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Old 31st May 2006, 05:54 PM
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Protecting domain names with Trademark

Prices of IDN domain names are growing.
Some of them are worth 4 or 5 figures.

I can imagine that somebody will try to register a Trademark and then will claim corresponding valuable domain name as "owner". This is cheaper than paying 5 figures to the owner of the domain name.

I wonder if holders of such domain names (even if they are generic names) apply for Trademarks to protect these names in order to avoid Domain name disputes.
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Old 31st May 2006, 06:12 PM
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Re: Protecting domain names with Trademark

Difficult to get a TM without being able to prove "use in commerce".

Not sure if showing a PPC page on the domain would be sufficient in the eyes of the USPTO.
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Old 31st May 2006, 06:15 PM
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Re: Protecting domain names with Trademark

Quote:
Originally Posted by Drewbert
Difficult to get a TM without being able to prove "use in commerce".

Not sure if showing a PPC page on the domain would be sufficient in the eyes of the USPTO.
no thats not what he means.... (regarding the PPC part as the domain owner would own the domain not the person holding the TM)

Someone in Japan would register a TM for sex.com(in japanese - not owning the domain) and then approach the sex.com guy and force him via WIPO to hand him over the domain cause he claims the trademark for it. This way he would save money instead of paying XXX,XXX for the name..............

The person applying for the trademark for instance in japan has to prove that it is in use. You cannot simply register the sex.com trademark. You must prove that you do use this in commerce. Otherwise you're dead in the water.
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Old 31st May 2006, 07:01 PM
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Re: Protecting domain names with Trademark

The laws in Japan might differ from common law used in America, could they be using the first to register claims all rights law?

Whoever registers that trademark gets the rights regardless of actual use and whether they are the first to use that trademark.
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Old 31st May 2006, 07:10 PM
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Re: Protecting domain names with Trademark

How the Hell can he claim Sex.com is trademark if he can't use it because he doesn't own it. I doubt whether the Japanese TM system would be that crass but even if it were I doubt that alone would win a case at WIPO where essentially it is necessary to prove that the domain was registered in bad faith. How could a post dated Trademark registration amount to proof of that, pray tell.
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Old 31st May 2006, 07:13 PM
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Re: Protecting domain names with Trademark

Let me look over Some Old DonWeb Threads because he shed a little bit of light on this
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Old 31st May 2006, 07:14 PM
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Re: Protecting domain names with Trademark

That's the way trademarks work in Japan. Look up the old donweb threads.
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Old 31st May 2006, 07:16 PM
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Re: Protecting domain names with Trademark

Any Wipo case would have to be fought in the U.S correct ?, therefore u.s laws would hold up i would think ?
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Old 31st May 2006, 07:24 PM
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Re: Protecting domain names with Trademark

Not necessarily, I am sure Wipo will eventually be arbitrated locally, but nevertheless under the same legal framework. If they start applying different standards in Japan to that they do everywhere else, then ICANN is going to get its arsed sued into the middle of next week! There was nothing in the small print when I bought my domains that it was only on the understanding that someone in Japan might have a prior claim. I bought my IDN on the same basis as every other domain in the dot com registery was sold. I therefore expect and deserve that any dispute procedure follows the same principals. If it goes any otherway then ICANN can expect to face the mother of all class actions. As the US Government has claimed ownership then they too might be implicated.
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Old 31st May 2006, 07:26 PM
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Re: Protecting domain names with Trademark

Quote:
Originally Posted by Rubber Duck
How the Hell can he claim Sex.com is trademark if he can't use it because he doesn't own it. I doubt whether the Japanese TM system would be that crass but even if it were I doubt that alone would win a case at WIPO where essentially it is necessary to prove that the domain was registered in bad faith. How could a post dated Trademark registration amount to proof of that, pray tell.
if that was directed to me....
thats what i'm trying to say - read it over
Don't mess with me :P I'll TM all 4000 of your domains in japan jk (donweb :P)

Quote:
Originally Posted by blastfromthepast
That's the way trademarks work in Japan. Look up the old donweb threads.
careful man he might TM all your terms :P

he says he owns 25% of all .jp domains registered or some sort? rofl
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Last edited by IDNCowboy; 31st May 2006 at 07:27 PM.. Reason: Automerged Doublepost
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Old 31st May 2006, 07:34 PM
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Re: Protecting domain names with Trademark

Something like this? I own this domain. エロ動画.com

Google Search Result:

エロ動画.com エロ動画配信サイトの一覧比較サイトです。ほぼすべての無修正エロ動画サイトを詳細 データで一覧・比較できます。並び替え機能もあり。
www.erodoga.com/



I have been seeing this go on a lot with several good idns that Japanese site owners don't own and are promoting. He's using the title to get higher Serp rankings. I emailed him to ask him to stop using my domain name in his site. I haven't heard anything back.


Here are the Ovt Stats.

エロ動画.com (Erotic Movie) Japanese
187797 エロ 動画
1136 エロ 動画 com

US Ovt.
408 エロ動画
72 エロ動画.com


He doesn't own the name I do. Period.
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Old 31st May 2006, 08:20 PM
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Re: Protecting domain names with Trademark

I would think that US law would prevail in disputes over .com. I'd be more worried about .jp and the whole trademark issue.

