IT.COM

UDRP shopify.ai

Spaceship Spaceship
Watch

Igor Gabrielan

.ai .mv .botTop Member
Impact
3,345
Today the company Shopify started a dispute with me regarding the name shopify.ai .
I have many excellent arguments, which I will describe later.
 
0
•••
The views expressed on this page by users and staff are their own, not those of NamePros.
This thread should be locked.
Absolutely dumbest domain reg.
 
7
•••
How to defend the indefensible I never know whether to admire or sympathize with those that go out on a limb with such registrations (or market purchases) There always seems to be an element of Devil may care in their justification. As if challenging the norm or acceptable is part of their personality. So OK I've lost that one, Now let me find another domain to stoke-the-fire. I'm sure that most could be quite good domainers in a normal sense. Do they just enjoy the attention. Maybe they sleep better knowing they are on somebodies radar for all the wrong reasons. Who knows.

Nothing quite like a bit of Vandalism to brighten up ones day
 
Last edited:
5
•••
5
•••
I can say with confidence that in my locality, where the population is larger than in Anguilla, no one has heard of this Canadian company
A quick google search reveals that "There are 1,019 live Shopify stores in Ukraine.":
https://storeleads.app/reports/shopify/UA/top-stores

Can I register "Shopify" trademark for confectionery products in Ukraine?
Since the term, as shown above, is more or less known in Ukraine in connection with the Canadian business, your TM application would likely be denied. It appears that this exact situation is described in Ukranian law:

Не можуть одержати правову охорону також позначення, які:
- можуть ввести в оману щодо товарів чи послуг, зокрема щодо їх властивості, якості або географічного походження;
- можуть ввести в оману щодо особи, яка виробляє товар або надає послугу;

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?
You cannot. It is not how UDRP works. "Canadian entity" is a technical body though. They do not decide. It all depends on a panelist, and you should expect that a single panelist would be located in a third country (this is how UDRP providers normally set the things, exactly to eliminate questions like yours). Of course you may pay for 3 members panel and would therefore be able to suggest panelists, but it makes no sense in this case.

So, long story short:

- shopify .com has Creation Date: 2005-03-11

- shopify. ai has Creation Date: 2017-12-15

- you do not have a trademark, neither registered nor unregistered

- shopify is known in Ukraine

The complainant will prevail in this case. 99% probability. Actually, you may not bother with composing a response.

You may actually want to voluntary transfer the domain to complainant and ask them to cancel UDRP. Why this matters? First, if you lost (once) - then it would be easier for other complainants (other domains) to refer to you as a cybersquatter. All decisions are public. Second, your domain is registered with "Igor Gabrielan" registrar, so you are acting both as the registrar and registrant. You do not want to give the panelist a chance to discuss this like they used to discuss Epik/Rob in some of their udrps (conflicts of interests) do you?
 
4
•••
I officially applied to Anguilla for a voluntary transfer of the name to Shopify
You likely also need to contact the complainant (their lawyer, who signed the paperwork), as they need to act to receive a domain, and I think there are some forms that should to be submitted by both parties for udrp to be terminated. But, do not discuss who is right or wrong, do not disclose your feelings ("I'm right, but.."), do not tell them about district courts or your desire not to let them make money. Someting short and polite...
 
4
•••
I didn't receive the termination notification.
So, a possible scenario:
- you contacted somebody at shopify, and they gladly took the domain
- nobody asked Canadian centre to terminate the process
- UDRP will continue, the panel will be formed, they will decide to transfer the domain based on original information
- the decision will be public, with all negative consequences

There are published steps to terminate udrps. However, you may probably email the Canadian Centre (case administrator), show them current whois, and let them know that you already transferred the domain to the complainant.
 
Last edited:
4
•••
I’m amazed it took Shopify this long to dispute this blatant infringement.
 
Last edited:
4
•••
"shopify" trademark application date: April 6, 2006
"shopify.ai" creation date: December 15, 2017

And they have 115 active TM registrations around the world at the moment.

