IDN Forums - Internationalized Domain Names  
Home | Advertise on idnforums | Premium Membership

Go Back   IDN Forums - Internationalized Domain Names > IDN Discussions > General Discussion

General Discussion Feel free to talk about anything and everything in this board.

Reply
 
LinkBack Thread Tools Display Modes
  #1 (permalink)  
Old 5th August 2007, 05:17 AM
Junior Member
 
Join Date: Jun 2007
Posts: 7
iTrader: (0)
Rep Power: 0
tnitty is an unknown quantity at this point
Legal question: I own the IDN; someone owns the pinyin

Hi,

Am I open to liability if I bought the IDN version of a trademarked phrase / domain that is being used in Chinese pinyin? For example, if I bought 'I'm happy now'.com in simplified Chinese (IDN), but 'I'm happy now'.com in pinyin is being used and trademarked, can I be liable?

The above example is just made up, but I'm just wondering about the issue in general.

Thanks
Reply With Quote
  #2 (permalink)  
Old 5th August 2007, 06:58 AM
touchring's Avatar
Veteran
 
Join Date: Dec 2005
Posts: 7,547
iTrader: (29)
Rep Power: 1285
touchring is an unknown quantity at this point
Re: Legal question: I own the IDN; someone owns the pinyin

No, they look different. Same meaning does not infringe trademark.
Reply With Quote
  #3 (permalink)  
Old 5th August 2007, 07:15 AM
Junior Member
 
Join Date: Jan 2006
Posts: 81
iTrader: (12)
Rep Power: 535
Silhouette is an unknown quantity at this point
Re: Legal question: I own the IDN; someone owns the pinyin

Quote:
Originally Posted by touchring
No, they look different. Same meaning does not infringe trademark.
thanks... very informative

what about for cases like:
the pinyin/romaniz'ed .com owner brands his name as "Native word" .com and yes, trademark'ed !!
(he is ignorant of IDN's existence and his .com/trademark has been active since last millennium )

Any clue on his rights over your IDN .com
TIA
Reply With Quote
  #4 (permalink)  
Old 5th August 2007, 08:20 AM
Junior Member
 
Join Date: Jun 2007
Posts: 7
iTrader: (0)
Rep Power: 0
tnitty is an unknown quantity at this point
Re: Legal question: I own the IDN; someone owns the pinyin

Quote:
Originally Posted by touchring
No, they look different. Same meaning does not infringe trademark.
Thanks. I feel better now. I bought a domain without realizing the pinyin version existed / was in use. I'm surprised the owner(s) of the pinyin site didn't take the time to register the IDN.
Reply With Quote
  #5 (permalink)  
Old 5th August 2007, 08:22 AM
touchring's Avatar
Veteran
 
Join Date: Dec 2005
Posts: 7,547
iTrader: (29)
Rep Power: 1285
touchring is an unknown quantity at this point
Re: Legal question: I own the IDN; someone owns the pinyin

Quote:
Originally Posted by Silhouette
thanks... very informative

what about for cases like:
the pinyin/romaniz'ed .com owner brands his name as "Native word" .com and yes, trademark'ed !!
(he is ignorant of IDN's existence and his .com/trademark has been active since last millennium )

Any clue on his rights over your IDN .com
TIA

If the native word is trademark, it is the same as ascii wipo or urdp cases involving trademarks.
Reply With Quote
  #6 (permalink)  
Old 5th August 2007, 08:24 AM
touchring's Avatar
Veteran
 
Join Date: Dec 2005
Posts: 7,547
iTrader: (29)
Rep Power: 1285
touchring is an unknown quantity at this point
Re: Legal question: I own the IDN; someone owns the pinyin

Quote:
Originally Posted by tnitty
Thanks. I feel better now. I bought a domain without realizing the pinyin version existed / was in use. I'm surprised the owner(s) of the pinyin site didn't take the time to register the IDN.

btw, i think it's unlikely the site owner will tm the pinyin (pinyin is not part of the chinese language ).

your best case against such cases is to develop your site generically. most importantly, DO NOT park!
Reply With Quote
  #7 (permalink)  
Old 5th August 2007, 09:11 AM
Junior Member
 
Join Date: Jan 2006
Posts: 81
iTrader: (12)
Rep Power: 535
Silhouette is an unknown quantity at this point
Re: Legal question: I own the IDN; someone owns the pinyin

Quote:
Originally Posted by touchring
If the native word is trademark, it is the same as ascii wipo or urdp cases involving trademarks.
thanks for shedding lights

so, IDN domains are even more prone to WIPO's attacks?.. considering the fact that most/many romanize'd forms exist long before the creation of IDN
(so afterall, the "register - park - lock_the_vault - &wait - renew - &wait" strategy is not too an ideal solution for idn investors)
Reply With Quote
  #8 (permalink)  
Old 5th August 2007, 09:23 AM
rhys's Avatar
Senior Member
 
