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rofsjan
31st May 2006, 05:54 PM
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.

Drewbert
31st May 2006, 06:12 PM
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.

IDNCowboy
31st May 2006, 06:15 PM
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.

touchring
31st May 2006, 07:01 PM
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.

Rubber Duck
31st May 2006, 07:10 PM
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.

thegenius1
31st May 2006, 07:13 PM
Let me look over Some Old DonWeb Threads because he shed a little bit of light on this

blastfromthepast
31st May 2006, 07:14 PM
That's the way trademarks work in Japan. Look up the old donweb threads.

thegenius1
31st May 2006, 07:16 PM
Any Wipo case would have to be fought in the U.S correct ?, therefore u.s laws would hold up i would think ?

Rubber Duck
31st May 2006, 07:24 PM
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.

IDNCowboy
31st May 2006, 07:26 PM
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)

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

sarcle
31st May 2006, 07:34 PM
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/ (http://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.

thefabfive
31st May 2006, 08:20 PM
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.

thegenius1
31st May 2006, 08:24 PM
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

Drewbert
31st May 2006, 08:28 PM
>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.

IDNCowboy
31st May 2006, 08:29 PM
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/ (http://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.

sarcle
31st May 2006, 08:43 PM
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 (http://inventory.overture.com/d/searchinventory/suggestion/?term=erodoga%20com%20data%20php&mkt=jp&lang=ja_JP)


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?

thefabfive
31st May 2006, 08:49 PM
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.

Rubber Duck
31st May 2006, 08:52 PM
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.

rofsjan
31st May 2006, 09:34 PM
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".

alpha
31st May 2006, 09:39 PM
so does earning 2c parking revenue constitute "first use in commerce" ?

if so, we're all home and dry.

Rubber Duck
31st May 2006, 10:29 PM
so does earning 2c parking revenue constitute "first use in commerce" ?

if so, we're all home and dry.

I would suggest that actually registering it constitutes first use.

Yahoo has attempted to register Y.com and others have pursued other single Alphabetics which are IANA reserved. I don't believe any of them have been successful. I think it will actually be very difficult to register a domain name as a trademark unless you can show that you own it. I don't think that simply registering the keyword whether generic or otherwise will give you prior right over any domain name in any particular extension. Giving out name on the basis of a Trademark is one thing, calling them back in on that basis is entirely another. Trademarks can have limited regional juristiction and are generally limited to a few classes. The cost of going across the board is huge and would generally totally dwarf the value of the domain. Unless you have a fully International Trademark in every possible category, it is difficult to use that registration as evidence of bad faith, which is the accepted criteria, especially if all those Trademarks were taken up after the registration occurred.

IDNCowboy
31st May 2006, 10:38 PM
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.
For the market of Japan it could be a different story. (regarding transliteration of domains since until now obviously many people didn't know you could register names in different languages).

For your information I've taken law courses and I will be going to law school. Don't call me an idiot. You are in the U.K. and I am in the U.S.... big difference buddy.

That is true but you would be aiming towards the japanese market and not towards another nation. Thus you could be doing commerce in japan.

I have a few TM's and have dealt with cybersquatters in this measure.

blastfromthepast
31st May 2006, 10:39 PM
so does earning 2c parking revenue constitute "first use in commerce" ?

if so, we're all home and dry.

According to decisions in the US, it does constitute a valid use in commerce of the domain, as long as you don't have "this domain is for sale" or "this domain is not being used" or some other foolishness that occasionally comes up on parking pages somewhere on the page.

Rubber Duck
31st May 2006, 10:47 PM
For the market of Japan it could be a different story. (regarding transliteration of domains since until now obviously many people didn't know you could register names in different languages).

For your information I've taken law courses and I will be going to law school. Don't call me an idiot. You are in the U.K. and I am in the U.S.... big difference buddy.

That is true but you would be aiming towards the japanese market and not towards another nation. Thus you could be doing commerce in japan.

Well I have had a good look at the US situation and it is not intrinsically different than here. Trademarks are governed by International treaties, otherwise the US wouldn't be able register International Trademarks that were worth the paper they are written on. It stands to reason that basic definition of what a Trademark is the same in every country in the World. Transliterations and Translation of Trademark text are not covered under the original Trademark. If you need to cover these a separate Trademark would need to be registered in each case.