If this were a dictionary term, we would be discussing it from a different angle.
 
3
•••
This thread has become ridiculous.
 
3
•••
As per: https://www.uspto.gov/page/about-trademark-infringement

This would also need to be taken into consideration for trademark infringement:

"In addition to claiming likelihood of confusion, a trademark owner may claim trademark "dilution," asserting that it owns a famous mark and the use of your mark diminishes the strength or value of the trademark owner's mark by "blurring" the mark's distinctiveness or "tarnishing" the mark's image by connecting it to something distasteful or objectionable-even if there is no likelihood of confusion."

Where "blurring" and "tarnishing" become important relative to trademark-infringement.
So for a famous mark, this "blurring" would bring back the relevance of [dictionary terms and invented words] (strength of mark) and take importance back away from [specific goods or services that are not causing confusion].
 
3
•••
Relative to a famous mark:

https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1200d1e6296.html

'When present, the fame of a mark is "a dominant factor in the likelihood of confusion analysis . . . independent of the consideration of the relatedness of the goods." '

"Thus, a party who asserts that its mark is famous must submit evidence clearly establishing that its mark is viewed by relevant purchasers as a famous mark. See, e.g., In re Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1409 (TTAB 1998) . The fame of a mark may be shown by evidence of, inter alia, the quantity of sales of products bearing the mark, the amount of advertising expenditures relating to the mark, and the length of time such indications of commercial awareness have been evident."
 
3
•••
If desired, attackers could permanently register names with a brand and defame it. After all, names are much faster and easier to register than to be taken through bureaucratic procedures, even if there is a well-oiled name-taking pipeline. But probably no one knows, so this is a purely imaginary possibility.

The UDRP has been around for more than 20 years. Saying "no one knows" is different from saying "I don't know", when there are people who have been participants in the UDRP process for all that time.

But, yes, there has been more than one person who has decided to throw a domain-registration tantrum because they didn't understand the UDRP:

https://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0996.html
The domain names in issue in this proceeding are <guinness-really-sucks.com>; <guinness-really-really-sucks.com>; <guinness-beer-really-sucks.com>; <guinness-beer-really-really-sucks.com>; <guinness-sucks.com>; <guinnessreallysucks.com>; <guinnessreallyreallysucks.com>; <guinnessbeerreallysucks.com>; <guinnessbeerreallyreallysucks.com>; <guinness-beer-sucks.com>; and <guinnessbeersucks.com> ("said domain names").

The Complainant submits that the Respondent is not making a legitimate non-commercial or fair use of the said domain names. In support of this claim the Complainant has submitted a print out of the Respondent's www site accessible via the <guinnes.com> domain name in which it is alleged that the Respondent has stated that he registered the said domain names because he was angry with the Complainant for filing an ICANN complaint seeking the transfer of the said <guinnes.com> domain name. It is alleged that the Respondent posted the said domain names on his said www site accessible via the said <guinnes.com> www site address during the approximate period from June 1 to July 14, 2000. The Complaint states that the said domain names had not been used in connection with active www sites as of the date of filing of the Complaint.

In support of its argument that the said domain names were registered by the Respondent as a result of the earlier administrative proceedings, the Complainant has submitted a print-out of a page on the Respondent's said www site and alleges the following statement was posted on that www site during the period from June 1 through July 14, 2000:

"I tell you, I was so upset when I got this STUPID ASS LETTER from the GOOFBALL JACKASS LAWYERS at guinness beer, that I went to register the domain name, GUINNESSSUCKS.COM, but guess what, that domain name is already owned by someone. Guess who. That's right. Guinness beer owns it themselves. I'm glad I'm not the only one who thinks they suck. THEY THINK THEY SUCK THEMSELVES!! . . . So anyway I did go and register a few names about guinness beer and pillsbury. Tell me what you think....Coming Soon to a website near you!!"


On the said print-out of the page on the Respondent's www site there is a list of what the Complainant describes as twenty-two (22) "Guinness sucks" and "Pillsbury sucks" domain names allegedly registered by the Respondent in response to the Complainants initiation of the said earlier administrative proceedings.

