question What’s considered infringement?

[Keith]

Hi all -

I own Baby.io and see this type of nonsense https://krugames.net/game/baby-io/

To me it’s a black eye for my domain. Thoughts?

 

[pb]

I’d like intelligent responses please. @pb not sure what you’re trying to say…

I'm pointing out that there already is a game named XCOM. Not need to be rude.

 

[jberryhill]

I would like to know how to prevent anyone from creating products or services based on my names without trademark

No such animal. There is no mechanism for obtaining exclusive rights in a string of characters, like Columbus claiming the new world for Queen Isabella.

because when trademarking you need to use it and build the products.

By "trademarking", I assume you mean "registering a trademark in the US." But, that's the point.

A trademark isn't about establishing rights in some string of letters and symbols. It is about protecting the reputation and goodwill of someone who markets a product under a distinctive name, so that when consumers encounter that product so-marked in the marketplace, they have some idea of the quality of that product, whether it is the same thing that they've tried or seen before, etc..

When you look at this:

If you are an American beer drinker, and I asked you to choose from that selection, then it is highly likely that among "Budweiser", "Bud Light", "Stella Artois", "Heineken", "Miller Lite", and "Coors Light", you would have a definite idea of which of those you might pick, or whether you would keep looking for some shelves that look more like this:

...and you may have definite opinions about various of the brands there.

It can also depend on your beer drinking circumstances. If it's mid-summer and I'm having a cookout, then I'd probably grab some Corona or Red Stripe. I'm partial to Hoegaarden, but during Oktoberfest I tend to go for Paulaner, since that's the main beer on tap at my local German club party in the fall.

It's those sorts of associations... having Stella on tap in Belgium, or having associated various brands of beer with different beer drinking events, flavor preferences, etc., which are going to make me grab one or another of them if I am looking to pick up a six pack of beer. But I don't see any in that picture I haven't tried at one time or another.

That reputation based on association of consumer perception and the mark is the "goodwill" that has value to the producer and is what trademarks are about protecting.

Sure, "Corona" is a word that can be used for a lot of things, and the fact that it is a mark for beer does not prevent use of the word "corona" in such contexts as a coronavirus (so named because of the spiky "crown" appearance), astronomy or physics.

But there is not a mechanism for saying "this string of letters belongs to me and nobody else can use it" absent an awful lot of goodwill in a famous mark like, say, Coca-Cola, derived from massive global recognition by consumers.

 

[MadAboutDomains]

Your domain isn't developed so there's not a lot that they have infringed upon. No established trade, no goodwill, no recognition by anybody other than the few that may recognise it as a domain name. I don't think you could do anything about it.

Also the point about having a website called something.xyz, for instance, and someone going around using it, you'd have to have to have a presence of some kind to protect it. Established trade, people knowing you by a certain name PLUS reason to believe it would confuse consumers for your goods and services specifically.

 

[jberryhill]

What if i create a story like a fairy tale of a book and mention in this story all the possible combinations of this names of the future, then will copyright this story, will this work as a protection method?

In a word, no.

Copyright is the exclusive right to copy, display, perform, or make derivative works from an artistic or literary work. It does not protect short phrases, slogans, etc..

Despite the copyright in, say, Gone With the Wind or Star Wars, anyone is free to say "Frankly, my dear, I don't give a damn." or "Luke, I am your father." Likewise the title of a single literary or artistic work is not a trademark unless the title is used in connection with the marketing of related merchandise (think "Star Wars" action figures) or used in a series of such works ("Planet of the Apes").