Join Date: Jan 2006
Location: Seattle
Posts: 2,043
iTrader: (25)
Rep Power: 730
rhys is an unknown quantity at this point
Re: Legal question: I own the IDN; someone owns the pinyin

Not sure about anywhere else but in the U.S. one cannot trademark WORD + a Domain Name Extension. So I can trademark Roses but I cannot trademark Roses.com
Reply With Quote
  #9 (permalink)  
Old 5th August 2007, 09:42 AM
touchring's Avatar
Veteran
 
Join Date: Dec 2005
Posts: 7,547
iTrader: (29)
Rep Power: 1285
touchring is an unknown quantity at this point
Re: Legal question: I own the IDN; someone owns the pinyin

Quote:
Originally Posted by Silhouette
thanks for shedding lights

so, IDN domains are even more prone to WIPO's attacks?.. considering the fact that most/many romanize'd forms exist long before the creation of IDN
(so afterall, the "register - park - lock_the_vault - &wait - renew - &wait" strategy is not too an ideal solution for idn investors)

WIPO rules applies the same for idns or ascii.

If you registered your domain before the tm was formed, like in the case of iphone.com (registered in 1995-Aug-23), it is obvious that the tm holder can't go after the owner of iphone.com.

A TM is a TM, doesn't matter idn or ascii. If you feel that your generic name is similar to a tm, don't park it, just develop a minisite with google search or some form of monetization. Ensure that the ads that appear is not related to the tm company. If your name is generic, put some generic content and ads.

If the complainant can't accuse bad faith and confusion, your name is safe.

But note, all i said is assuming your name is generic.
Reply With Quote
  #10 (permalink)  
Old 5th August 2007, 09:58 AM
jacksonm's Avatar
Senior Member
 
Join Date: Feb 2007
Posts: 3,843
iTrader: (26)
Rep Power: 1009
jacksonm is on a distinguished roadjacksonm is on a distinguished roadjacksonm is on a distinguished roadjacksonm is on a distinguished roadjacksonm is on a distinguished roadjacksonm is on a distinguished road
Send a message via MSN to jacksonm Send a message via Skype™ to jacksonm
Re: Legal question: I own the IDN; someone owns the pinyin

Quote:
Originally Posted by touchring
WIPO rules applies the same for idns or ascii.

If you registered your domain before the tm was formed, like in the case of iphone.com (registered in 1995-Aug-23), it is obvious that the tm holder can't go after the owner of iphone.com.
Is the rule actually "registration date" or "approval date" of the TM ? I guess this varies per country...

.
__________________
.
Reply With Quote
  #11 (permalink)  
Old 5th August 2007, 10:00 AM
Junior Member
 
Join Date: Jan 2006
Posts: 81
iTrader: (12)
Rep Power: 535
Silhouette is an unknown quantity at this point
Re: Legal question: I own the IDN; someone owns the pinyin

thank you for sharing...


Quote:
Originally Posted by touchring
If the complainant can't accuse bad faith and confusion, your name is safe.
This statement pretty much sums all up


and, good luck all
Reply With Quote
  #12 (permalink)  
Old 5th August 2007, 10:57 AM
Senior Member
 
Join Date: Jan 2006
Posts: 3,320
iTrader: (2)
Rep Power: 1462
IDNCowboy will become famous soon enoughIDNCowboy will become famous soon enoughIDNCowboy will become famous soon enoughIDNCowboy will become famous soon enoughIDNCowboy will become famous soon enoughIDNCowboy will become famous soon enoughIDNCowboy will become famous soon enough
Send a message via Skype™ to IDNCowboy
Re: Legal question: I own the IDN; someone owns the pinyin

Quote:
Originally Posted by rhys
Not sure about anywhere else but in the U.S. one cannot trademark WORD + a Domain Name Extension. So I can trademark Roses but I cannot trademark Roses.com
my lawyer TM'ed two of my domain .com's. He's a big IP & cyberlaw lawyer and also a law professor.

You are allowed
__________________
$995/mo drop lists available.. will be hand delivered by a playboy bunny
Reply With Quote
  #13 (permalink)  
Old 5th August 2007, 11:11 AM
touchring's Avatar
Veteran
 
Join Date: Dec 2005
Posts: 7,547
iTrader: (29)
Rep Power: 1285
touchring is an unknown quantity at this point
Re: Legal question: I own the IDN; someone owns the pinyin

Quote:
Originally Posted by IDNCowboy
my lawyer TM'ed two of my domain .com's. He's a big IP & cyberlaw lawyer and also a law professor.

