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Trademark Infringement Notice (Help Required) NonTrademark name

Labeled as trademark in Legal Discussion started by Yousaf Saeed, Dec 19, 2018.

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  1. Yousaf Saeed

    Yousaf Saeed Established Member

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    Hi,

    I registered a name few days ago after RUNNING Trademark search and found no record against "JournalImpactFactors.com' name and registered it.

    Two days later, i received Trademark Infringement Notice as shown below from so called trademark owners.
    Can anyone here please help me check if they are trademark owners of this name or not?

    Copy of the email:
    [​IMG]
    What should i do now? Shall i give up on this name? Or any other opinions
     
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  2. gilescoley

    gilescoley Top Member PRO VIP ★★★★★★★★★★

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    Just ask them to send through proof of the trademark on "Journal Impact Factor".

    I cant see any TM for this term, but I'm no expert in this either. If they can provide the proof, then just hand over the domain.
     
  3. offthehandle

    offthehandle . Gold Account VIP

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  4. Yousaf Saeed

    Yousaf Saeed Established Member

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    Thanks for your research on them :)
    I like to expand it to get more knowledge out of it.

    They registered the non-plural domain name but by registering a domain name does not mean that they also hold the trademark for that particular name?

    I mean i am still unable to find a trademark on the names: JournalImpactFactor or JournalImpactFactors

    Looking forward to get more knowledge :)
     
  5. Domains - Wanted

    Domains - Wanted Top Member VIP

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    Take a deep breath, do some relaxation exercises if you need to in order to calm yourself down, and then... ignore the email and go about your business :xf.wink::xf.smile:

    Why the heck would you want to borrow trouble and open any dialogue here? Are you a lawyer, or knowledgeable about IP infringement and want to debate the merits of their case? Obviously not. Do you want to take this opportunity to offer the name for sale to them? I don't think so. Have they offered anything of value or interest to you? Not really. Then why waste any time with them?

    Registering a domain matching a trademarked name is not punishable by death or even life imprisonment. In fact, it's not illegal at all. Nor are you obliged to part with the domain, you'd paid your hard earned money to register. I know it's almost Christmas and you might be in a holiday, giving frame of mind, but if I were you, I'd hold on to the domain anyway. It's obviously valuable to somebody. Who knows, maybe they will follow up one day with a more reasonable proposal, like how much to buy the name! :sneaky:

    And in the meantime, so long as you do not make use of the domain in any manner infringing on their trademark(s), you're in the clear.
     
    Last edited: Dec 19, 2018
  6. Asfas1000

    Asfas1000 Top Member VIP

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  7. cabotower

    cabotower Established Member

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    search for the trademark at tmdn.org you might want to call godaddy tell them you want a refund and be done with it
     
  8. .X.

    .X. NameFeature.com Gold Account VIP ★★★★★★★★★★

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    I can not find the term infringement, I have searched the TM databases I know, This may be one for @jberryhill

    The f*cking smartasses put " As you are aware" like they have any way of knowing that you are aware.
     
    Last edited: Dec 19, 2018
  9. carob

    carob Top Member VIP ★★★★★★★★★★

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    Could be an automated process, or a bluff, or a mistake.

    https://clarivate.com/essays/history-journal-impact-factor/

    Do they sell any product by that name?

    They say there they had a product called ISI but changed the name. Yes, the plural of that would not sell.
     
    Last edited: Dec 19, 2018
  10. ecomslice

    ecomslice Established Member

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  11. Yousaf Saeed

    Yousaf Saeed Established Member

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    Thanks for your comment. Actually, my plan was to develop a fully fledged website on this domain name that provides rankings and statistics of Scientific Journals (Total 10,000+ journals). Journal Impact Factor is a famous keyword which have its own definition in wikipedia as well :

    https://en.wikipedia.org/wiki/Impact_factor

    My worries are: What is i ignore this email today and invest let say $4000-$6000 on this project and develop a website and later after six months or a year, they come up again and snatch my business legally from me?

    As of legally, what do you think "Journal Impact Factor" or "Journal Impact Factors" by any means trademark of them? And these guys are billionaires, and i might not be able to hire expensive lawyers to fight with them if something happens in the future.

    This is not a trademark, this is a publication. And for example, if i conduct a research study/survey/write conference paper on a certain topic/keyword then it does not become my Trademark, right?

    Secondly, [IMPORTANT ONE] they offer a service Journal Citation Report which they i think are referring to here and want my domain. What i think is Journal Impact Factors as name is not trademarked by anyone yet. And i understand that i must not use this name to create a similar product or service which they offer, is that correct by law?
    But, another guy created a website which takes journals stats data from Clarivate Analytics (formerly ISI) reports and use it on their website to show stats of journals and also provides a review system to review each of their affiliated journal. (URL given below)

    Url: http://www.letpub.com.cn/index.php?page=journalapp&view=search

    Why they are still up? I mean this is also providing Journals Stats/data. And they are up and running..
    My plan was to develop a better platform on this Journal Impact Factors domain, but am i going to lose my website/work/domain in the future?

    What percentage of risk is there?
    Answers highly appreciated.
     
  12. carob

    carob Top Member VIP ★★★★★★★★★★

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    They only want the domain. You would keep the website and contents even if you did not keep the domain. If you were worried about the domain, you could register an alternative one as a fallback just in case - why not do that now? You can put whois privacy on the domain.

    Most places to have a trademark you have to register it. But in the USA you can establish a trademark by using a term in commerce, but you have to be able to show you used the term in commerce, which probably means selling a product under that name. So if they have not sold a product with that name in the USA, or have not registered a trademark, then they really should have no legitimate claim to the domain.

    So as someone already said, it would make sense to ask them to prove they have a trademark.
     