The Complainant argues that the Respondent admitted on the said <guinnes.com> www page that he registered the said domain names at issue in this proceeding because he was angered by the Complainant's attempt to take the domain name <guinnes.com> away from him.
The registration of the said domain names at issue in this proceeding was done in bad faith and not for a legitimate purpose, rather Respondent's intent is to harass the Complainant for its attempts to enforce its trademark rights and to tarnish the <GUINNESS> trademark.

Accordingly, this Administrative Panel decides that said domain names <guinness-really-sucks.com>; <guinness-really-really-sucks.com>; <guinness-beer-really-sucks.com>; <guinness-beer-really-really-sucks.com>; <guinness-sucks.com>; <guinnessreallysucks.com>; <guinnessreallyreallysucks.com>; <guinnessbeerreallysucks.com>; <guinnessbeerreallyreallysucks.com>; <guinness-beer-sucks.com>; and <guinnessbeersucks.com> should be transferred to the Complainant.

I don't really see what the speed of domain registration has to do with it, since UDRP cases can include, literally, hundreds of domain names in one shot. So, if you want to spend your money registering a bunch of domains that Shopify might not even care about, have at it.

If you look at the UDRP's that Shopify has filed, it is pretty clear that they are principally concerned with domains that have some relation to their services or could be used for abusive purposes. For example, names like Shopifyjobs .com are commonly used to post fake job ads pretending to be the company in question, and then are used to steal the identities of job applicants who are asked to submit personal information as part of the pretended job application and employment process.

So, yes, the "I don't like the UDRP, so I'm going to spend money doing something massively unproductive" is indeed a path which has been gone down before, and not just by that particular person. There is also a person on Namepros who, among such antics as posting recordings of his court-appointed therapy sessions, has also engaged in registering domain names as a temper tantrum. Unhappy with the decision in this one:

https://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-1467.html
The disputed domain names <germanlego.com>, <legogiraffe.com>, <legogiraffepenis.com>, and <legopenis.com> are all registered with GoDaddy.com Inc.

He decided to come back for more in this one:

https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2021-1424

The disputed domain names <applelego.com>, <legoapple.com>, <legocunt.com>, <legofuck.com>, <legopen.com>, <legopened.com>, <legopening.com>, <legopenz.com>, <legosex.com>, <legoxxx.com>, <pornlego.com>, <sexlego.com> and <xxxlego.com> are registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).

Now, to be fair, he had been ordered to receive psychotherapy in Australia for a reason, and his biggest problems have nothing to do with domain name registrations. But at least he has an excuse of some kind.
 
3
•••
By the way, this thread started with your various "excellent arguments" that were going to win your .ai domain dispute, but I don't even see the case listed:

https://www.wipo.int/amc/en/domains/casesx/list.jsp?prefix=DAI&year=2023&seq_min=1&seq_max=199

Case NumberDomain Name(s)Commencement DateCase Status
DAI2023-0001carrefour.ai-Terminated
DAI2023-0002amundi.ai-Terminated
DAI2023-0003carestack.ai-Terminated
DAI2023-0004kink.ai-Decided
DAI2023-0005russellbrunson.ai-Decided
DAI2023-0006carvana.ai-Terminated
DAI2023-0007bayer.ai-Terminated
DAI2023-0008leclerc.ai-Terminated
DAI2023-0009boehringer-ingelheim.aiMay 10, 2023Pending
DAI2023-0010sage.aiJune 13, 2023Pending
DAI2023-0011bforbank.aiJune 20, 2023Pending
DAI2023-0012mphasis.aiCompliance Review PendingPending
DAI2023-0013infosys.aiCompliance Review PendingPending
DAI2023-0014astonmartin.aiCompliance Review PendingPending

Screenshot 2023-07-13 at 5.14.46 PM.png


Screenshot 2023-07-13 at 5.14.58 PM.png
 
3
•••
Can you find the word shopify in a dictionary anywhere? It's not listed at the morewords link you supplied. It's not at dictionary.com or Merriam Webster.
Is Facebook in Webster dictionary?
 