Jeff, I am sorry that I am going to have to defer to your expertise in so many fields. It makes me wonder why you would need to study, why not just issue yourself a few degrees from your own university and save yourself the bother.

IDNCowboy
31st May 2006, 10:49 PM
Jeff, I am sorry that I am going to have to defer to your expertise in so many fields. It makes me wonder why you would need to study, why not just issue yourself a few degrees from your own university and save yourself the bother.
I don't have to listen to an arrogant british soldier. When you get your foot out of your mouth perhaps we can talk once more. You act like you're right in every field there is.

Also I graduated with departmental honors with one of the highest GPA's in my department from a popular business school. I have had established web businesses for years...(Not domains). Good luck with your massive parking lot.

For the trademark to be worldwide(in participating countries) you have to file with that madrid international system.

At least this time when users in other countries such as Japan can mutter damn british instead of damn americans as so many were taken by you ;).

rubber duck claiming that selling contact lenses online is not a popular business
http://www.dnforum.com/f4/contactlenses-tv-thread-125698.html?highlight=contact+lenses
Maybe you can have your kids teach you what is hot and whats not on the Net? ;-)

Rubber Duck
31st May 2006, 11:05 PM
I don't have to listen to an arrogant british soldier. When you get your foot out of your mouth perhaps we can talk once more. You act like you're right in every field there is.

Also I graduated with departmental honors with one of the highest GPA's in my department from a popular business school. I have had established web businesses for years...(Not domains). Good luck with your massive parking lot.

For the trademark to be worldwide(in participating countries) you have to file with that madrid international system.

At least this time when users in other countries such as Japan can mutter damn british instead of damn americans as so many were taken by you ;).

Well at least we are now agreed that there is an International System and the term Trademark actually means the same thing in each country. Now all we need to do is to establish that a trademark is not the meaning or sound of a word, but a visual devise and we might start getting some rational discussion on this thread.

It may be useful for those of you considering a career in Trademark Law to look the term up on http://en.wikipedia.org/wiki/Trademark where there is a very useful general synopsis.

The term Generic is one defined in Trademark law and a brief study of the basic definition will be of benefit to all:

<<A generic term is the common name for the products or services in connection with which it is used, such as "salt" when used in connection with sodium chloride. A generic term is not capable of serving the essential trademark function of distinguishing the products or services of a business from the products or services of other businesses, and therefore cannot be afforded any legal protection. This is because there has to be some term which may generally be used by anyone - including other manufacturers - to refer to a product without using some organization's proprietary trademark. Marks which become generic after losing distinctive character are known as genericized trademarks.>>

alex
1st June 2006, 03:35 AM
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/ (http://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.

I have also noticed a number of sites doing this with my domains. It seems to me that it may be a common practice for Japanese language ASCII sites to title their site with the Kanji.com, even if they don't have a clue about IDNs.

I don't think that will give them any legal rights as far as general IDN terms go, but it may take some legal doing to get Japanese ASCII owners to remove the Kanji.com from their site and meta tags. I don't see it being an easy battle for foreign IDN owners to win. Things probably won't start to change until more Japanese companies start focusing on IDNs and run into this issue.

mulligan
1st June 2006, 03:46 AM
I have a few names that if googled "xxxx.com" pull up that exact term.
One in particular (Japanese) has 13,300 results for the exact term with extension.
I only took this name a few weeks ago and Im sure those results were there before I took it. Whats that all about?

blastfromthepast
1st June 2006, 04:20 AM
I don't think that will give them any legal rights as far as general IDN terms go, but it may take some legal doing to get Japanese ASCII owners to remove the Kanji.com from their site and meta tags. I don't see it being an easy battle for foreign IDN owners to win. Things probably won't start to change until more Japanese companies start focusing on IDNs and run into this issue.

When someone here comes up with a good cease and desist letter in Japanese, please post it. These guys are taking advantage of our good names!

