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.

 

[Igor Gabrielan]

This name would be 100% likely to be registered even if Shopify company never existed since the word is formed according to the rules of the English language from a very common root "shop" and a standard suffix "ify". Billions of people and thousands of domainers have never heard of the existence of a Canadian Shopify company. These people and domainers do not have a legal obligation to search for companies around the world in order to exercise their right to register a domain name. I have never offered Shopify company or anyone else to buy this domain name.
I cannot even now determine whether Shopify company operates, whether it has registered trademarks in my country (Ukraine), and in the country of registration of the domain name (Anguilla).

 

[Igor Gabrielan]

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, neither the merchants for whom this company seems to work nor even the buyers. Why do they think that I should have heard of them?

 

[Igor Gabrielan]

Why can't I register a domain name in Anguilla while in Ukraine if there is a company with a similar name somewhere in Canada?

 

[frank-germany]

why would you even bother a lawyer
with that thread ?

it is as stupid as stupid can be

 

[Igor Gabrielan]

The lawyers were only concerned about the company Shopify.
Apparently, they do not consider this problem simple, since they decided to hire lawyers for the dispute.

 

[Igor Gabrielan]

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?

 

[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

 

[Mize]

For domains in general, you have to stay out of the lane of the trademark holder.
If you are not in their lane, they should not prevent you from driving.
BUT, you choose your battles.

 

[Igor Gabrielan]

For domains in general, you have to stay out of the lane of the trademark holder.
If you are not in their lane, they should not prevent you from driving.
BUT, you choose your battles.

But there is no legal obligation for a domainer to check if there are registered trademarks similar to his domain.

 

[Mize]

Check for trademarks. Don't use the domain in a way that infringes on trademarks. If making soup is not part of the trademark, then make soup.

 

[Igor Gabrielan]

Check for trademarks. Don't use the domain in a way that infringes on trademarks. If making soup is not part of the trademark, then make soup.

This is impossible. There are a huge number of brands in the world. Then it would be impossible for us to register domain names at all. For example, I may well register "Metaverse" trademark for confectionery products in Ukraine. And what, it will be impossible to register domain names with the word "metaverse"? And domain names with the word "meta" also cannot be registered because of Meta Platforms? And Meta Platforms is somehow more famous than Shopify.

 

[Mize]

It's not impossible...its easy and what you have to do. You just have to understand and learn how.
If there is a trademark for "Metaverse" for confectionery products then you cannot use Metaverse for confectionery products.... you would have to use it for something else....to prevent infringement.

 

[Igor Gabrielan]

It's not impossible...its easy and what you have to do. You just have to understand and learn how.
If there is a trademark for "Metaverse" for confectionery products then you cannot use Metaverse for confectionery products.... you would have to use it for something else....to prevent infringement.

Can I register "Shopify" trademark for confectionery products in Ukraine?

 

[Mize]

A trademark generally distinguishes the source of the goods of one party from those of another.

for names in general, if there are no trademarks for that name for confectionery products/ and its not a confusingly similar name or business, then likely yes. You would have to look into what Ukraine requires in terms of trademarks. For the US : https://www.uspto.gov/trademarks/basics/application-requirements

 

[Igor Gabrielan]

A trademark generally distinguishes the source of the goods of one party from those of another.

for names in general, if there are no trademarks for that name for confectionery products/ and its not a confusingly similar name or business, then likely yes. You would have to look into what Ukraine requires in terms of trademarks. For the US : https://www.uspto.gov/trademarks/basics/application-requirements

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.

 

[Mize]

you will have to check your requirements for Ukraine. For the United States, you can go here, https://www.uspto.gov/trademarks/search click on basic word mark, type in Shopify for the search term, then go through the trademarks and see if their Goods and Services are confusingly similar to confectionary products. I did not look at all of them but I did not see confectionary products listed.

From the earlier USPTO link:
"Search for a trademark that’s confusingly similar to yours
Complete a comprehensive search to make sure that someone else hasn’t already registered or applied for a trademark that’s the same as or too similar to yours using our Trademark Electronic Search System (TESS). If someone else already has done so, we may refuse your application because of a likelihood of confusion between your trademark and the other trademark. It’s your decision whether or not to file your application after conducting a search."