You are allowed

Are your domains generics?
Reply With Quote
  #14 (permalink)  
Old 5th August 2007, 11:12 AM
Senior Member
 
Join Date: Jan 2006
Posts: 3,320
iTrader: (2)
Rep Power: 1462
IDNCowboy will become famous soon enoughIDNCowboy will become famous soon enoughIDNCowboy will become famous soon enoughIDNCowboy will become famous soon enoughIDNCowboy will become famous soon enoughIDNCowboy will become famous soon enoughIDNCowboy will become famous soon enough
Send a message via Skype™ to IDNCowboy
Re: Legal question: I own the IDN; someone owns the pinyin

Quote:
Originally Posted by touchring
Are your domains generics?
they are keywords

two worder .com
__________________
$995/mo drop lists available.. will be hand delivered by a playboy bunny
Reply With Quote
  #15 (permalink)  
Old 5th August 2007, 11:28 AM
touchring's Avatar
Veteran
 
Join Date: Dec 2005
Posts: 7,547
iTrader: (29)
Rep Power: 1285
touchring is an unknown quantity at this point
Re: Legal question: I own the IDN; someone owns the pinyin

Quote:
Originally Posted by IDNCowboy
they are keywords

two worder .com

Like funnyvideos.com?

Can one really tm funnyvideos.com?
Reply With Quote
  #16 (permalink)  
Old 5th August 2007, 11:30 AM
Senior Member
 
Join Date: Jan 2006
Posts: 3,320
iTrader: (2)
Rep Power: 1462
IDNCowboy will become famous soon enoughIDNCowboy will become famous soon enoughIDNCowboy will become famous soon enoughIDNCowboy will become famous soon enoughIDNCowboy will become famous soon enoughIDNCowboy will become famous soon enoughIDNCowboy will become famous soon enough
Send a message via Skype™ to IDNCowboy
Re: Legal question: I own the IDN; someone owns the pinyin

Quote:
Originally Posted by touchring
Like funnyvideos.com?

Can one really tm funnyvideos.com?
alot of people do it
__________________
$995/mo drop lists available.. will be hand delivered by a playboy bunny
Reply With Quote
  #17 (permalink)  
Old 5th August 2007, 12:20 PM
Member
 
Join Date: May 2007
Location: Hong Kong / China
Posts: 864
iTrader: (3)
Rep Power: 574
Asiaplay is an unknown quantity at this point
Re: Legal question: I own the IDN; someone owns the pinyin

Hi Tinitty,

Remember that for one word in Pinyin there are many different Chinese characters that share the same Pinyin - often this means that Pinyin words can have even more than a double meaning (even as combinations of two characters).

If you give me two Pinyin words I could only guess the most popular word in my mind for those - the word it is actually representing is not evident.
This is why it is hard to hold a chat online in something like Pinyin - and even spoken Chinese you will often hear people clarify a word (you mean Zhong as in Zhongwen to clarify the word actually being spoken).
Namely Pinyin for ascii also ignores the 4(5) tones in Mandarin (and even with same pronunciation, just like with English there can be two or three options of the word - context often dictates which one someone thinks the person means - in Pinyin there differences are not made clearly) - and this can make it even harder to argue it has just one meaning (matches exactly which Chinese written characters).

What is trademarked however is the Chinese characters generally... normally when it is a combination which is not naturally written as a word - therefore owning dictionary Chinese Character word IDNs or Pinyin ones, makes the word near impossible to trademark.
Actually trademarking is even more interesting than this for words - often you will see the same two Chinese characters used for brands in totally different product / service areas (who then would have the trademark claim - the one selling cooking oil or the one selling clothing or the one selling knifes)?

Just little clarification on Pinyin - to see what I mean, if you like try using http://www.mandarintools.com/worddict.html (selecting pinyin - and type in something like "bu yao" or whatever Pinyin you have - you will see the endless list of options for one character and many options for a combination of two characters together (remember this dictionary does not hold all Chinese words - just a few of the main ones - but shows Pinyin well).

Hope these comments are useful...

Cheers - Asiaplay

Last edited by Asiaplay; 5th August 2007 at 12:25 PM..
Reply With Quote
  #18 (permalink)  
Old 5th August 2007, 02:47 PM
Member
 
Join Date: Jan 2006
Posts: 260
iTrader: (1)
Rep Power: 844
dave_5 is on a distinguished roaddave_5 is on a distinguished roaddave_5 is on a distinguished roaddave_5 is on a distinguished roaddave_5 is on a distinguished roaddave_5 is on a distinguished road
Re: Legal question: I own the IDN; someone owns the pinyin

yes you can TM xyz.com. Well not as a trade-mark, but as a service-mark SM.

I own a few SM .com's
Reply With Quote
  #19 (permalink)  
Old 5th August 2007, 06:32 PM
rhys's Avatar
Senior Member
 
Join Date: Jan 2006
Location: Seattle
Posts: 2,043
iTrader: (25)
Rep Power: 730
rhys is an unknown quantity at this point
Re: Legal question: I own the IDN; someone owns the pinyin

Then I can just file an application to TM "sex.com" or "dnforum.com" and then going after the f*((((ers using my trademark. Does that make sense?

