonsense like this which makes it more difficult to defend legitimate domain registrants.

 

[Mize]

Is it true? I mean, if l bought let's say 'google.ai' and pointed it to an empty page, wouldn't it be a trademark infringement because it would indirectly damage the well known brand name? I've dropped an ebay. pointing to a null page that l wanted to use for storing images on an ftp because of the very low renewals of the extension... thinking that even a blank page or a 404 were a potential damage for the copyright holder.

To me, the below clears up ambiguity that was in my mind.

As per USPTO: https://www.uspto.gov/trademarks/basics/what-trademark

"A common misconception is that having a trademark means you legally own a particular word or phrase and can prevent others from using it. However, you don’t have rights to the word or phrase in general, only to how that word or phrase is used with your specific goods or services.

For example, let's say you use a logo as a trademark for your small woodworking business to identify and distinguish your goods or services from others in the woodworking field. This doesn't mean you can stop others from using a similar logo for non-woodworking related goods or services."

The interesting part to me: you (the trademark holder) don’t have rights to the word or phrase in general, only to how that word or phrase is used with your specific goods or services.

@jberryhill if you know of something from USPTO that contradicts the above please let us know.

To me, this removes ambiguity about dictionary terms and invented words and places the importance on the trademark holders specific goods or services.

 

[tonyk2000]

"We look forward to working with you again in the future"
LOL

 

[jberryhill]

This is a Russian surname.

Why don't you look at the link I sent. That surname is most common in Uzbekistan. The next places where it is most common are Ukraine, and then Russia third.

Of course not, because they have a lot of money

Gosh, Igor, why do you think they have a lot of money?

Oh, here's a guess... Because they started a business many years before the domain name was registered. That business became very successful and well known around the world as Shopify. Yes, that is certainly part of what goes into whether or not a mark is famous and well known. Duh.

And what were you doing with the domain name? Collecting donations for the poor and oppressed people around the world, to spread peace and love?

So, tell me something, Igor...

Do you think the government of Turkey has a lot of money?

Then why did they lose a domain name dispute to a small business in Virginia:

https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2021-1949

Do you think the international consulting firm PriceWaterhouseCoopers has a lot of money?

Then why did they lose a domain name dispute to an individual running a business in Hong Kong:

https://www.wipo.int/amc/en/domains/decisions/html/2002/d2002-0087.html

Do you think one of the largest commercial property developers in Dubai has a lot of money?

Then why did they lose a domain dispute to an individual in Ohio?

https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2021-0591

Do you think Cambridge University has a lot of money?

Then why did they lose a domain dispute to an individual in Boston:

https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2015-1278

Do you think MasterCard has a lot of money?

Then why did they lose TWO domain disputes to a small business in California:

https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2011-2310
https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2011-2310

Do you think Visa International has a lot of money?

Then why did they lose a domain dispute to an individual from Canada:

https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2010-1531

Do you think the government of France has a lot of money?

Then why did I beat them not once, not twice, but THREE times in the UDRP:

https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2010-1531
https://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-1279.html

Do you think Martha Stewart has a lot of money?

Beat her too:

https://www.adrforum.com/domaindecisions/1259275.htm

Do you think the South African national gold mining company, Rand Refinery, has a lot of money?

Then how did I beat them too:

https://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0233.html

Do you think that Daimler, the owner of Mercedes and Chrysler has a lot of money?

Then why did they lose to an individual in Georgia:

https://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-1712.html

Click on each one of those and look at who was working for the side with less money. I defended every one of those domain disputes against companies and governments who are worth billions, and mostly on behalf of individuals who didn't have very much at all.

But along comes the know-it-all who says this:

Lawyers, even when not employed by a rich company, subconsciously smell money and think in favor of the rich company.

Oh, right, I'm biased. You're the guy thinking you are going to sell a "shopify" domain name, and you're the objective one here. What a joke.

Yep, it's all rigged and corrupt. So, you'd better get out of this business immediately, because it is obviously a waste of your genius.

 

[jberryhill]

I believed that three letters were not enough for distinguishing ability, and for each set of three letters, there were several companies using it.

Let's try a quiz

1. Look at these sunglasses, which have a single letter printed on the temple:

Who makes these glasses?

2. This car has two letters on it:

Who makes that car?

3. This car has three letters on it:

Do those three letters distinctly identify a particular brand of car?

