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Is a Domain Name an Automatic Trademark?
TheWorkingStiff writes "I registered a descriptive domain name (something like "thesimpledog.com") and started a blog on it. About a month later I get a threatening letter from a link farmer who owns "simpledog.com" The owner of simpledog.com is claiming that he owns the trademark to the words simpledog even though he has no real business or rights by that name other than a static page with some text and Adsense slapped on it. There is no product, service or brand whatsoever. Does simply registering a two or three word domain give you instant trademark rights to those words even though you've never done anything with them? Should I give up my domain to a link farmer who is trying to bully me, or does he have a valid right to any phrase he registers that isn't already trademarked?"
No such thing. Laugh at him, ask for his trademark registration details and date.
Put the Dogs On him
Question: Is a Domain Name an Automatic Trademark?
Answer: Ask a lawyer not Slashdot.
Your hair look like poop, Bob! - Wanker.
No. You cannot have a trademark just by virtue of owning a domain name. A "trademark" is one's distinctive mark within a trade, and since this person has no product, there is no trade. Trademark laws exist to protect consumers from purchasing or using one product when they meant to purchase or use another. You would have a problem if you tried to imitate the other site. Obviously, this isn't the case, so you're in the clear.
The troll is just being a troll. Don't give in.
I'm registering www.tehsimpledog.com as well as www.thesimpledog.net.
Evil laughter.
You don't mention your jurisdiction but the broad answer is no. More details would need to be known to establish if there was any legal conflict, e.g. passing-off, but clearly there is a registered trade mark system and there are domain names. While they may give rise to conflict on occasion one does not replace the other.
Then sue the fucker. For real.
Deleted
First of all, have you looked up his trademark at uspto.gov to make sure he has one. The USPTO is really leary to give a trademark on something that ends in .com now-a-days.
.com is supposed to be a US thing it would be subject to US law first.
It would also be interesting to see what catagory he filed under.
You can file a trademark in any one of several categories (about 23). So you too could have a trademark on the same word and it would not conflict (eg. Ford Florists and the Ford Motor Company both have a trademark on Ford, but since the name use would not cause market confusion, they are both ok).
If the category is bogus (some technology one might be ok for him to use) you might be able to get the USPTO to force him to prove the use of his trademark in commerce.
Also if you were using the trademark before he filed, you should be ok by law, but anecdotal evidence shows that you will still lose your domain.
On a related point trademarks can be filed in more than one country, so what country trumps what country if there is a conflict? (I guess since
I have seen no discussion on this.
I am not a lawyer do not take this as legal advice. It's not. It's the ramblings of someone who holds a few trademarks himself.
Ignore the troll - The offence is one of 'passing off' so if you are not using the similar domain with the intent of passing off your site as the plaintiffs you are in the clear.
The (notable) precident is NTHell.com which recieved a similar C+D notice. When it came to court, it was judged that a site for disgruntled consumers to slate NTL and their poor service could not (and was not intended) to be confused with NTL.com
This perpetual motion machine Lisa made is a joke, it just keeps getting faster and faster. - Homer
How To Draw a Simple Dog
Easy Tricks To Teach Your Simple Dog
Free Doghouse Plans Online for Simpletons
The page simpledog.com is one of those totally automated junk advertising pages, obviously with a picture of a dog.
Now you know this, you won't be at all curious about going there.
A shitty database-made spammy advert webpage won't give you any weight in a trademark dispute.
Do you think www.whitehouse.com (Extremely NSFW in case you've never heard) - would exist if the good folks at www.whitehouse.gov had any legal recourse?
Refer him to the response to Mr Arkell, in the case of Arkell vs Pressdram 1971.
Why would you answer and confirm your email address to someone who is about the same as a spammer?
Patents Drive Free Software as Hurricanes Drive Construction Industry
Honestly, I'd just asking him for the USPTO serial/registration number for his trademark (and obviously search the uspto web site to verify it). If he has one, he's shown he actually cares about it, plus he's got all the paperwork he needs to dispute your domain with ICANN. Do you really want to spend time and money fighting at that point?
But of course he doesn't have one, so just asking will show him you're not just going to hand over a domain because you got a nasty email, which is what he's expecting. If he tries to quickly file the papers, he'll discover that just owning a domain name is not enough to even file for a trademark, much less get one. He'll have to find other uses of it (prior to yours) to complete the paperwork, and if his site is just a link farm it's questionable whether even his web site would qualify.
Recursive: Adj. See Recursive.
If this were true than google would sue the owners of goggle.com and other such misspellings along with almost everyone else who owns a popular enough website.
simpledog.com isn't even a real website or business operating anything dog related. It is yet another one of those fake, front-end search sites.