	Trademark	Patent	Copyright
What's legally protected?	A word, phrase, design, or a combination that identifies your goods or services, distinguishes them from the goods or services of others, and indicates the source of your goods or services.	Technical inventions, such as chemical compositions like pharmaceutical drugs, mechanical processes like complex machinery, or machine designs that are new, unique, and usable in some type of industry.	Artistic, literary, or intellectually created works, such as novels, music, movies, software code, photographs, and paintings that are original and exist in a tangible medium, such as paper, canvas, film, or digital format.
What's an example?	Coca-Cola® for soft drinks	A new type of hybrid engine	Song lyrics to “Let It Go” from "Frozen"
What are the benefits of federal protection?	Protects the trademark from being registered by others without permission and helps you prevent others from using a trademark that is similar to yours with related goods or services.	Safeguards inventions and processes from other parties copying, making, using, or selling the invention without the inventor’s consent.	Protects your exclusive right to reproduce, distribute, and perform or display the created work, and prevents other people from copying or exploiting the creation without the copyright holder’s permission.

Probably one of the most all-time top recycled movie quotes:

 

[jberryhill]

Try it. See what happens.

I’ve tried it quite a few times.

Please look at this trademark registration. It is for a domain name. It is a standard character mark for Ticketstub.com.

Also, look at the attorney of record.

So, okay, I tried it. It worked. I’m impressed with the commitment it takes to maintain a position despite literally thousands of datapoints to the contrary.

 

[WillW]

@pb

If I own domain.com and someone starts a business called domain.com, there's nothing you can do from a legal standpoint without a tm?

 

[jberryhill]

The fact remains you can't TM a domain name

Sure you can.

This is why I keep driving at "what is a trademark". It doesn't matter if the mark is also a domain name, and it doesn't matter if you don't "own" a domain name. I'm pretty sure that Red Bull doesn't own any red bulls either, but that's beside the point of it being used as a mark on a beverage.

If you stick "whatever.whatever" on your product, and that serves to distinguish your product, then it's a trademark. It doesn't matter if it also functions as a domain name.

There are, of course, thousands of examples...

And, yes, many of these are character only marks which operate at the domain name in question. Just picking a few at random, out of more than 11,000 registered marks with ".com" in them...

It doesn't matter what the "ownership" status is.

If I rent a property at, say, 10 Main Street in my town, and I run a nightclub called "10 Main", I can certainly use "10 Main" as the trademark for my nightclub. It doesn't matter that I don't own the building. What I do own is the goodwill in my mark for those services.

In fact, I can default on my lease, move somewhere else, and still call my club "10 Main" if I want to.

Trademarks are trademarks. If something is used as a trademark, then it is a trademark. It doesn't matter what else it might happen to be.

 

[pb]

Imagine if you own one of few 1 letter .com like x.com. Can I promote my online game as x.com? No fucking way!

*cough* XCOM *cough*

 

[pb]

I trhink we're talking about different things. You can contest a pending TM application on many grounds, and proving someone registers a trademark matching your domain name in bad faith (such as - to try to use it in a domain dispute) is one of them. It gets harder after the TM is approved, because institutions hate to be proved wrong. Again, may differ by jurisdictions and of course specific cases.

And again, I'm not a domain lawyer, but I know a thing or two about TM disputes. As always, get a legal counsel for best results.

 

[jberryhill]

You're talking apples and oranges.

Domain names can be trademarks. I just showed you how you can find 11,000 examples of that.

In a domain name dispute, which is a different context from seeking registration of a mark, then the first element is whether the accused domain name is "identical or confusingly similar to" the mark. For the purposes of a UDRP, the TLD is typically ignored, so that the mark "example" is deemed identical to the domain name "example.tld".

But that has nothing to do with whether domain names can be trademarks.

Beyond that, I really don't understand what you are trying to say. Domain names can function and are used as trademarks every day. That was one of the points in the entire "Booking.com" case decided last year by the US Supreme Court. Yes, they established that "Booking.com" was a distinctive mark for their services and which had acquired secondary meaning through longstanding notorious and exclusive use.

 

[jberryhill]

Well, for that matter, no one permanently owns anything. Eventually we all die and own nothing.

