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?

 

[MKA]

Disclaimer: Always speak to a lawyer when it comes to legal matters, because they're the only one that can (and are obligated) to give you sound legal advice. So what I'm about to say should not be taken as legal advice.

Domains, by themselves, aren't protected by copyright. However that game is copyright protected (and maybe even trademarked), but as long as you registered the domain before they published the game (or filed the trademark) that should be an issue.

However, if you're interested in selling baby.io, this looks like a golden opportunity.

 

[pb]

as long as you registered the domain before they published the game (or filed the trademark) that should be an issue

The good news is that if they file for a trademark, you can contest it due to prior use of the name and/or ownership of the domain, and the application might be rejected. It will depend on jurisdiction, though. Not all TM offices exercise the same level of due diligence.

 

[bhartzer]

Not much you can do. Baby is ultimately a generic keyword.

Remember you can't TM a domain. Google goes after people for using "Google" TM IN the domain name, not "Google.com" itself. So unfortunately there is little you can do, especially because it's undeveloped and is generic.

"A mark comprised of a domain name may be registered as a trademark or service mark in the U.S. Patent and Trademark Office. However, just like any other mark, the domain name is registerable only if it functions to identify the particular source of goods or services offered. In other words, it must be distinctive so as to be capable of distinguishing your goods or services from those of others." https://www.americanbar.org/groups/business_law/safeselling/domains/
You actually CAN register the domain name as a trademark.

 

[Keith]

Thanks @jberryhill for all the insight!

This same scenario happened years ago with another .io that I own. After complaining to the app store they removed it.

As for domains qualifying as trademarks…yes they do and it’s a proven fact!

 

[WillW]

Seems pretty blatantly obvious. You could reach out to them and tell them you own the domain and ask them to take it down?

 

[Keith]

@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?

Exactly my thoughts

 

[WillW]

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.

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?

 

[NickB]

wonder if there has been any cases that have been filed where the domain has been taken when someone used part of the sub directory (right of the domain) as it was found to be confusingly similar or used in bad faith...Is it even possible to file a UDRP? Pretty sure you can't do it with sub domains (left of the domain) - If not, then you would have to take separate legal action to request they remove the page?

Or learn to live with it......

 

[MadAboutDomains]

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!

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.

 

[Keith]

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.

Thank you for the thought out response.

Booking.yeah is a gimmick, not a real asset.

I’m asking about real assets. Big difference…

 

[MadAboutDomains]

Thank you for the thought out response.

Booking.yeah is a gimmick, not a real asset.

I’m asking about real assets. Big difference…

No worries. I don't think they would see it that way, they are hinging their brand on that name at the moment. It is by definition intellectual property - a valuable asset.

 

[MadAboutDomains]

What is even more interesting is that if you dropped your domain, I would think that the owner of that app probably has more chance from a legal standpoint of getting it than anyone else... even you. They have a product with the name and you don't. I don't think there are any prizes or protections for just having owned a domain before, I might be wrong on that one though.

I'll stop opining now and let someone else have a go

 

[DomainNature]

I would like to know how to prevent anyone from creating products or services based on my names without trademark, because when trademarking you need to use it and build the products.
And to have the com is not enough they will find alternates to reg, I see many products developed but they not own the COM domain and it's still for sale.
Someone shared recently if not wrong some augmented-human,com dashed domain, they took the dash because the non dashed is expensive, that is what I mean, to prevent them from using just the names no matter of TLD or dash, it would be great protection.
Why I say this, this is because most websites have copy navy/silver colors from my tech website, recently I added rounded corners to all parts of my website header, container and footer, I see now on some top one word domains how they did same round corners, but the thing they are missing are the domains which is the 3rd missing piece that they not own, I want to make in such a way that before they found out the names which are currently to them junk, I want to make them pay me to be allowed to use in their *** of products my names, lazy grabbers they are.

 

[Leo2k]

As long as you are not using baby io as a brand or trademarked it, you can't report them or ask them to change their name.
But, as long as you are not running a game site on your domain, you are not infringing as well.
Just never mention anything about Game or develop anything related to game on that domain.

Baby io , is something related to babies and not games. So I don't think they can claim infringement on your domain anyway.

If you would like to be safer, how about building a dummy babies related site on it while you put the domain for sale? And, I believe you got the name first before they started the game.

 

[MadAboutDomains]

The good news is that if they file for a trademark, you can contest it due to prior use of the name and the application might be rejected.