If I were you, I would just ignore them or send them a "get lost" type letter. Or better yet, send them a letter that LOOKS like a real response, but is titled "legal response to your letter (legalresponses.com)" and then lists:
Click here for legal aid
Click here for legal forms
Click here for responses
Click here for more info about letters
Click here for improve your writing skills
Click here for related searches about legalresponses
(c) 2007 legalresponses.com . . . about us
He does not own nor can he own a trademark unless it is registered. Secondly, you cannot own a trademark to words that are too simple, such as ABC Computer. I think SimpleDog would come into this category of simple names. It's just too common. There was kid named Mike Rowe who was a software developer. He registered the domains MikeRoweSoft.com and MikeRoweSoft.net. Microsoft threatened and sued and lost. They finally did what they should have in the first place. They bought the names from this highschool kid.
.net before McDonald's Hamburgers did. McDonald's sued and lost and finally bought the name from Mr. McDDonald.
There was also a man named McDonald who was also a software developer. You guessed it. He registered McDonalds.com and
Here's an article: http://msl1.mit.edu/furdlog/?m=20040306
The U.S. 6th Circuit Court of Appeals in Cincinnati ruled that Michelle Grosse did not violate the law when she used the *name of Lucas Nursery and Landscaping Inc* in her domain name for a Web site she created to complain about the Canton, MI nursery.
I think generally it's accepted that you have to be using the domain, otherwise it's assumed your a squatter.
Not true on the MickeyD's domain.
That was a reporter for Wired magazine Joshua Quittner, who, back in the early days of the net (1994), noticed that McDonalds had not registered McDonalds.com. So he himself registered it, contacted the company, and documented the whole thing, prior to giving the domain to McDonalds.
http://www.wired.com/wired/archive/2.10/mcdonalds.html
"People" using "unnecessary" quotes should be "shot".
The only way he has a case is if:
1. He has an actual blog at simpledog.com AND
2. He has actually registered a trademark for simpledog.
It's common for people to forget that trademarks only cover one area of business. I could make Coke Computers, and even though Coca Cola Corp would not be happy, there is nothing they could do. Their trademark only covers beverages.
IANAL.
http://theyellowpages.com/index.php vs.http://www.yellowpages.com/?From=Branding_ypbrnd_yellowpages vs. http://yellowpages.msn.com/
vs. http://www.yellow.com/ vs. http://www.yp.com/ vs. http://www.authoryellowpages.com/ vs. http://yellowpages.washingtonpost.com/
vs. http://www.yellowpages.ca/ vs. http://www.musicyellowpages.com/ vs......
Oh hell do a google and check it out for your self.
Just wait until they start sending notices based on their ownership of com.com.
As others have said, you have to use the name in a trade or business in order to claim it as a trademark, although you do not have to register it with the USPTO; registering the trademark does provide you with some additional legal advantages.
The Groklaw page has a number of useful links that provide more in-depth information.
Try the same question on the forums at Findlaw.com to get some input from the legal sector...
I wonder how many cool domains I could get if I just added "the" to a popular url resulting in something like "thewhitehouse.com".
Change your surname to "Simpledog".
Why not register thesimpledog.com first then send him a nasty C&D email?
Normally you have to use a capital letter to denote a trademark. So if I say windows it's not referring to the OS. If I say Windows it is.
Of course domains don't use uppercase, so this is where the ambiguity is.
I'd send them a response with two words in it. The second word would be "off".
The reason why people use fake words like "Kwik" and "Kleen" is that you can't trademark real words. You combined two real words. Tell the domain squatter to go squat on something pointy.
I've calculated my velocity with such exquisite precision that I have no idea where I am.
who probably doesn't know any laws concerning trademark or copyright. Mark his email threats as spam and ignore them and move on with your life.
If he hasn't actually sued you yet or sent you a legal C&D, then he is just full of hot air ignore it until it goes away or gets serious.
I'm no lawyer, but I believe you can copyright something without registering it. You must register and defend a trademark. Unless he provides documention of his registration, I would just ignore him. Actually, I'd ask him why he's whining about you making him money. By blogging on a name similar to his, you essentially made his domain into a more profitable typo squat domain.
Parent links to scat porn.
...and make one of the words "off". He's probably just looking for money. If he actually has a case his lawyers will get in touch.
"Welcome to our world. We are the wasted youth. And we are the future too." Yes, I know these are stupid lyrics.
I thought the ICANN resolution process was made relatively simple so that people from rich countries couldn't walk all over people from poor ones. Now before you abuse me on that notion, that's what I thought it was meant originally, I didn't say that's what it turned out to be :-).
WARNING: IANAL. And you really should talk to one. Nevertheless...
I had a somewhat similar experience a few years ago. A domain that I registered and was using for personal projects attracted the attention of lawyers from Shieldmark, who asserted that I'd registered it in bad faith, and demanded that I turn over ownership of my domain to their client or face an arbitration proceeding according to the rules of ICANN's UDRP process. In Belgium.
In the interest of fairness, I should say that their client did have registered trademarks on the phrase that made up my domain name. On the other hand, their trademark specifically addressed the realm of agricultural products, and... well, let's just say I'm not in the agriculture business.