2
•••
If I can register a trademark "Shopify" for confectionery in Ukraine, can I register a domain name shopify.ai for this in reserve? I can register a domain name first and then a trademark, especially since the trademark registration process is long.

you should have asked yourself that question long ago
then use it for Ukrainian site for confectionery
and register a Ukrainian trademark shopify for confectionery
long ago
but you are stupid a f
so you didn't

and keep on asking superfluous questions here
so all the best to you
 
Last edited:
2
•••
I’ve been trying to find out if there is a broader rule for which words can take -ify and found one definition that it works with “some” words.

One thing about English is that it does not come directly from one ancestor language. English has Latin, Greek, Old French and Germanic words, and sometimes you can only do some things to one of those. It turns out that -ify is used on some Latin origin words. “Shop” is a Germanic origin word. One could use the Latin origin “emporium” instead, but emporify is still not a word.
 
2
•••
‘Capitalize’
cap·it·al·ize
[ˈkapɪt(ə)lʌɪz]

VERB
  1. (CAPITALIZE ON)
    take the chance to gain advantage from:
    "do they have what it takes to capitalize on this emerging opportunity?"
 
2
•••
It's not hard to understand that (ify) being added at the end of any word mean to convert into it's prefix.
In this case Shopify means to convert into a shop, Godify would mean to convert into a God someone by worshipping him, it also could mean to strengthen something which in any cases is the prefix dictionary word.
IMO
edit: also most of you forget that monopoly is not good, it's like Shopify is some kind of God and only they have right to use it, I m sure not only they came with this idea, maybe someone wants to Shopify his clothes in Zimbabwe, what now pray to Shopify?
 
Last edited:
2
•••
I believe that a person's Right to Internet access includes the right to register a domain name.
And this human right should not be violated by the machinations of rich companies.

I believe my farts smell like roses, but I can't get anyone to agree with that either.
 
2
•••
Jberryhill showed how clearly the conveyor for taking names works.

WTF are you talking about?

Because Shopify is a well-known e-commerce platform around the world, a lot of scammers, spammers and cybersquatters register "shopify" domain names in order to scam, spam and cybersquat. That's what happens when you are the owner of a famous distinctive made-up trademark and you deal in e-commerce.

Consequently, they file a lot of cases and they win them. They haven't even filed a lot of them, compared to other well-known companies.

I guess Lego is paying bribes all of the time in order to advance the international toy building-block conspiracy:



Domain Case Date Decision
legopokemon.comWIPO D2022-47072023-01-31Transfer
legos.networkWIPO D2022-47022023-01-25Transfer
slotlego.liveWIPO D2022-44912023-01-17Transfer
legoprecast.comWIPO D2022-42072022-12-27Transfer
legosale-us.comWIPO D2022-33382022-11-16Transfer
de-lego.siteWIPO D2022-33352022-11-01Transfer
anylego.comWIPO D2022-33372022-11-01Transfer
shoppinglego.comWIPO D2022-30252022-11-01Transfer
legosticker.siteWIPO D2022-30832022-10-24Transfer
brickmanlego.comWIPO D2022-30682022-10-20Transfer
legometaworld.comWIPO D2022-30352022-10-16Transfer
metaverselego.comWIPO D2022-30192022-10-06Transfer
legometa.comWIPO D2022-29042022-10-06Transfer
legocom.comWIPO D2022-28292022-10-05Transfer
mylego.shopWIPO D2022-25842022-09-07Transfer
legocome.storeWIPO D2022-22132022-08-19Transfer
gachbetonglego.comWIPO D2022-21392022-08-01Transfer
legopop.artWIPO D2022-19892022-07-21Transfer
thelego.groupWIPO D2022-13152022-07-11Transfer
lego2sex.websiteWIPO D2022-15602022-07-05Transfer
secondlego.comWIPO D2022-17332022-07-01Transfer
dailybuglelego.comWIPO D2022-13442022-06-30Transfer
discount-lego.comWIPO D2022-17422022-06-28Transfer
legoshops.comWIPO D2022-15622022-06-23Transfer
legoartnft.comWIPO D2022-12842022-06-22Transfer
iranlego.comWIPO D2022-13292022-06-16Transfer
lego.greenWIPO D2022-13312022-06-13Transfer
legoedu.comWIPO D2022-12952022-06-13Transfer
lego-dvd.comWIPO D2022-13322022-06-09Transfer
legobtc.comWIPO D2022-13492022-06-07Transfer
lego-edu.comWIPO D2022-07292022-04-25Transfer
legoonlines.comWIPO D2021-38172022-02-18Transfer
lego-app.comWIPO D2021-41452022-02-09Transfer
thelegogroup.comWIPO D2021-41462022-02-01Transfer
legohouse.techWIPO D2021-38192022-01-27Transfer
legoinstrucions.comWIPO D2021-38182022-01-12Transfer
ezylego.comWIPO D2021-26022021-11-03Transfer
yourlegohouse.comWIPO D2021-25952021-10-29Transfer
bestlegodeals.comWIPO D2021-23932021-10-27Transfer
legobricks.funWIPO D2021-22452021-10-24Transfer
legohub.storeWIPO D2021-26752021-10-15Transfer
golegoland.comWIPO D2021-25152021-10-11Transfer
legosore.comWIPO D2021-26592021-10-08Transfer
legoonline.storeWIPO D2021-22442021-10-07Transfer
legoip.comWIPO D2021-23542021-10-04Transfer
legogroup.orgWIPO D2021-26412021-09-29Transfer
legoshop.shopWIPO D2021-20602021-09-20Transfer
legohouse.coWIPO DCO2021-00602021-09-20Transfer
legosets.shopWIPO D2021-23792021-09-17Transfer
legoiran.comWIPO D2021-22842021-09-14Transfer
www-lego.coWIPO DCO2021-00582021-09-13Transfer
kidstoyslego.comWIPO D2021-23912021-09-13Transfer
legolaand.comWIPO D2021-20042021-09-08Transfer
shoplegoshop.comWIPO D2021-22092021-09-06Transfer
legocraft.techWIPO D2021-22462021-08-26Transfer
legonew.comWIPO D2021-21042021-08-26Transfer
legowear.shopWIPO D2021-18822021-08-25Transfer
lego-harrypotter.siteWIPO D2021-20612021-08-24Transfer
legobrick.linkWIPO D2021-20622021-08-24Transfer
lego-shop.topWIPO D2021-20572021-08-23Transfer
legokand.comWIPO D2021-18142021-08-13Transfer
legolqnd.comWIPO D2021-18132021-08-03Transfer
legobaby.shopWIPO D2021-16452021-07-26Transfer
legostore.wangWIPO D2021-12242021-07-19Transfer
lego-official.comWIPO D2021-16412021-07-19Transfer
lego-au.comWIPO D2021-16672021-07-19Transfer
applelego.comWIPO D2021-14242021-07-09Transfer
legoshop.funWIPO D2021-11322021-06-09Transfer
shopslego.storeWIPO D2021-07892021-05-03Transfer
legocon.comWIPO D2021-07382021-04-29Transfer
legofigur.comWIPO D2020-34182021-04-12Transfer
legosenthusiast.comWIPO D2021-05632021-04-12Transfer
amzlego.bestWIPO D2020-33052021-04-03Transfer
legoland.blogWIPO D2020-30712021-04-02Transfer
legotoysbuy.comWIPO D2020-34972021-03-25Transfer
legobahisbonus.comWIPO D2020-34002021-03-20Transfer
legoenligne.comWIPO D2021-01702021-03-15Transfer
legoonline.topWIPO D2021-00652021-03-15Transfer
legomovie.xyzWIPO D2020-34152021-03-09Transfer
lego.pageWIPO D2020-33262021-02-08Transfer
museumoflego.comWIPO D2020-26162021-01-20Transfer
axlego.comWIPO D2020-34042021-01-18Transfer
lego.restWIPO D2020-30462021-01-12Transfer
legomovie.storeWIPO D2020-24572020-11-30Transfer
deslego.comWIPO D2020-24722020-11-16Transfer
blocklego.comWIPO D2020-23552020-11-05Transfer
legopromotion.comWIPO D2020-23802020-11-02Transfer
lego-nvzhuang.comWIPO D2020-23502020-10-26Transfer
mylego365.comWIPO D2020-16952020-09-19Transfer
lego-lepin.comWIPO D2020-16942020-09-08Transfer
casinolego.comWIPO D2020-17112020-09-07Transfer
prolegostore.comWIPO D2020-17712020-09-04Transfer
legoshop.bestWIPO D2020-16962020-08-31Transfer
legogruop.comWIPO D2020-17522020-08-26Transfer
smartlego.clubWIPO D2020-17732020-08-26Transfer
legostore.workWIPO D2020-17062020-08-24Transfer
lego-lepin.infoWIPO D2020-13952020-08-10Transfer
lego-france.comWIPO D2020-13512020-08-03Transfer
milolego.comWIPO D2020-13692020-07-28Transfer
legotoys.onlineWIPO D2020-08952020-07-06Transfer