4. Here's ANOTHER car with three letter on it. Same question:

5. Here's a building with three letters on it:

What sort of business do you think goes on in that building?

6. How about this building with three letters on it:

Any idea what goes on in there?

7. Here's a printer with two letters on it:

Can you tell who made that printer?

8. You turn on your television and you see this:

Do you know where that news is coming from?

9. What if you turn on your television and see this instead:

Where does that news come from?

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

Extra credit question just for Igor:

Here are three letters on a building in Zaporizhzhia. Do you know what company that is and what they make?

Now, sure, I don't expect everyone from every country to necessarily be able to identify those marks, but everyone, everywhere is surrounded by three, two and even one letter trademarks pretty much every day.

 

[jberryhill]

Maybe those who lost simply did not find a lawyer who could bribe officials.

This guy can't find a lawyer who pays bribes:

Incidentally, that's a headline from a Turkish news site after he lost the togg.com dispute.

The largest gold mining and refining company in the world doesn't know how to pay bribes?

A Dubai commercial property developer doesn't know how to pay bribes?

Mercedes - which used concentration camp inmates to build cars and provides vehicles to every corrupt dictator on earth - doesn't know how to pay bribes?

My goodness. Someone ought to teach these people how to pay bribes!

 

[Bertrell]

My "domainer-brain" takeaway(s) from this thread, with help from those who commented:

stupid a f

It doesn't make sense

This is just silliness.

This thread has become ridiculous

Sure, you're right. It's all rigged.

But strange.

available domain names at the time they register

AvailableAF|com (no image, sorry)

someone pretending to be ignorant

slightly bent

this particular brand name is already trademarked

TrademarkedAF|com (no image, sry)

 

[kor]

You're still trying to warp reality, but common sense doesn't work that way.

That's why you need to wake up from your deep sleep.

 

[frank-germany]

The applicant filed a complaint with Canadian International Internet Dispute Resolution Centre (CIIDRC)
https://ciidrc.org

I consider it unfair for a dispute between a Canadian entity and a non-Canadian entity to be held in a Canadian entity. This should be considered in a neutral country. How can I withdraw?

1.) think
2.) have a plan
3.) register a domain

 

[MKA]

The representative of the company greatly underestimates the imagination of domainers.

There's no imagination or creativity here, you're trying to capitalize on their brand by registering it in an underused TLD. I don't think anyone here's going to support your decision in this, because it's making us all look bad.

I am sure that the domainers 'invented' this word before the company Shopify.

It doesn't matter, because Shopify was the first to trademark it.

 

[frank-germany]

why would you even bother a lawyer
with that thread ?

it is as stupid as stupid can be

 

[tonyk2000]

I will not contact this lawyer.

Your choice. I also hate dealing with corporate lawyers, but sometimes it is inevitable. Without their lawyer, the udrp will proceed.

 

[Mize]

Hi Shopify.com,

Maybe this domain conflict can turn into something good?

Can you put a banner at the top to your website asking Putin to please stop killing people? Maybe you can get it to go viral and help end the war.

Thank you!

 

[jberryhill]

So, a possible scenario:

You should have a look at the terms here:

http://whois.ai/faq.html

While we want lots of .ai domain sales as it raises significant money for The Government of Anguilla, we do not want any scammer domains tarnishing the reputation of Anguilla or ".ai". If people know of scam sites in ".ai" domains please report them. The Government of Anguilla reserves the right to remove or suspend any domain. This is usually due to one of the following or similar scamish actions:

I like the quaint use of "scamish".

Be that as it may, I doubt they are very particular about the UDRP locking requirements and, yep, it's a good possibility they just went ahead and transferred the name.

The interesting part is that CIIDRC doesn't have to stop the UDRP case merely because the name has been transferred. The only way that can happen is under UDRP Rule 17, which requires both parties to agree to terminate the proceeding. Given how happy Igor has probably made the lawyers on the other side with his antics, they would probably be inclined to simply let Igor thrash around, and if the CIIDRC asks, to say that they want the decision anyway. The CIIDRC would have no choice but to allow the case to proceed, and leave it up to a panelist what he or she makes of the situation.

The UDRP providers don't really know much about how the domain name system functions on a practical level, but they are pretty good at reading the UDRP rules and understanding when they can, or cannot, terminate a proceeding.