I sent them a polite letter back saying that while their client had my sympathies, I had registered the domain in good faith, was actively using it, and that if they initialed a UDRP against me, they'd lose. And that was the last I heard of it.
The situation here is different: this guy apparently has no claim on this domain other than the fact that your domain sounds kinda like one of the many he owns. Given that, I'd first talk to a lawyer, then do what I did: write a polite letter suggesting he pound sand.
.. is just someone trying to get hits on simpledog.com. He's playing us all for fools.
:wq
Trademark rights are acquired by use, not necessarily by filing an application in your country's Trademark Office and definitely not by reserving a domain name. The USPTO has made it very clear that registering a domain name is meaningless to show use of a trademark in commerce. Trademarks must be used in commerce on goods or services. You do not just "get a trademark" on everything under the sun because you start using the name. That is because there is only confusion (or, the true standard, likelihood of confusion) if similar marks are used on similar goods or services. Now, there is an exception to that for "famous marks". Owners of famous marks can stop people from using similar marks on just about anything through a theory called "dilution". Recent amendments to the U.S. Trademark Act (a.k.a Lanham Act) make it very difficult to have a mark meet the standard of being "famous". Basically, you have to be a Coca-Cola, Apple Computer, or Hard Rock Cafe to get that kind of status (and even then, YOU have to prove it, you don't simply file something and "get it").
So, if he is using the trademark, I'd love to know on what? Registering a domain name and tossing up a pre-made "click through" ad page, in my mind, would not count. (He could argue that he is providing some type of advertising service, but there is a lot of room to argue on that one). Even then, if you are using the mark on " a blog providing news and information in the field of open source software", those two services are not really related. It would be the same as saying Delta Airlines and Delta Faucets (essentially identical marks) cannot co-exists. Obviously, they do and have for years.
Go see a trademark lawyer... that is obviously the smartest thing to do. Most will at least meet with you for a half-hour or an hour at no charge.
Tell him to go pound sand.
More than 60,000 Windows programs won't run on Linux.
IANAL and all that, but my understanding of trademarks (registered or not) is that:
1) The owner must establish the term and build awareness that those words represent a certain product/service
2) The product has to distinct from any other product using the term so that a reasonable person would never confuse the two (i.e., clearly different industries)
3) The owner has to maintain public awareness continue using those terms in a consistent manner
So, for example, I can't simply claim Kleenex as a trademark or use it to represent my tissue company. But I could try to establish it for a construction company (though that would invite a beatdown from some corporate lawyers). You can claim anything you want as a trademark, but the test is whether the government agrees that those words represent your goods and whether they think you are trying to confuse the consumer.
So he himself registered it, contacted the company, and documented the whole thing, prior to giving the domain to McDonalds.
It's rumored that a few months later McDonalds offered him a serving of large french fries.
Seven puppies were harmed during the making of this post.
The person who is sending you the letter is probably setting you up to buy the domain from him. Typical domain hoarder:
1. register domains.
2. list them for sale.
3. wait until someone registers the name and uses it.
4. use legal system to attempt shake down.
5. profit?
-- $G
... maybe.
Go see a lawyer. You can get a free initial consultation from many of them.
Here is some more free advice : Don't trust the free legal advice you get on slash dot. At
lease half of the posters have no clue, and you have no idea which half.
Ask him in what area of trade he is asserting the mark and to prove that he's used the mark in those areas or that he demonstrated his intent to use the mark in that area prior to your first use.
Unless it's a made-up word he can't prevent the same word from being used in other areas of trade.
If his use doesn't conflict with the way you intend to use it, you both can use it and both trademark the term.
If your uses conflict, whoever took steps to establish the trademark for that particular usage first wins.
Unless you are using the term for domain-parking, I don't see you having any conflict.
Have your lawyer send him a "put up or shut up" letter.
Knowledge is how to play a game, intelligence is how to win, wisdom is knowing what game to play.
Step 1: Did the link farmer claim to have a trademark on his site? That is, was his logo followed by a "TM" or an "R" in a circle? The mere use of a name does not confer a trademark, nor does asserting it in private email. You have to publicly claim a trademark on it and notify those who see it that you're claiming trademark status.
For fun, check out http://www.uspto.gov/main/trademarks.htm and click "search" over in the right-hand box.
Step 2: How strong is the trademark? A mark like Exxon is extremely strong. It has no existance except for the oil company. If you use "exxon" in any context you're probably violating the mark.
"Simpledog" is the concatenation of two english words. Its already weak. Next its use seems to be for a link farm with generic search links about dogs. Weak weak weak. If he had a trademark it would probably only extend to the use of "simpledog" for a link farming page. Everything else (including a blog) would probably fall outside the trademark. If he had one to begin with.
Personally, I'd search the PTO for a trademark registration and then register it myself if I didn't find one. Ignroe the fellow (don't reply) until the registration is granted. Then send him a registered letter advising him that if he doesn't give up the name on which you have a registered mark, you'll sue.