Those are just 100 out of the hundreds of UDRP cases that Lego has filed!

Seriously, click on the link:

https://www.dndisputes.com/search?complainant_name=lego

What it shows is that successful, well-known trademark owners attract a lot of cybersquatting, bring a lot of cases, and win them because they are successful well-known trademark owners. Again, being successful and well-known is one of the factors that makes a trademark strong.

But, wow, who knew that a toy maker was the global epicenter of judicial corruption?

Sure, you're right. It's all rigged. You better get out of this business and find something else to do because it is obviously all stacked against you.
 
Last edited:
2
•••
So, Shopify's lawyers use as an argument that the word "shopify" was invented by the company.

So? It probably was. But it doesn't matter one way or the other.

And, like even some English speakers, you might have a wrong definition of the word "invented".

To invent something is to come up with an idea on your own.

That doesn't mean that no one has ever thought of it before. You'll notice that's why, for example, US patent law refers to the "first to invent" something. Because people independently invent things all of the time.

But it simply doesn't matter. You go find an English dictionary with "shopify" in it, and get back to us on that. Since you previously mentioned that you had a list of English words ending in -ify, go look at that. Is "shopify" on it? No? Well I guess that's your answer then.

Anyway, I did not want anyone who might be reading this thread to walk away with the notion that you had any idea what you are talking about, and then decide to go out and do dumb things. I believe that purpose is accomplished.

Carry on.
 
2
•••
The ICANN and all the Registries are responsible for this regs of trademarks, if there is a trademark then the Shopify and other marks should be reserved in all TLD's, ccTLD's and newGTLD's, then there will not be such situations, because the domains will be reserved for the trademark holder to use.
Why they not prevent it until today? Because it's profitable to take renewal money from domainers and then attack them with UDRP, so in the end domainers only lose money because of this, did the morons of Shopify at least pay for what Igor invested in renewals (?), of course not, no body cares.
 
2
•••
Why can't I use 'amazon.book' to publish a book about the Amazon rainforest or use 'apple.shop' if I'm not a producer of organic apples?

Well, technically you can do that. The common words in the dictionary cannot be monopolized by anyone in the general scope.

You can use goggle.io, but you cannot use google.io since it's an invented word.
It's same for the "shopify". Somebody came up with that brand name, trademarked it globally and now it's their intellectual property.

If things didn't work that way, no one would be able to protect their creativity, make a profit, and it would be easy for malicious people to defame the brand.
 
2
•••
2
•••
You should stop wasting your time on someone pretending to be ignorant who thinks they can make money the easy way.

He knows we know what he knows.
 
2
•••
  • The sidebar remains visible by scrolling at a speed relative to the page’s height.
Back