Fact: A domain name cannot be trademarked in the US! It also isn’t protected by a copyright. However, if your business’ name is trademarked before anyone else is using it, then you could sue if someone registered a domain name using your business name (or a common misspelling) to sell products or services that are extremely similar to your own. For instance, if someone else ever tried to register something like Microsoft.net, or even microsort.net, for the purpose of selling computers and software, Microsoft could sue them to stop them from using the domain name. This is to stop scammers and competitors from trying to profit off of a trademarked name. In some countries, you can’t even register a domain with their country-specific extension unless you own the trademark there for that business name.

from: http://www.selfseo.com/story-12354.php

Quote:
Originally Posted by IDNCowboy
my lawyer TM'ed two of my domain .com's. He's a big IP & cyberlaw lawyer and also a law professor.

You are allowed
It's weird since it isn't allowed in U.S. Maybe you are trademarked in Canada? But seriously, perhaps we should ask your lawyer friend to give us a definitive comment on the matter.

Last edited by rhys; 5th August 2007 at 06:44 PM.. Reason: Automerged Doublepost
Reply With Quote
  #20 (permalink)  
Old 5th August 2007, 07:55 PM
Junior Member
 
Join Date: Jun 2007
Posts: 7
iTrader: (0)
Rep Power: 0
tnitty is an unknown quantity at this point
Re: Legal question: I own the IDN; someone owns the pinyin

Thanks Asiaplay and everyone who has responded.

I studied Chinese language (mandarin) for 4 years and lived in Taiwan, so I'm very familiar with Chinese homonyms, ambiguities, etc. Just to clarify: the domain I registered was a generic, dictionary word with 了 ("le") at he end. The following example is similar to what I registered, but uses a different word (I registered the second phrase):

1. 找到 (zhǎo dào): to find
2. 找到了 (zhǎo dào le): succeeded in finding / found it

The first term is a dictionary word, whereas the second term is more of a phrase. The second term was being used as the pinyin domain (i.e., zhaodaole.com) and I registered the IDN (找到了.com).

Although there are often ambiguities when using pinyin, in my case there is only one meaning, regardless of tones.

I will be careful not to park the domain until I'm sure it's ok.

Thanks

Quote:
Originally Posted by Asiaplay
Hi Tinitty,

Remember that for one word in Pinyin there are many different Chinese characters that share the same Pinyin - often this means that Pinyin words can have even more than a double meaning (even as combinations of two characters).

If you give me two Pinyin words I could only guess the most popular word in my mind for those - the word it is actually representing is not evident.
This is why it is hard to hold a chat online in something like Pinyin - and even spoken Chinese you will often hear people clarify a word (you mean Zhong as in Zhongwen to clarify the word actually being spoken).
Namely Pinyin for ascii also ignores the 4(5) tones in Mandarin (and even with same pronunciation, just like with English there can be two or three options of the word - context often dictates which one someone thinks the person means - in Pinyin there differences are not made clearly) - and this can make it even harder to argue it has just one meaning (matches exactly which Chinese written characters).

What is trademarked however is the Chinese characters generally... normally when it is a combination which is not naturally written as a word - therefore owning dictionary Chinese Character word IDNs or Pinyin ones, makes the word near impossible to trademark.
Actually trademarking is even more interesting than this for words - often you will see the same two Chinese characters used for brands in totally different product / service areas (who then would have the trademark claim - the one selling cooking oil or the one selling clothing or the one selling knifes)?

Just little clarification on Pinyin - to see what I mean, if you like try using http://www.mandarintools.com/worddict.html (selecting pinyin - and type in something like "bu yao" or whatever Pinyin you have - you will see the endless list of options for one character and many options for a combination of two characters together (remember this dictionary does not hold all Chinese words - just a few of the main ones - but shows Pinyin well).

Hope these comments are useful...

Cheers - Asiaplay
Reply With Quote
Reply

Thread Tools
Display Modes

Posting Rules
You may not post new threads
You may not post replies
You may not post attachments
You may not edit your posts

BB code is On
Smilies are On
[IMG] code is On
HTML code is Off
Trackbacks are On
Pingbacks are On
Refbacks are On



All times are GMT. The time now is 06:45 AM.

Site Sponsors
Your ad here
buy t-shirt
מחיר הזהב

Powered by vBulletin® Version 3.8.4
Copyright ©2000 - 2020, Jelsoft Enterprises Ltd.
Search Engine Friendly URLs by vBSEO 3.3.0
Copyright idnforums.com 2005

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33 34 35 36 37 38 39 40 41 42 43 44 45 46 47 48 49 50 51 52 53 54