Of course, that's not the end of the story and just 'cause he can't win doesn't mean he can't sue you in some geographically inconvenient location. So if you worried, you need to visit a local lawyer.
Moderating "-1, Disagree" is simple censorship. Have the guts to post your opinion.
A started a web portal KnowledgeBooks.com about 9 years ago and started the process of getting a trademark for KnowledgeBooks - this process was interrupted when I took a job at Ben Goertzel's startup AI company. Years later, I noticed that someone else had applied for a trademark, I protested this since I had been using KnowledgeBooks for years, and I don't think the other person received the trademark.
It is better to get a trademark - in my case I payed the fee, but got tired of jumping through the hoops to get a trademark - my bad on that one.
Boy, they play hardball... Don't mess with the golden arches or you may end up at the pearly gates.
"Well, good luck finding a judge that doesn't run a bestiality site."
While a person CAN be held to have a valid trademark just by usage, if you're not in the same jurisdiction, or not offering the same product or service, you can ignore him.
The "not offering same product or service" is easy to understand - if there is little likelihood that a consumer would be confused between your "product" and his non-existent "product", then you also have a valid right to the same trademark. Lexus Peas was sued for infringing ont he Lexus brand, and the judge held that there was no chance of confusion in consumers minds between a can of peas and a car.
The "same jurisdiction" is also easy to understand - if he wants to "do something about it", he'll have to sue you in your jurisdiction, and that costs $$$, and a link pharmer simply won't spend the money.
Also, you can put a disclaimer at the bottom (without a link back) saying your blog has no relationship to the link pharmer, explaining the pharming business, etc. This way, you might become the cononical reference on the net for that particular url.
Obviously, your blog is taking traffic away. Why not point us to the landing page so everyone else can choose one link to "reverse-pharm" with a blog with some content using the same name.
Kevin Smith on Prince
I did speak to a lawyer initially who specialized in this sort of thing and he said, "Sure, you'd win in a UDRP case..." Then I thought about it some more and I realized that most lawyers only take cases they *think* they would win. It wouldn't be a guarantee... and I'd hate to have a 6 month old blog with traffic and readers suddenly get ripped awy from me. Unfortunately there doesn't seem to be any way for people who are being bullied to file any sort of counter complaint in matters like these.
The real domains in question are my site (which is down for the moment) http://www.thesimplemillionaire.com/ and his site which is the same, but without the word "the." He couldn't furnish anything saying he had used the site for any more than a link farm, though he did say that he had some magazines sent to the name "simplemillionaire." Nice. I've had magazines sent to my cat, but that doesn't make them taxpayers (hmm...)
The threats from the owner of simplemillionaire.com also detailed how he was going to sue me to pay for HIS legal expenses. Again, I don't know how kosher that sort of threat is. This guy owns a company called SimpleVentures or something which seems to specialize in buying domains and selling them... apparently in a greasy way. His original email to me immediately suggested that I pay him a "licensing fee" for my domain name because it was similar to his. He boasted of selling the domain CapitalManager.com to the Hartford Insurance Group.
All this for a stupid personal blog that was only about three weeks old.
Bottom line: I didn't want to risk spending my next three months fighting with the jerk and dropping a couple grand in legal fees. But I'm keeping the domain name for the moment... You know, just in case...
Yes, I was using GoDaddy... Sue me. Wait, don't.
Not completely true - they reached an out of court of settlement which involved Microsoft (who wished to avoid bad press) purchasing the domain for a pittance. Every lawyer I spoke to seemed to be of the opinion that, had it gone to court, Mike Rowe would have lost - because he deliberately and knowingly infringed Microsoft's trademarks.
Someone else has already discussed the McDonald's case, but I'll note the third case you cite has nothing to say on point to this issue.
Trademarks are domain specific however there are cross domain concerns such as intentionally using the popularity of another trademark to your advantage.
They loose force if they are not activly protected which is why people tend to blanket push the trademark issue wherever they find something similiar without doing their homework or being too serious about going after you.
Leeches living off google adwords revenue don't deserve a trademark. They deserve to rot in hell.
Disclaimer: The following comment is based on UK law 18 months ago; also I am NOT a lawyer, I've just been lectured to by one.
There are two sorts of trademark; the one that gets a TM (meaning "trademark") and the one that gets a ® (registered trademark). Anyone can get a TM just by using a name in the operation of a business, but if someone else gets or has a registered trademark, it usurps the TM. Registering a trademark costs money, and is can be blocked by other businesses within the first few months after the application is made. Trademarks are also limited in scope to a particular area of trade, so a computer company called ABC Inc. ® couldn't sue a taxi company called ABC Inc. ® because of the name.
Trademark The Simple Dog if you'd like. Blogging is enough of a product that you should be able to get one in the same way newspaper names are trademarked.
