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.

 

[Mize]

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."

 

[antonio72]

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.

I find this definition to be comprehensive and sensible. If I were a judge, I would ask the brands who initiate legal actions whether the domain they are claiming was fraudulently obtained... or it could be registered by anyone at 1$ promo price after floating months or years in the public domain... This article explains why brands cannot prevent Registrars from selling domain names... In my opinion, their legal departments' aggressiveness continues to compensate for the shortcomings of their own employees.

 

[Altetra]

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.

 

[antonio72]

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,

They can't do it because for every popular keyword... there will be dozens, if not hundreds, of legally registered companies around the world using that same keyword. The aggressive behavior of large brands is almost always unjustified and an abuse of power. 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? If they are interested in a domain name that their employees haven't seen floating around the internet for months or years... they should simply buy it from the person who registered it. Many companies don't have marketing and legal departments, and purchasing an interesting domain name for their brand, registered by an external consultant who understands the value of a domain name, is definitely more cost-effective than hiring a full-time employee to handle that alone

 

[Mize]

something interesting about "ify" to get a little better understanding

https://www.grammarly.com/blog/the-basics-of-verbing-nouns/

"If you can’t find an existing verb to describe what you’re doing, just verbify the nearest noun!"

"It can be argued that the time it takes to verbify a noun is becoming shorter, which causes some people to protest."

and a bit on "ify" companies:

https://www.geekwire.com/2013/ify-naming-fad-spotify-start/

"The ‘ify’ naming fad: Did Spotify start it?"

 

[Future Sensors]

shopify.ai.             86400   IN      NS      ns1.markmonitor.com.
shopify.ai.             86400   IN      NS      ns2.markmonitor.com.
shopify.ai.             86400   IN      NS      ns3.markmonitor.com.
shopify.ai.             86400   IN      NS      ns4.markmonitor.com.
shopify.ai.             86400   IN      NS      ns5.markmonitor.com.

 

[Future Sensors]

This is the outcome. Thanks everyone for the discussion.

 

[Igor Gabrielan]

udrpify.com​

bribenify.com​

Names not taken

 

[kor]

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.

 

[Igor Gabrielan]

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.

 

[Igor Gabrielan]

Dear All,

We understand that the domain has been successfully transferred to Shopify Inc.

We thank you for your cooperation in efficiently resolving this matter.

We look forward to working with you again in the future.



Please let us know if you have any questions or feedback.

We will proceed to close file xxxxx-UDRP.

Canadian International Internet Dispute Resolution Centre

 

[tonyk2000]

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

 

[Igor Gabrielan]

I also found it funny. Obviously, the lawyer of the complainant and the administrator of the registrar from Anguilla are meant, since this letter is sent to everyone at once.

 

[Future Sensors]

I also found it funny. Obviously, the lawyer of the complainant and the administrator of the registrar from Anguilla are meant, since this letter is sent to everyone at once.

Well, you are also thanked. They have collected their non-refundable fee and do not have to do anything now.

 

[jberryhill]

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.

 

[Igor Gabrielan]

Apparently, he likes peacefully jumping kangaroos more than predatory lawyers.

 

[jberryhill]

Apparently, he likes peacefully jumping kangaroos more than predatory lawyers.

No, he wants to kill people. He has a couple of operating websites which also are used to communicate death threats.

https://www.dailytelegraph.com.au/t...k/news-story/bec313b5330a17cf242124f43547b13c

A TOWNSVILLE man is behind bars for allegedly threatening to kill Prime Minister Julia Gillard on Facebook for implementing a ban on live exports.

Jeffrey Charles Geaney, 38, appeared briefly at Townsville Magistrates Court yesterday on three charges of using a carriage service to threaten to kill, which each carry a maximum penalty of 10 years' jail.

The Townsville Bulletin reports in bail objection papers handed to Magistrate Peter Smid, Commonwealth prosecutor Aaron Guilfoyle said Mr Geaney's offending started after he wrote on Ms Gillard's Facebook page on Wednesday he was going to shoot her.

"I am going to shoot Julia Gillard with .223 calibre rifle over this (live exports) fiasco ... now who wants to donate me the bullet ..." one post read.

The papers showed Mr Geaney then allegedly called Ms Gillard's electoral office and repeated the same threat.

It was then claimed he called the Australian Federal Police operations command centre and informed them of his plan.

 

[Future Sensors]

No, he wants to kill people. He has a couple of operating websites which also are used to communicate death threats.

This is a major plot twist, attorney.

 

[Igor Gabrielan]

Can there be complaints about the domain names of three characters?
Intuitively, I don't.

 

[Altetra]

Lucky me today I dropcatch a domain from Markmonitor with dead Trademark.