BTW, how much does a trademark cost in Japan? Just curious.
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Last edited by thefabfive; 31st May 2006 at 08:25 PM..
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Old 31st May 2006, 08:24 PM
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Re: Protecting domain names with Trademark

Quote:
Originally Posted by thefabfive
I would think the US law would prevail in disputes over .com. I'd be more worried about .jp and the whole trademark issue.

BTW, how much does a trademark cost in Japan? Just curious.

Exaclty , just think about it , in that case anybody can go to Japan and get a TM for anything and Say i Got it in Japan So its Valid ... Negative
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Old 31st May 2006, 08:28 PM
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Re: Protecting domain names with Trademark

>Any Wipo case would have to be fought in the U.S correct ?,

Nope. UDRP providers for .com are inthe USA, Switzerland and (maybe) Canada.


>therefore u.s laws would
>hold up i would think ?

I can point out hundred of UDRP cases that did things completely abhorrent to US law.

After the domain is stolen via UDRP the prior registrant can take it to court. Generally that's done in the country of the registrar (because the registrar is the one who has the domain on lock and has access to the unlock button), in the language that was used in the registration agreement.

That's ONE of the reasons I pay a premium to register names at OpenSRS - Canadian law applies.
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Old 31st May 2006, 08:29 PM
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Re: Protecting domain names with Trademark

Quote:
Originally Posted by sarcle
Something like this? I own this domain. エロ動画.com

Google Search Result:

エロ動画.com エロ動画配信サイトの一覧比較サイトです。ほぼすべての無修正エロ動画サイトを詳細 データで一覧・比較できます。並び替え機能もあり。
www.erodoga.com/



I have been seeing this go on a lot with several good idns that Japanese site owners don't own and are promoting. He's using the title to get higher Serp rankings. I emailed him to ask him to stop using my domain name in his site. I haven't heard anything back.


Here are the Ovt Stats.

エロ動画.com (Erotic Movie) Japanese
187797 エロ 動画
1136 エロ 動画 com

US Ovt.
408 エロ動画
72 エロ動画.com


He doesn't own the name I do. Period.
could it be possible he owns the pronounciation of it? (erotic movie)
transliteration or whatever you call it thus he would claim he owns the KW as well.
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Old 31st May 2006, 08:43 PM
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Re: Protecting domain names with Trademark

Quote:
Originally Posted by Jeff
could it be possible he owns the pronounciation of it? (erotic movie)
transliteration or whatever you call it thus he would claim he owns the KW as well.
Yeah that's the concern. Looking it up it's not a popular word.

Erodoga Jp overture
208 erodoga
21 erodoga com data php


Very little Serp results for Erodoga.

So people are not particularly looking for his site searching for エロ動画 The concern is many japanese sites are doing this either to get higher search rankings or claim first use. Is there going to be a sticky situation in the near future?
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Last edited by sarcle; 31st May 2006 at 08:46 PM..
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Old 31st May 2006, 08:49 PM
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Re: Protecting domain names with Trademark

I'd be interested in hearing Olney's or Edwin's take on this as they are actually in Japan. Or anyone else familiar with Japanese trademark disputes.
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Old 31st May 2006, 08:52 PM
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Re: Protecting domain names with Trademark

Quote:
Originally Posted by Jeff
could it be possible he owns the pronounciation of it? (erotic movie)
transliteration or whatever you call it thus he would claim he owns the KW as well.
A trademark infringement normally only occurs when their is a distinct similarity between visual devices. There are such things as sound trademarks but they are recognised in very few countries and their registration is highly technical. Even in the US I doubt if there are more than a dozen in place.

Simply having the equivalent in another script or something that sounds the same just won't wash because that has fundamentally nothing to do with the essential nature of a trademark.

I find it absolutely remarkable, how much is said on the subject by those who clearly know nothing about the subject.

Furthermore, there is nothing in law that states that one country has total juristiction over scripts in a given language just because that is where the language originates from. Whilst not as straight forward, a US citizen is quite entitled to take out an International Trademark in Chinese script provide that registration complies with all the normal rules.
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Last edited by Rubber Duck; 31st May 2006 at 10:19 PM..
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Old 31st May 2006, 09:34 PM
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Quote:
Difficult to get a TM without being able to prove "use in commerce".
I was amazed when I saw _how many_ trademarks were registered in European Union countries. They were registered to get valuable .eu-domain names during the first Sunrise fase. I'm talking about "sex", "hotels" and many many other generic words. One company could for example register more then ten Trademarks.

I doubt they had to prove "use in commerce" or they were being creative when filling in application forms.

Anyway they COULD do it, so it IS possible.

Just two examples:
American Embassy couldn't register "usa.eu". Usa.eu went to a holder of trademark "us&a".
Linus Torvalds couldn't register his baby "Linux.eu".

Last edited by rofsjan; 31st May 2006 at 09:51 PM..
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Old 31st May 2006, 09:39 PM
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Re: Protecting domain names with Trademark

so does earning 2c parking revenue constitute "first use in commerce" ?

if so, we're all home and dry.
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