I'd look to see how many other instances of Simple Dog or The Simple Dog are currently in use. He may have tried this trick many times and never had any success.
I don't believe he can easily sue. At least not as easily as he can write you some nasty e-mails. If he wants to go to the WIPO over this, let him. Tell any court that he might file in that they should kick the case and let it be decided where disputes of this type are sorted out, and you're not trying to profit from any of his Good Will. I would guess, however, that his page is doing well for him or he wouldn't be bothering with this at all. Interestingly, your page might drive some additional traffic to his site when people mistype your domain name.
It might be interesting to know just how long he's had this domain. And if possible, if anyone has ever owned your domain name prior to your own registration.
Repeating what so many others have said, a lawyer is better than Slashdot for legal advice.
What I find interesting is how did he find out about your site in the first place? My guess is that he regularly checks his Page Rank and placement on Google, and stumbled over your site having a high(er) ranking, since you actually have content on your page.
I wonder if asimpledog.com is still available? Or maybe dersimpledog.com.
"It's the height of ridiculousness to say for those 9 lines you get hundreds of millions."
If owning www.whatever.com, and you claim that you have any rights for any URL that includes "whatever", that's clearly bullshit. Others have the right to own www.whatever.org, whatever.net, whatever.co.uk, whatever.tv, and they should have the right to own whatever.xxx. As long as the non-first person doesn't establish their site to resemble a sight with a similar URL (whatever.com and whatever.net, or simpledog.com and thesimpledog.com), there's no chance of fraud or IP infringement.
Worse yet, not only will you have non-lawyers posting legal advice to these kinds of questions, many of them will forget that there are other countries than the USA. E.g. the question asks for legal advice without telling us what country either of them are in.
-- http://thegirlorthecar.com funny dating game for guys
OK, let's do some lookups.
First, the USPTO trademark database. "Simpledog" - no hits. "Simple AND dog" - three dead applications for long phrases containing those two words. Definitely not a registered trademark. File your own trademark application if you like. It's easy, the entire process is online, and the fee is a few hundred dollars.
Next, let's try DomainTools.. "GNO, Inc. owns about 22,379 other domains." "1,219,449 other sites hosted on this server." That's a web spammer.
Now let's check domain dispute decisions. Here's Panthers BRHC L.L.C. v. Gregg Ostrick/GNO, Inc. (re "bocaresorts.com" dispute). The owners of a resort hotel in Boca Raton challenged GNO for using "bocaresorts.com" against their trademark "Boca Raton Resort & Club" and domain "bocaresort.com". GNO lost.
Finally, couldn't resist running "simpledog.com" through our SiteTruth system. No street address on the site. No SSL cert. Not in any of the business databases. "Site ownership unknown or questionable."
Yes, that's a web spammer all right. No sign of anything that looks like a trademark or a legitimate business.
IANAL, but I play one on Slashdot. A trademark registered with the USPTO is a trademark in the US. For outside the US, I haven't the foggiest. Do a search on USPTO. It's real easy to see what's available, and even the status of dead marks that are no longer being maintained. If your mark is free, it might not be too hard to DIY with the USPTO's forms; but I'd just chuck it over the fence to a lawyer if I was really serious about the business.
Copyrights ARE automatic by merely publishing, which might be where some of the confusion came from. However, registering with USPTO makes it easier to collect "statutory damages", or so I've been told. I've written some obscure freeware and Open Source on my own dime, and never bothered to register a copyright for that kind of stuff. Once again, if I had been in a situation where the software had a strong following and was turning into a serious business, I'd register a copyright. That's one of the benefits of working for somebody else. They retain counsel and handle all that stuff.
For all intensive purposes, "whom" is no longer a word. That begs the question, "who cares"?
If there's nothing behind him, ignore him. Maybe make fun of him. Maybe file something against him.
I don't know the legal perspective on whether or not he has any right to that name, but in my opinion, if he sent a threatening letter, he is an idiot. It accomplished nothing for him. If he had, instead, sent you a polite letter, there might have been some chance of you working with him to come to an agreement amicable to both sides. He should have reserved the threats for much, much later in the process.
I've used a href=http://www.justanswer.com/]JustAnswer.Com[/url] a couple of times for questions that fell in the grey zone where I really wanted to get an answer from a credentialled expert, but it wasn't really important enough to justify paying several hundreds of dollars.
That site is what it is, and you must judge it for what it is. You choose how much you want to pay for an answer... the suggested amounts be either $9, $15, and $30 or $15, $30, and $45, depending on some variable I don't understand... you don't have to pay unless you're satisfied with the answer.. and the people answering usually seem to have credentials, i.e. legal questions are usually answered by lawyers. Whether you think they're the right kind of lawyers or good lawyers is your own call, and of course the answers are subject to layers and layers of weasel-wording and disclaimers.
I like the site. I've found the answers I've gotten to be helpful... if not always the simple yes-or-no I'd have liked.
"How to Do Nothing," kids activities, back in print!