    Last edited: Dec 19, 2018
  13. Recons.Com

    Recons.Com Top Member VIP

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    It seems Clarivate has coined the term "journal impact factor" and it is a widely used and known metrics that they keep for ranking journals.

    I'd say they have strong enough case.
     
  14. domaineed

    domaineed Established Member

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    upload_2018-12-19_15-16-23.png

    They also own trade/mark/*com and compu/mark/*com and seem to provide trademark research and protection services since the 'Journal Impact Factor' was first created in 1960s. http://garfield.library.upenn.edu/papers/jifchicago2005.pdf

    A list of registered trademarks on Clarivate website: https://clarivate.com/legal/trademark-notice/

    Link to trademark registration: https://tmdb.eu/trademark/EU-014510283-impact-factor.html

    I think this 'Impact Factor' mark is for 'Journal Impact Factor' as they claim, since application for 'Researcher Impact Factor' has been filed by another org.

    I think they would also be able to provide more info if required. Thanks.
     
    Last edited: Dec 19, 2018
  15. Yousaf Saeed

    Yousaf Saeed Established Member

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    Thanks for your detailed answer. I have requested more information from them. once i get it, i will share it here. "Impact Factor" is a trademark and there are many organizations that registered their trademarks with variational keywords to this such as (keyword+ Impact Factor).

    Waiting for their next email.
     
  16. carob

    carob Top Member VIP ★★★★★★★★★★

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    Game, set, match.

    A trademark does not have to be an exact match, just "confusingly similar". So typo domains are covered too, for example.

    I think you can still ask Godaddy for a refund today. After seeing that I would, not worth spending time on this.
     
  17. domaineed

    domaineed Established Member

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    Yes, they have a really strong case as Impact Factor and Journal Impact Factor have been used synonymously for decades. Wikipedia entry also says: "The impact factor (IF) or journal impact factor (JIF) of an academic journal... ". IMO.
     
  18. Domains - Wanted

    Domains - Wanted Top Member VIP

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    Which goes to my point: it's a valuable domain, hold on to it! :sneaky:
    This is a valid concern. Ignore their email. Hold on to this domain... but find another domain to use for your project :xf.smile:
     
    Last edited: Dec 19, 2018
  19. offthehandle

    offthehandle . Gold Account VIP

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    Take a closer Look at the Justia link I provided. Thomson Reuters is in the brand protection business and have teams of lawyers and has a family of brand protection websites and have a suite of tm registrations / websites like brandjacking, markmonitor, serion, making the internet safe for business, early warning system, identity tracker, etc.

    Don’t be stubborn, Do you really want to waste your time fighting them? Why even try and compete in this field?

    Sure you can fight it, you can write a check and some lawyer will defend it, but picking your battles is more important. If you truly want to do a journal review website, make it original in scope and design and pick a completely different unrelated domain name and make sure you don’t copy, or scrape someone elses data and content. Good luck.
     
  20. xynames

    xynames XYNames.com PRO VIP

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    I don’t see any intrinsic great value to such a long domain name anyway. If a different lawyer who has nothing better to do wants to advise you here for free over a no to low value domain name that would be nice for you, but short of that happening I’d either ignore the notice until such time as action is taken against you or give up the domain name now would not fight over it at any point.

    A lot of lawyers will get caught up in the legal intricacies of a matter but since most have no head for business they’ll lose sight of the business decision that must be considered first: the business decision here being that this asset this domain isn’t worth much to begin with.
     
    Last edited: Dec 19, 2018
  21. Yousaf Saeed

    Yousaf Saeed Established Member

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    Competing with them by introducing a new review based product which will be unique make sense to be legally on the safe side? Some of the journal's data is a free source which can be scrapped and a great of of sites are doing so by crediting a link back to the issuers. But adding up a unique review system will be a new thing.


    As far as the value of this domain is concerned, you might be unaware of the business this name can roll in. There are over 10,000 Scientific journals that publish research conducted by millions of students and researchers globally. And if you go to sciencedirect and try to download a single research paper then you will see how much you have to pay for just one download. Adding up, students/researchers somewhere between $1500 to $12000 for single publication which clearly shows its potential. Only scientists or the people aware of this thing could actually know the worth of such a domain.
     
  22. offthehandle

    offthehandle . Gold Account VIP

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  23. xynames

    xynames XYNames.com PRO VIP

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    The business that may be rolled in is based on this topic or subject matter, not this particular domain name, which is long and unwieldy. By your theory, ebay would be just as well hosted on EchoBayTechnologyGroup.com

    Your own example of sciencedirect dot com gainsays your hypothesis. It's sciencedirect not sciencedirectresearchpapers.com
     
    Last edited: Dec 19, 2018
  24. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. VIP ★★★★★★★★★★

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    It's a generic term for the measurement of the "influence" of a scientific journal, as noted in the Wikipedia definition.

    Their claim to numerous federal trademark registrations is a lie, which is kind of amusing given that it comes from the parent company of Markmonitor, who is supposed to have expertise in these things.

    They filed a perfunctory registration in India in January 2018:

    JOURNAL IMPACT FACTOR
    (210)/(260)Application number 3729522
    (270)Application language en
    (220)Application date 2018-01-17
    Trade mark office India - CGDPTM
    (250)Filing place Delhi
    (190)Registration office IN
    (111)Registration number 3729522
    (151)Registration date 2018-01-17
    (141)Expiry date 2028-01-17
    Kind of IPR Trade mark
    Series of 0
    (550)Trade mark type Word
    (551)Kind of mark Individual
    (511)Nice classification 35,42
    Current trade mark status Registered
     
  25. offthehandle

    offthehandle . Gold Account VIP

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    Hi John, thanks for the post.
    Hypothetical: if OP paid you to defend it, would you? Isn’t it sitting as a UDRP candidate as it stands now?
     

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