That will help you for the future.
The point here is why did you register shopify.ai
You don't need to answer that for me....but that is the point.

 

[Igor Gabrielan]

вам доведеться перевірити свої вимоги до України. Для Сполучених Штатів ви можете перейти сюди, https://www.uspto.gov/trademarks/search клацнути основну словесну марку, ввести пошуковий термін у Shopify, потім переглянути торгові марки та перевірити, чи їхні товари та послуги до плутанини схожі на кондитерські вироби. Я не всі дивилася, але кондитерських виробів у списку не бачила.

З попереднього посилання USPTO:
«Шукайте торговельну марку, схожу на вашу до плутанини
Виконайте комплексний пошук, щоб переконатися, що хтось ще не зареєстрував або не подав заявку на торговельну марку, яка є такою ж або надто схожою на вашу, використовуючи нашу систему електронного пошуку торгових марок (TESS). Якщо це вже зробив хтось інший, ми можемо відхилити вашу заявку через ймовірність плутанини між вашою торговою маркою та іншою торговою маркою. Ви самі вирішуєте, подавати заяву чи ні після проведення обшуку».

Це допоможе вам у майбутньому.
Справа в тому, чому ви зареєстрували shopify.ai
Вам не потрібно мені на це відповідати... але в цьому суть.

That is, when registering a domain name, I have reason to hope that I will register a trademark of the same name because there is no absolute prohibition.

 

[Mize]

Now, why this is interesting to me:
When I go to shopify.com, I would expect to see a marketplace something similar to Amazon, but that is not what I get.
When I go to bookify.com, I would expect to see books for sale, but that is not what I get.

I assume most domain investors invest in domains that hopefully many people see value in.
Before someone buys a domain, you don't know who will buy the domain, you don't know what they will use the domain for nor how much they are willing to pay for the domain.

Whomever has the domain, they have to make sure they are not infringing on others' trademarks.

This may be opening up a can of worms, but, from my perspective, anyone who is trying to obtain a domain through UDRP or similar process, needs to answer this question:

For domains in general:
Assuming the trademark has not be intentionally infringed upon:
If the complainant never existed, is it reasonable to believe that the domain has value to at least one other party?

If the answer to that question is yes, then the complainant is in line for a desirable domain (trademark is irrelevant if not being infringed upon).

Furthermore, if the complainant answers "yes" and continues the UDRP/similar process it would seem to be attempted theft.

If the complainant answers "no" there would seem to be a denial of reality.
If the complainant does not answer, they are not willing to commit to yes or no and the process should not proceed.

----------------------
Another question that could be asked is: Does the complainant believe that the part of the domain left of the dot can be trademarked for something other than what the complainant has their trademark for?

Again, if their answer is "yes" and their trademark has not been intentionally infringed upon, then it would seem they are attempting theft.

-------
edit: For: (If the complainant answers "no" there would seem to be a denial of reality.)
I should have mentioned that there could be a situation in which it would not be a denial of reality.

 

[Igor Gabrielan]

Situation: you came up with a beautiful domain name and quickly registered it so that others would not register it.
Then you discover that there is a company in Mongolia that has a trademark with that name.
What are you going to do?

 

[Mize]

>What are you going to do?
Not use the domain in a way that would infringe on the trademark.

 

[Igor Gabrielan]

>What are you going to do?
Not use the domain in a way that would infringe on the trademark.

I don't seem to be using the domain name to harm the company Shopify, nor do I interfere with their trademark.

 

[Mize]

If true, that is why it is interesting.

 

[NameInbox]

@Igor Gabrielan

​

You may check this​

https://www.superlawyers.com/resour...n-i-sue-if-my-brand-is-used-in-a-domain-name/​

Less than year ago shopify won dispute on
shopifydevelopment .com
https://ciidrc.org/wp-content/uploads/2022/04/2022-04-29-shopifydevelopment.com-decision-final-3.pdf

p.s. Igor, I see You have alot of .AI domains nice, but also brands .AI domains, not nice, hh
Are You here in UA now? In case of lawsuit use Окружний адміністративний суду Києва

 

[Mize]

>but also brands .AI domains, not nice

big problem there....that would show intent...or at least lack of understanding

 

[tonyk2000]

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?