I doubt that farmer has trademarked simpledog. But you might as well check the US Patent and Trademark office first. Go here to search for existing registered trademarks: http://www.uspto.gov/main/profiles/acadres.htm Trademarks aren't the same as copyright. You must register your trademark with the US Gov.
i don't think the case of the frys.com domain name agrees with you here. from wikipedia:
"The URL "www.frys.com" was owned in 1997 by David Peter, who manufactured and sold french-fry vending machines under the business name Frenchy Frys. Fry's Electronics brought suit against him that year, alleging trademark infringement, and ultimately prevailed in a default judgement."
he registered it first. it was a generic term. he was actively using it, not cybersquatting. there was no chance of confusion with the electronics retailer. fry's electronics still took it from him via the courts.
http://en.wikipedia.org/wiki/Fry's_Electronics
mr peters started posting the court filings and dockets from the case on his site as the case progressed.
http://web.archive.org/web/19970130165743/http://frys.com/
just shows that whoever has more lawyers will probably win, regardless of the law.
(haha! the slashdot CAPTCHA to post this is "stolen"! that's too funny!)
One difference to note between the US and EU: A trademark is protected in the United States after it is first registered. (If two try to register it simultaneously, then it defaults to the one who used in first.) In Europe a trademark is protected after it is first USED.
while the other side doesn't need to register the mark on a state or federal level in order to have certain rights, the damages the other side can seek if the mark is not registered are limited. In addition, as others have commented, given the services offered at the competing sight, namely advertising for others, the domain is likely a very weak mark that would receive only limited protection, if any at all. If I had a client with this issue and the facts presented, I'd advise them not to worry about or respond and determine a course of action if the situation develops further. If they keep harassing you, you might consider filing a small-claims court action against them for mental anguish or any other action your local laws support. Although the ability to collect on any judgment awarded is likely suspect, there may be intangible benefits to such a suit.
So that everyone on this forum can personally email this guy and call him a troll.
------- "I must create my own system, Or be enslaved by another man's" -William Blake
A number of years ago, a small town had it's own little network of phones, and called itself, "Ma Bell." Bell Telephone objected, but then realized that THEY had never trademarked the name "Ma Bell," but the elderly couple who ran the town phones had. After consulting with attorneys, Bell Telephone found that they could not force the elderly couple to stop using the name - they owned the rights to it. So, they bought them out; the price was a new house, and a few thousand dollars. Now, you've registered a name that is NOT that same as that troll who's bothering you. Unless he's going to make a fuss and try to sue for your domain name, then you can stand your ground. MANY have capitulated to Microsoft when their domain names were close to anything that sounded like Windows, or Micro-anything, because of the lawyers that the unethical MS people can bring to bear, and the little guys could not afford comparable attorneys, nor the cost of an extended court battle. The guy with the most expensive lawyers wins. Seems to me that the troll who's bugging you might thank you - if anyone wants to go to your site, they're more likely to leave off the "the" and end up on his page. ADDING "the" seems most unlikely. He has no legal rights over your domain name - especially since you offer entirely two different services: yours is a Blog; his is just advertising.
- (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
- (ii) you have no rights or legitimate interests in respect of the domain name; and
- (iii) your domain name has been registered and is being used in bad faith.
You'll notice there's an "and" between each of those. All three have to be true for the complaint to even be considered. Section 4b outlines some examples of "bad faith".- (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
- (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
- (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
- (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Please note that putting a parked page with targeted advertising on the domain is considered a legitimate business use. However, it's generally considered to have the lowest priority among business uses. If its use infringes on the trademark of another (non-targeted ad parked page) legitimate business, generally ICANN comes down on the side of the trademark holder and authorizes the transfer of the domain to the trademark holder if that trademark is somewhat well-known.In other words, even if the other site has a trademark on SimpleDog, if you're using it for a legitimate business and your site does not compete with them (does not leech off their fame for commercial gain), you're pretty safe. In fact, if your thesimpledog.com site became famous and you were able to turn it into a multi-million dollar business venture with widespread name recognition, and simpledog.com was still an advertising site which advertised what your business sold, you'd actually have pretty a good chance to get their domain transferred to you. They would be leeching off your fame for commercial gain, and thus satisfy definition 4b(iv) of using the domain in "bad faith".
(Incidentally, section 4b(i) is why you never, ever put a dollar amount on your domain in these cases. Their lawyers will immediately jump on it as evidence that you're using the domain in bad faith.)
So with a domain name, if the name is being used as a distinctive mark in the sale of something particular, then under common law the owner of the business has a right to the mark just for the category of goods or services sold, presuming that nobody else is already using a substantially-similar mark for other goods or services in that same category. Further, until they (1) have actually sold goods or services using the mark, and (2) have subsequently registered the mark on either the federal or state level - or both - they can't go to court against you.