But so what? Trademark registrations are also not permanent and also require periodic maintenance fees to keep them in force as well. The initial term of a US trademark registration is six years, and further payments are due at ten year intervals. If the mark is not used for three years, it is presumed abandoned.

They can also be revoked for various reasons too.

So, if you are saying that domain names can’t be trademarks because they can be revoked and require periodic payments, I have some news for you about trademarks.

 

[jberryhill]

Thoughts?

I wouldn't get excited about it. You'll notice that the publisher is "Barreye.Lab" and that's not a domain name either. So, maybe someone there just has a habit of making things look like filenames.

Speaking of filenames, if we were doing it over again, we never would have used ".com" in the first place.

As many may recall, before the domain name system took off, ".com" was widely used as a file extension for executable files in DOS. What was really frustrating early on in domain work was that when filename conventions became more relaxed people would use ".com" within filenames for things like UDRP decisions. It took the ADRForum quite a long time to understand that if they emailed a file like "Decision-Foo.com-final.doc" then a lot of email systems would see a file attachment with ".com" in it, assume it was a malicious executable file, and trash the email as likely containing a virus.

So, maybe they just named the baby "IO" and like to use dots as punctuation, such as in their publisher name which is also clearly not intended as a domain name reference.

 

[pb]

There are many "io games" that don't own the corresponding domain.
Did you notice increased traffic to your domain because of this game?
I'm not sure if I would worry about it much. You probably don't have any leverage unless you registered a TM for this name.

 

[pb]

If I own domain.com and someone starts a business called domain.com, there's nothing you can do from a legal standpoint without a tm?

Well can you? I don't know, I am not a lawyer. You have a line of defense in case they want to hijack your domain but can you prevent them from using this name just because you own a domain? I wouldn't be so sure. [side note, I actually encountered a few companies named something.net where they didn't own the corresponding domain. I don't recall .com examples though]

Here the case is even lighter, it's not a business name, just a silly game. I own IdleVillage.com, can I prevent someone from naming their game IdleVillage.com? On what grounds? Again, I'm asking, not stating.

[edit] Another example, I own many .pl domains - there are many perl scripts named similarly to my domains - should I go after them?

[edit2] ok, there's a 30-year-old company named TRADER.COM who never owned this domain.

 

[Matty W.]

Let's start off with the raw facts. Infringement requires someone to use a whole or substantial part of your work without permission. A trademark cannot branch a singular word under infinite protection and works in a system of classes.

Is a law being broken? Most likely not. The website you are talking about does not replicate any of your work, and simply uses a common noun along with a fairly common suffix (typically associated with such games after the trend set by agar.io). To have a case, you would need to prove that the individual may be harming your business interest.

My advice is to contact the owner and ask politely. I doubt it will affect your domain much at all, but I certainly understand why it may be frustrating to some degree.

*Notice: I am not a legal professional. Don't take what I said as fact as it is all solely an opinion-based discussion.

 

[Matty W.]

As someone with popular websites this happens all the time... People using the exact name as an app name, having entire pages that are dedicated to "reviewing" your content. The reality is that if the op created something worth visiting on his domain that this particular issue would fade into insignificance. One can't expect to be the only thing that comes up on Google for their respective name/domain. Having the domain is security enough generally in this case.

My reply was directed purely at the OP and a per-case review. I'm sure that it is possible for it to cause issues, even if they're not necessarily direct. From what I understood of the original post, the author was simply asking whether the website infringes on the domain which it does not as there is no business surrounding the domain, and therefore there is nothing that the website even has the potential of infringing.

 

[Keith]

Your domain isn't developed so there's not a lot that they have infringed upon. No established trade, no goodwill, no recognition by anybody other than the few that may recognise it as a domain name. I don't think you could do anything about it.

Also the point about having a website called something.xyz, for instance, and someone going around using it, you'd have to have to have a presence of some kind to protect it. Established trade, people knowing you by a certain name PLUS reason to believe it would confuse consumers for your goods and services specifically.