They had 5 years to get the IDN for their own site. They didn't. It's time for them to be called on it.

drbiohealth
1st June 2006, 06:29 AM
Dave, are you suggesting that Microsoft has no right over "Microsoft transliterated in Japanese"? i.e., companies with trademarks in English have no right over their transliterated terms in other languages!!! Well, I know that copyright material in one language can not be translated into any other. Not clear on trademark though.


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.

Rubber Duck
1st June 2006, 06:53 AM
Dave, are you suggesting that Microsoft has no right over "Microsoft transliterated in Japanese"? i.e., companies with trademarks in English have no right over their transliterated terms in other languages!!! Well, I know that copyright material in one language can not be translated into any other. Not clear on trademark though.

No, unless they can prove useage none at all. In Japan they would actually have to register as useage means nothing to the Japanese. Even if Trademark law recognised translation and transliteration, there would simply be too much ambiguity to make this a practical solution. Just imagine on trying to agree how to transliterate into Kanji, there much be dozens of possibilities.

A trademark infringment in 99.9% is one where another user is promoting goods in the same Classification using a visual device, which may be text or a logo that is sufficiently similar to that used by the Trademark holder, so as to be deemed to cause confusion to the consumer. Typosquatters are therefore by definition vulnerable to WIPO.

drbiohealth
1st June 2006, 07:23 AM
Do you mean that if "Microsoft in Japanese" is not a registered mark then domain owner having "Microsoft in Japanese" is safe and can use such a domain for any activity other than computer related?


No, unless they can prove useage none at all. In Japan they would actually have to register as useage means nothing to the Japanese. Even if Trademark law recognised translation and transliteration, there would simply be too much ambiguity to make this a practical solution. Just imagine on trying to agree how to transliterate into Kanji, there much be dozens of possibilities.

A trademark infringment in 99.9% is one where another user is promoting goods in the same Classification using a visual device, which may be text or a logo that is sufficiently similar to that used by the Trademark holder, so as to be deemed to cause confusion to the consumer. Typosquatters are therefore by definition vulnerable to WIPO.

Rubber Duck
1st June 2006, 07:52 AM
Do you mean that if "Microsoft in Japanese" is not a registered mark then domain owner having "Microsoft in Japanese" is safe and can use such a domain for any activity other than computer related?

Safe is not the right word with Microsoft as they would starve you to death whilst you were winning. The liitigation would be endless and you could not finance it. WIPO is not the only recourse for defending a Trademark and in many ways it is least painful route.

Microsoft, however, would be well advised to get it registered as Google have ended up paying very large amounts in hard cash for domains where the the useage of the Trademark would not have been difficult to prove if that had been a criteria.

rhys
3rd March 2008, 01:50 AM
Admin please banish this presumably japanese spammer and his spam into the hinterlands.

TonyP
3rd March 2008, 03:25 AM
TMs are country- or region-specific.
It costs $4,700 to get EU TM these days, $500 US, $450 Japan, etc.

You get TM only where you operate.
Apple still doesn't have a clear US TM for iPhone - there are probably 6 iPhones out there.
There are 3 gPhone TMs in US, and none of them is by Google.
hehe

Pete
3rd March 2008, 05:05 PM
I have a bit of experience with trademarks, own a few US ones.
Here's what I know about latin generic terms:

-Trademark (words) are category and country specific.
-You can trademark a word in the US for 275$, 350$ in Europe I believe (which gives you a pan-EU TM; not sure about this). Similar conditions apply for both regions.
-You can trademark a generic term, but not in the category of what the word means (you can't trademark tree if you sell trees). This means you could have 20 valid trademarks for the same generic, as long as they are for different categories of goods or services.
-For "famous marks" (Apple, etc), you can usually have only one TM because the presumption is that the company makes so many products that the one you are trying to TM could eventually be done by them too (which makes you profit from an undue world-wide reputation).
-For your TM to be defendable, you have to have used it in commerce for 5 years.
-This is valid in both US and UK, probably EU as well.
-If you were to defend your domain, the location of the actual registrar would play a certain role, a bit like the location of an incorporation.
-Non-generic (invented terms) are entirely different.
-Non-Latin I don't know about.
-Different TM laws apply in Asia.

Feel free to correct me, but I'm pretty certain about the categories and 5 years items.

Cheers