"with their freedom lost all virtue lose" - Milton
Your farmer friend seems to have misunderstood trademark versus copyright. If you are selling the same type of product as him in a misleading fashion, then its trademark. However, "thesimpledog" would not pass any form of moron in a hurry test, so it would be an easily refuted copyright as well. Basically you have nothing to worry but you are in for a legal battle.Enjoy! (sarcasm).
If the plaintiff has anything to protect it would be a service mark, since he is not selling a product.
The continuous use of a mark along with the 'sm' or other identifier claiming ownership is what validates it. Registering the mark may make it easier to defend in court, but is not required. Defending the mark is important and if abuses are allowed it could be lost to the public domain.
That said, the current function of the USPTO seems to be to protect corporate interests. The reality is that when a wealthy entity and an individual disagree on IP ownership, the individual is likely to lose.
IANAL, yadda, yadda, but I have interests to protect too.
...omphaloskepsis often...
Threaten to countersue him under RICO (racketeering and extortion). Your suit would be just a frivolous as his, but it might shut him up.
If it were me, I'd ignore him. My recollection of the ICANN rules is that the burden is on him to prove:
1. That he has a legitimate, real-world business that could reasonably be expected to be associated with the name; and,
2. That you don't: that your primary reason for registering the domain is to profit by selling it to someone who does
Having a registered trademark or business identity can help show 1., and lack of can help show 2. But afaik (ianal), trademark law per se has nothing definitive to say when it comes to domain names. Also, afaik, the only entity that has made any sort of rules around domain name use is ICANN.
Obligatory google cache http://64.233.167.104/search?q=cache:-dPK0FuAOgkJ:www.thesimplemillionaire.com/+thesimplemillionaire&hl=en&ct=clnk&cd=1&gl=us
While there were settlements, the judgment did say that the two Apples can
protect their trademarks in different sectors (hello iPod).
http://en.wikipedia.org/wiki/Apple_Corps_v._Apple_Computer
Then there's a myriad of companies with "Sun" in their name that aren't
Sun Microsystems, like a bunch of newspapers called "The Sun" and SunAlliance insurance.
Alas, all this precedent comes to not much if their lawyers think they can
use a flimsy premise to bleed you to death in the legal system.
Xix.
"Everything is adjustable, provided you have the right tools"
>>> He does not own nor can he own a trademark unless it is registered.
Wrong, read all the other posts pointing out the difference between a trademark (a distinct indicator representing the origin of goods/services) and _registered_ trademarks.
"Simple Dog" wouldn't be allowed in the field of dog training I suspect. But in internet advertising it's certainly distinctive and not descriptive and could be used as a trademark.
Finally, you are protected (in the jurisdictions I've come across, UK, EU, US) when you use a trademark to provide commentary or complaint provided that you're not defaming (ie libelling) the trademark owner or passing-off.
So basically. You'd have to try hard to be more wrong.
Trademarks should only be allowed to exist with a prefix of (R) (or something similar) and all other uses of every word should be free for everyone to use, that way, people know the registered company by its "(R)" symbol, and everyone else is not hassled by them. Otherwise, with the incredible increase of trademarks, we will lose our language to these rotten things. We need big changes. We own the language, not just the rich people with businesses!!
Pay the man. If you're dumb enough to ask this question of Slashdot, rather than an attorney, there is simply no point in trying to defend anything. Give up, run away, and never use the Internet again.
My blog: http://www.seebs.net/log/ --- My iPhone/iPad app: http://www.seebs.net/seebsfrac/
I freely admit that lawyers are slime -- they can only protect you from other slimeballs. In this case, you may need one.
He is simpledog.com and you are thesimpledog.com. Case closed.
Codifex Maximus ~ In search of... a shorter sig.
Please kindly refer him to the reply given in the case of Arkell v. Pressdram.
I have always been under the impression that a trademark in order for it to be held as valid, has to be branded as active, and popular for either the area they live, or online. Anyone can grab a idea off the web see if it is trademarked, register it if not, then sue everyone trying to use any part of it. Look at microsoftsucks.com. They got to use this domain, and there are several others like the Nissan guy which is still in court. I did find a website with lots of links to info http://www.ggmark.com/ maybe it will help. I don't remember the case name, but a few years ago someone was dragged to court over this same issue, and the one that wanted this other person to stop, and pay up, did not get their wish. The Court ruled in favor of the website owner that was dragged to Court. Stating that the website and website name was not active participant on the Internet and was only sitting there with links all over the place. The Judge called it a trap from every aspect of the domain, down to the very content on the website.
(Sigh) I suppose that Apple may claim the right to any domain that begins with a lowercase "i".
A while ago, would have been about a year ago I saw on the news that some bloke registered a domain the same as the name of some famous person, can't remember who. Famous person tried to sue but the other bloke ended up winning the court case.
This guy with the website is nuts. If he Trademarked it, then prove it, otherwise if I were the blogger I'd spend the money and get the trademark and then turn around and sue the website owner. Make him give up the Domain and pay you some cash to boot.