Imagine if you own one of few 1 letter .com like x.com. Can I promote my online game as x.com? No fucking way!

 

[Keith]

I would argue to the contrary...

If they have a trademark on it and trade with it then they are afforded protection for their mark in the territories that they trade in for their goods and services. The protection can be pretty broad, but not so that you can't call yourself x.com sausages and run x.comsausages.com to sell sausages.

Unfortunately the big issue right now I believe is that you haven't used the name and that's the biggest source of vulnerability. If you sort that then you'll be golden, it's not too late.

Can you see how it could hinder or hurt the value of the domain holder?

By your logic, I can use any unused .com to promote my brand. Maybe buy.com isn’t currently used. So as you say, I can develop a game called buy.com.

Do you understand how dangerous and wrong that is?!

 

[AEProgram]

Just hope they become very popular and they buy your name

 

[jberryhill]

...and the reason for the nightclub example is that one of the most famous nightclubs of the disco era was Studio 54 in New York.

It was a rented production studio on 54th street, hence the name.

https://en.wikipedia.org/wiki/Studio_54

And, indeed, a franchise was opened in Las Vegas, also called "Studio 54" and nowhere near any 54th street:

https://en.wikipedia.org/wiki/Studio_54_(Las_Vegas)

 

[jberryhill]

Lol. Yes, they’ve heard of Stubhub and were one of Stubhub’s leading affiliate sites for quite a number of years. Stubhub has done quite a lot of business with them.

http://businessinterviews.com/entrepreneur-ira-zoot-founder-of-ticketstub-com/

His bigger problem has been with search traffic:

https://www.billhartzer.com/search-engines/interview-with-a-small-business-owner-crushed-by-google/

 

[DNWon]

I’m impressed with the commitment it takes to maintain a position despite literally thousands of datapoints to the contrary.

 

[MadAboutDomains]

There are a lot of online games that use the .io extension so wouldn't that be grounds for consumer confusion especially if you're trade is selling .io domain names...or would that not be a strong enough stand alone argument?

I sincerely doubt it

 

[MadAboutDomains]

I doubt it will affect your domain much at all

As someone with popular websites this happens all the time... People using the exact name as an app name, having entire pages that are dedicated to "reviewing" your content. The reality is that if the op created something worth visiting on his domain that this particular issue would fade into insignificance. One can't expect to be the only thing that comes up on Google for their respective name/domain. Having the domain is security enough generally in this case.

 

[MadAboutDomains]

Can you see how it could hinder or hurt the value of the domain holder?

By your logic, I can use any unused .com to promote my brand. Maybe buy.com isn’t currently used, so as you say, I can develop a game called buy.com.

Do you understand how dangerous and wrong that is?!

It's not unheard of for entities to register "something.com" as a trademark to protect it and hold it to ransom before they or anyone else owns it. So someone using a name just cause it could be a domain name or the other way around is acceptable and comes down to how the names is used for trade. That is where the protection is derived from, the trade.

One interesting example could be Booking.com that are parading around as the brand "booking.yeah" at the moment. The difference being that that domain doesn't even exist yet, it could be confused as one and it may well exist one day. However they are similar in that they have a trademark for "booking.yeah" for hotels - but someone else may want to use the name "booking.yeah" for a book shop or something else - but should that situation arise, should booking.com be stripped of their goodwill in the phrase "booking.yeah" so that the bookshop owner can use the domain when they snag it, or is it more realistic to assume that both the bookshop and the hotel booking website can coexist? I would plump for coexistence.

Things aren't cut and dry, there are many nuances and the system is designed to allow companies with the same name to coexist, so I'm not sure that a domain ame gets special dispensation just cause it COULD be a domain name. One can't be afforded protection until they trade under a name, but once they do then I would argue that their protection extends only to what they trade (and similar goods/services in the territory in which they trade).

That's my take anyway imho.