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?

 

[DealMaker1]

Because ANY domain can be dropped at any time, you have no recourse to owning the .com or whatever extension. WIPO doesn't allow this. They are an impartial entity that only looks if TM rights, for names, have been infringed upon.

 

[DealMaker1]

Imagine if you have a domain, baby.io, for example. WIPO doesn't give a toot about .io. It only cares whether there is infringement on "baby", nothing more.

You can't really infringe on "baby" so this is a different discussion altogether.

 

[DealMaker1]

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.

Fact remains, no domain is trademark-able. The assumption is .coms are part of the registry. You can't TM them. You can TM the components of the domain, like "Google" but NOT the domain itself.

Try it. See what happens.

 

[DealMaker1]

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.

Well, here is the point. Every extension is overseen by the mother-ship. They are making money from every registration, .com, .VC, .lc, dot whatever. It is a government institute. They control it via certified organization. They don't care about any weird attachment you may have to a domain.

So there is no dispute. Their procedure tries to be non-partial. But from personal experience, it has shown me they are only interested in whether you have violated a TM, nothing else. They are in control of every extension, dont mistake that for fantasy.

 

[bhartzer]

Fact remains, no domain is trademark-able. The assumption is .coms are part of the registry. You can't TM them. You can TM the components of the domain, like "Google" but NOT the domain itself.

Try it. See what happens.

We already have examples, 11,000 domain names that have received a valid TM from the USPTO, provided by @jberryhill . So what you're saying is that those 11,000 domain names are NOT trademarks, and the USPTO was incorrect in granting them?

 

[DealMaker1]

Yes. That is exactly what I'm saying. Try and see what happens. There is a conflict between the official government registry and what domainers THINK is possible. If you can possibly make a domain a certified, patented entity, all the power to you. But when a domain like google.com drops, don't think for a second it is yours. It isn't. They have very strong trademark rights, and you will only be wasting your time. This goes for all TMS.

 

[DealMaker1]

We already have examples, 11,000 domain names that have received a valid TM from the USPTO, provided by @jberryhill . So what you're saying is that those 11,000 domain names are NOT trademarks, and the USPTO was incorrect in granting them?

Yes. This what I'm saying. The registry OWNS these domains. Whether it is 11000 or 1000000. You are only a renter.

 

[Sam1234]

I believe the textbook definition of infringment is "whatever the judge handling the case decides is infringement", so there's plenty of room for stupidity, bribery, and bias. But I don't think it's infringement unless you built your brand first in any case. This is not legal advice and I am not qualified to give legal advice.

 

[Sam1234]

That company sure seems pretty shady though. Check out this game called "Pocket Monster Run" for which the main character looks an awful lot like Ash from Pokemon. Pokemon is short for "Pocket Monsters" and in some regions there is a Pokemon game called Pocket Monsters.

https://krugames.net/game/pocket-monster-run/

The developer is called "Upland".

 

[lock]

I thought i would just watch the comments nothing has been done you just have the domain undeveloped.

 

[DealMaker1]

We already have examples, 11,000 domain names that have received a valid TM from the USPTO, provided by @jberryhill . So what you're saying is that those 11,000 domain names are NOT trademarks, and the USPTO was incorrect in granting them?

Yes. That's what I'm saying. .com itself is a type of mark. And how do you trademark a trademark? You can't. The USPTO can grant anything they want. It doesn't mean it's not contestable.

We already have examples, 11,000 domain names that have received a valid TM from the USPTO, provided by @jberryhill . So what you're saying is that those 11,000 domain names are NOT trademarks, and the USPTO was incorrect in granting them?

Im saying you have to go to TESS and check it out for yourself. Let's take Google.com as a basic word/design search. Is there anything for "Google.com"? Nothing. Two dead things. Now just type in "Google"and you get 1900 results for all kinds of trademarks and patents. This proves my point.

Also, for example, let's take a random company, cookitnow.com. Let's say I register it for 2 years and get a TM for ten years. The business then goes belly-up after two years and I let the domain drop but still have 8 years left on the official TM. So now that domain drops and somebody buys and starts their own cookitnow.com and it becomes successful.

So what happens now? The second person doesn't own the TM for cookitnow.com but I could register that domain because it dropped and went back into the pool for anyone to legally register. The USPTO has no jurisdiction over the .com registry. The .com registry doesn't care about TMs, only lending out .coms to people for a price. So the .com registry by virtue of renting the domain to someone else, really invalidates the original USPTO TM filing. It's like there are two renters for an apartment. The first buys renters insurance for the apartment for five years but leaves after one. Is the renter's insurance now valid for 4 years for the second renter? No. As soon as the first dude left the said apartment and his name was no longer on the apartment lease, that original renters insurance contract, with his name on it, ceases to exist.

If Google.com, the domain, were truly trademarkable, don't you think they would have done it? If it is indeed a fact that USPTO allowed domains to be TMed, I would also suggest they let it slide for the money, and they all can be contested because you can't trademark a trademark.

Cheers

 

[DealMaker1]

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.

Show attachment 230617

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.

And? So the USPTO wants to make money as a registry. Good. .com is its own registry. So what happens if Ticketstub.com, the actual domain, drops? Nothing. Because ticketstub was RENTING ticketstub.com from the .com registry. So then you are in a quandary, arent you? I am now renting ticketstub.com as a different entity, and legally I can do whatever I want with it and the .com registry won't give two shakes about that TM because they know you can't TM their extension, and it IS their extension, not ticketstub's. So TM and patent all you want, but it is contestable at every level because essentially you can't TM a TM. Essentially, the USPTO has marked that exact word expression for you, but if the domain drops, all bets are off. You no longer are legally renting that name so it pretty much invalidates the TM.

So because of the fluid nature at the .com registry, it cannot possibly recognize the validity of any of those .com TMs. USPTO recognizes it because it's a moneymaker. But there still remains the conflict between the two registries which can never be resolved.

Please realize that .com is under the jurisdiction of US Law. So is the USPTO. So we are going to have dualling banjos at best.

 

[Keith]

*cough* XCOM *cough*

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

 

[DealMaker1]

Well. You are in trouble already. Heard of StubHub.com? Sorry, but they had the name first. With that name and traffic, you could try and approach them. They will not say no to more traffic, but it has to be proven