Stop by and watch a Christmas movie, commercial or cartoon! -->http://www.XmasDVD.com
Note he said mcdonalds. net , not .com.
I'm generally supportive of low-regulation, but this 'simpledog.com" person is just a cybersquatter. That might be bad enough, but then to have the balls to try to bully you into turning over your domain - well that really pisses me off. There's a petition to stop cyber-squatting that we started a while back. Maybe it's time to get some momentum behind this. http://www.youchoose.net/campaign/stop_domain_name_parking_and_cybersquatting
See the folks at 2600 and their court case. Ford realized they would lose.
http://www.2600.com/news/view/article/297
Though it's a bit late in the discussion, for future reference anyone wanting to research this further can visit their local law library (in the U.S. most municipalities have one, or the nearest law school) and look for these two treatises:
_Gilson on Trademarks_ by A. Lalonde, K. Green, and J. Gilson, published by LexisNexis ~ Matthew Bender;
and
_Callmann on Unfair Competition, Trademarks and Monopolies_ [4th Edition] by L. Altman, published by Thomson ~ West.
And no, this material is not readily available without actually visiting a law library because the publishers make scads of money selling them to rich lawyers.
Cheers.
--rat_axe the law librarian.
In this respect the internet is almost self-regulating; in that no two of the same domain names can be registered. For example you can't have two "simpledog.net" domain names out there, otherwise the net wouldn't function properly. As long as your domain name ends with a different domain suffix, you are at no risk of violating the law. Case-in-point, try typing in "www.whitehouse.gov", then type in "www.whitehouse.org", and so forth, and you will see that just because part of the name is the same, doesn't mean any one person/entity has ownership of that partial name.
Since when creating a charter and following it make you a jerk? It may be unfortunate for Israel the many members of the organization are Muslim countries. But one vote is one vote, and sometimes the club memebers do not approve of a new one for many different reasons.
Recently a new symbol was introduced which is non religious or sectarian in nature, this with the only purpose to allow organizations like the Israeli one to cooperate under the same umbrella.
IANAL but write like a drunk one.
as an automatic trademark, just like copyright is automatic. You merely have to declare the trademark, such as "xxx is a trademark of yyy corporation" or simply by putting the "tm" abbreviation next to it (not really required on the domain itself, but if the "tm" marque appears within the web page it points to it would suffice). That is the case for copyright as well--declaring it simply with "Copyright yyyy such and such" is enough to invoke copyright protection under the law. Do such declarations exist? If there are no marques such as tm or (c) or the corresponding phrases on the published work then they have little groung to stand on.
That said, just as is the case with copyrights it is always prudent to go through some more formal means of declaring the trademark (ie. registering it, so the "circle-R" marque can be used in the case of a trademark). The tone of the question suggests there ISN'T any indication on the website where the domain is parked that there are registered copyright or trademarks involved however. Why is registration important for valued trademarks? Because it is formal proof of when the trademark is established first of all. Second the burden of enforcing the trademark is lower (there is added protection, but there are still SOME responsibilities to protect your trademark).
That said, your cybersquatter pest has some responsibilities to protect/enforce his unregistered trademark beyond slapping (tm) beside it. It is a "marque", or identifying name or phrase, used in the conduct of business (trade--thus "trademark"). Registering a domain and parking it does not constitute "trade". Look into it further. Is there an active business operating under the name, or a product branded with the name? Is there an MX record suggesting there may be email addresses by which they conduct business that include the name? If not, the cybersquatter has no right to take your domain (in fact, even if they registered the trademark there recourse is limited if they've abandoned the trademark).
It can go even further than that--if the marque IS being used in trade actively the burden of proof is on them to prove that your use of a similar phrase is misleading or confusing. Are you both using the marque in the same industry to sell similar products, or are they terms generally known in the same geographical area? If not, the case is limited and the cybersquatter probably doesn't have the means to fight it out on such a weak case. Think of how long it took the WWF to get the WWE not to use the same three-letter acronym for its unrelated business? It took years and considerable money because the two parties were not easily confused, and the WWE only prevailed because of how pervasively the WWF marque was being used by what is now WWE (ie. more people assocated the acronym with wrestlers than with tree-huggers). This is not a problem with a little personal blog vs. a cybersquatter.
I would just ignore the request, or (maybe better) get a lawyer or someone with a background in IP to pen a letter politely refusing to comply with a good legal explanation why you feel justified to do so. This is just a form of phishing IMO.
There are really only three ways to gain trademark rights to a domain name:
(1) Actual use of the domain name in commerce in connection with the provision of goods and/or services. This would involve, for example, putting your domain name in your company logo, and actually providing goods or services to the consuming public under that logo.
(2) Getting a trademark registration for your domain name.
(3) Having another company transfer their trademark rights to the domain name to you.
I note that simply owning a domain name, without actually using it as a trademark in connection with legitimate business activities, does not give you any trademark rights to the domain name. This is a common misconception.