But they haven't used the name in trade...?

 

[pb]

But they haven't used the name in trade...?

I edited the post before you repiled. But still, the domain has a for-sale lander which may also be archived by google and/or archive.org, that should be enough. In some cases just owning the domain may also be enough. Mind you - to contest the tm application, not to forbid them to use it as a name of the game.

 

[MKA]

The good news is that if they file for a trademark, you can contest it due to prior use of the name and/or ownership of the domain, and the application might be rejected. It will depend on jurisdiction, though. Not all TM offices exercise the same level of due diligence.

Wouldn't you need to run a similar business to do that? There are multiple trademarks for the same name across different industries. Either way, I don't think "just owning a domain" gives you much of leverage when it comes to legal battles.

Trademarks are registered in one or more specific classes of goods and services. Similar marks in different classes are usually not in conflict with each other, with one exception: similar marks for similar products which are sold in the same marketing channels may be in conflict even if they are registered in different classes. If two products could be sold in the same department of a department store, or advertised in the same registered in different classes, they may still conflict.

 

[Bob Hawkes]

I can see being really concerned with the presentation looking identical to the domain name, but I am not sure that one can probably do much about it unless the .io site was developed with a registered or use-implied trademark rights.

Does it reduce the value of the domain name, or increase it maybe, or have little impact? Not sure.

If one used it for parking, and an ad was presented directing to their game, would that be potential issues? Not sure.

It is an interesting case. Thanks for all the contributions and opinions, everyone.

-Bob

 

[DomainNature]

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.



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.

Thank you for your time and knowledge!
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?
Then the big corps if they try to create and trademark products or services based on this names they will have to face my book story and come to me the Author so I give them the right for licensing, in short they will have to pay me so they will be able to create or trademark products based on my book story.

 

[DealMaker1]

Not much you can do. Baby is ultimately a generic keyword.

Remember you can't TM a domain. Google goes after people for using "Google" TM IN the domain name, not "Google.com" itself. So unfortunately there is little you can do, especially because it's undeveloped and is generic.

 

[DomainNature]

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:

Can one trademark e.g. a naming marketplace be trademarked with it's 2 words combo domain so it covers the other names that it invented?
Or each phrase has to have it's own trademark registered and be in use right?
Maybe there are other ways to protect something that is not yet widely in use under one Umbrella?

 

[bhartzer]

I'm not a lawyer or a Trademark attorney, but I can tell you that there's such a thing as a "commonlaw trademark". My understanding is that if you've been doing business under that name and you're publicly known as, "baby.io" then you may be able to claim a commonlaw TM on the name. This is how we were able to win the UDRP on Patterns, as the business was doing business as that name for many years despite owning a tm on "patterns". So, you don't necessarily have to own the trademark on the name.

In the case of baby io, though, you already own the name and it would be difficult for the app dveloper wwith the same name to claim the domain is theirs, in my opinion. So let them do all the promo they want and get big--you as the domain owner will be benefiting from that.

 

[DealMaker1]

"A mark comprised of a domain name may be registered as a trademark or service mark in the U.S. Patent and Trademark Office. However, just like any other mark, the domain name is registerable only if it functions to identify the particular source of goods or services offered. In other words, it must be distinctive so as to be capable of distinguishing your goods or services from those of others." https://www.americanbar.org/groups/business_law/safeselling/domains/
You actually CAN register the domain name as a trademark.

This doesn't say a domain can be a trademark. It says "a mark that is comprised of a domain name" which is actually vague and quite meaningless and like most other laws, is open to interpretation.

The fact remains you can't TM a domain name because you actually can never own a domain name. You can just rent it. That would be like calling an apartment you rent "my". It actually isn't. It is owned by the landlord. So regardless how the American bar views it, "
.com" cannot be trademarked. Even if the patent office decides to allow it, there is obvious legal recourse for those who want to contest it. The WIPO process is about the trademark IN the domain, not the ".com" itself. So you register Google.vc for sh*ts and giggles, for example. Google sees this and files for a WIPO procedure. It's actually not the .VC they want you to stop using, but the "Google" they want you to stop using. Just so happens you registered "Google" in .VC so they are coming after Google.vc.

Cheers

 

[DealMaker1]

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...

Show attachment 230590

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...

Show attachment 230591

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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.

You can't TM .com. If google.com were to drop, you can register it, but "Google" is a trademark, legally trademarked. They can still wrestle that from you with little argument.