Legal question: I own the IDN; someone owns the pinyin

[tnitty]

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

[touchring]

No, they look different. Same meaning does not infringe trademark.

[Silhouette]

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 :)

[tnitty]

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.

[touchring]

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.

[touchring]

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! :)

[Silhouette]

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)

[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

[touchring]

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. :)

[jacksonm]

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...

.

[Silhouette]

thank you for sharing...


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 :)

[IDNCowboy]

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

[touchring]

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?

[IDNCowboy]

Are your domains generics?
they are keywords

two worder .com

[touchring]

they are keywords

two worder .com


Like funnyvideos.com?

Can one really tm funnyvideos.com?

[IDNCowboy]

Like funnyvideos.com?

Can one really tm funnyvideos.com?
alot of people do it

[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

[dave_5]

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

[rhys]

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

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.

[tnitty]

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

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

[Asiaplay]

Hi Tinitty,

Great to have you in the forum... you have put a lot of effort into learning Chinese, which is great... (I was wondering on this before I answered - so sorry for the long winded Pinyin examples ;) ).

For the .cn or .tw...
Short answer then is you will have to check the trademark registers...
In most other countries using past tense participle I would say it still counts as a dictionary term (is, was etc.) - but in China this can be a grey area (and maybe also true in Taiwan).
This is assuming you are registering the .cn or .tw version.

For the .com .net .biz versions
However if you are registering the .com (read up on the USA trademark / domain registration rules) - from what others in here are saying the jurisdiction for these fall under the trademark / domain laws of the country running the central domain registrar (and that is USA law)... assuming this is the case I would think you would be fine with these type of names there for a .com, net, .biz etc.
There is also a USA trademark register discussion run at dnforum - see http://www.dnforum.com/forumdisplay.php?f=175

Taiwan and Hong Kong registrars will also have slightly different policies - once again based on local laws (my gut feeling is you would also be ok with the .hk version - if you like, I could phone them and ask (or you could e-mail them and ask).
I know for some ccTLD there is a set time-frame to claim a trademark within, from the launch date of the IDN extension (also for .co.hk you basically need a company name to register those - and the term needs to be very close to your company name.. can be two characters rather than the full name though).

Know this is not a super clear answer - but myself I would register where the trademarks are less likely to exist (perhaps the .com, .net and .biz versions).
Also I would look at the power of the brand / company behind the Pinyin name (can they really afford the cost to sue or not and could there be another brand using the same name anyway). Perhaps also make the content of your domain different than that of the brand which has the Pinyin named domain.

Cheers - Asiaplay

[dusty]

I do not understand the whole pictures, but a few comments on the subject that might help.

China is a first to register jurisdiction. If you plan to build a business on the domain you will want to file in the PRC as well as HK and Taiwan. I was not able to pull up the site zhaodaole.com to see what they are about. If you care about the US, then note it is a little different in that registration means less. TM rights under US law are awarded to the first to use the mark, which is not always the same as the first to file or even secure a registration.

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)?

This is where classes come in. There are several classes of goods and services that you select when registering a mark. Different companies or individuals can have the same mark with different class. Therefore both the clothing company, cooking oil company, and the one selling blades could have a valid mark. In most places registering additional classes costs extra.

This can also get tricky accross country or even region lines. Different companies could have TM rights for the same name and class in different regions or countries.

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

I have seen .com at the end of several TM registrations, but I really do not think it necessary or even a good idea in most jurisdictions unless you also plan to file without the .com. The more simple your mark the more it covers.

http://www.xn--fiq.com/com-trademark.gif


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. :)

This is a good game plan. Like he said, it would be more safe to avoid displaying things covered by the classes already having TM in your target region.

[tnitty]

Hi Tinitty,

Great to have you in the forum... you have put a lot of effort into learning Chinese, which is great... (I was wondering on this before I answered - so sorry for the long winded Pinyin examples ;) ).

Thanks... Yeah, "effort" is an understatement. I spent many, many long hours studying :) But that was a long time ago and I haven't been practicing, so now my language skills are very "马马乎乎" -- unfortunately.

I'm using the .com extension, not the .cn, .tw, or .hk, etc. So perhaps I'm better off, as you suggested.

Regards,
Tnitty

[touchring]

Thanks... Yeah, "effort" is an understatement. I spent many, many long hours studying :) But that was a long time ago and I haven't been practicing, so now my language skills are very "马马乎乎" -- unfortunately.

I'm using the .com extension, not the .cn, .tw, or .hk, etc. So perhaps I'm better off, as you suggested.

Regards,
Tnitty


Interesting, where did you learn your mandarin from? :)

[tnitty]

Interesting, where did you learn your mandarin from? :)

San Jose State, Stanford, and 臺灣大學 -- more specifically, 台大國際華語研習所, also known as ICLP at National Taiwan University ("Tai Da").