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Is a Domain Name an Automatic Trademark? 251

Posted by Zonk
from the oh-the-fun-of-squatters dept.
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?"
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Is a Domain Name an Automatic Trademark?

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  • Well (Score:5, Insightful)

    by OverlordQ (264228) on Sunday November 04, 2007 @06:35AM (#21230191) Journal
    Question: Is a Domain Name an Automatic Trademark?

    Answer: Ask a lawyer not Slashdot.
    • Re:Well (Score:5, Informative)

      by rnswebx (473058) on Sunday November 04, 2007 @07:07AM (#21230307)
      Or, just visit the USPTO [uspto.gov] documentation relating to this. Essentially, it boils down to this:

      A mark composed of a domain name is registrable as a trademark or service mark only if it functions as a source identifier. The mark as depicted on the specimens must be presented in a manner that will be perceived by potential purchasers as indicating source and not as merely an informational indication of the domain name address used to access a web site.


      Looks pretty clear to me.
      • Alternatively, just to muddy the waters a bit:)

        A word or an expression must be registered before it becomes a trademark. Such a registration pays for eg the bureaucratic check that nobody else already owns a similar trademark. Only legal entities who have paid for a trademark from the appropriate body have a right and obligation to trademark protection within the jurisdiction of that body.

        There are nearly two hundred countries in the world, and each of these countries has a body responsible for trademar

        • by grishnav (522003)
          Incorrect, at least in the US. Trademarks work more or less like copyright; they are automatic upon use of the mark to trade goods or services (service marks).

          Registering does have several advantages (again, in the same vein as copyright) over not registering: Nationwide presumption, ability to bring suits in federal courts, etc.

          When you register a trademark, it is no longer a simple trademark, but a "registered trademark", denoted by a (r) rather than a (tm).

          If I recall, it's also pretty difficult to
          • Thanks for the clarification. I was thinking of registered trademarks, I don't think there's any point in simple (unregistered) trademarks. Since someone else can just register it at any time, having an (unregistered) trademark is effectively the same as having nothing at all.

            This would be slightly different with copyright. Once a work is published, there's a clear case of plagiarism if someone else decides to duplicate it or independently assert some rights over it.

        • Wrong (Score:3, Informative)

          by wytcld (179112)

          A word or an expression must be registered before it becomes a trademark.

          Wrong! I was some time back the clerk in charge of accepting trademark registrations for one of the many US states which base their trademark law on the Uniform Code. Trademark law in the US recognizes trademark rights as being acquired under Common Law by the use of the mark in association with the sale of goods or services. You cannot file a trademark registration with any of the majority of states using the Uniform Code until you ha

      • 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.
        • Re: (Score:3, Funny)

          by Stormie (708)
          If someone asks for legal advice online without telling us what country he's in, trust me, he's American.
    • Ask a lawyer not Slashdot.
      OK, I'll rephrase: "Has any of you asked a lawyer about this? I'd like to understand what I'm getting into so that I can make the best of my time with a lawyer."
    • by Z00L00K (682162)
      As long as you don't defame anybody with a similar name or product with similar name you shouldn't have to give up your domain name. In the Nissan case it's clear that there are two completely different entities with equal right and completely different businesses then it's clear that it's first come first served. Any conflict here should have been handled as a business agreement "We pay you to link to our site" instead of legal action.

      It will be a different case if they can prove that they held the domai

    • Which is exactly what you should do. Just take tour through your local yellow pages and call some sharks. Most of them won't charge you anything to answer a simple question. Some of them will be more than willing to fire off a letter for you for 50 bucks or so. A letter from a lawyer can work wonders. Just tell this fucker to take a hike all nice and legal.

      Of course I like the idea of registering yours as trademark and suing the fucker yourself. I hate domain farmers. I registered a domain for my

  • by VirusEqualsVeryYes (981719) on Sunday November 04, 2007 @06:36AM (#21230197)
    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.
    • by ydrol (626558)
      A "trademark" is one's distinctive mark within a trade,

      Like "Blue Magic"..

    • 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.

      Whether you like it or not - delivering advertising is a product.

      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.

      One of the key elements of defending yourself against a charge of

    • by Solandri (704621) on Sunday November 04, 2007 @03:49PM (#21234103)
      Even if they own a trademark on SimpleDog, that's insufficient grounds for a domain transfer. ICANN has some pretty well-established arbitration rules [icann.org] for these cases. Of particular note are sections 4a and 4b. A valid complaint exists only if:
      • (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 [nissan.com]. 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.)

  • Sucker (Score:5, Funny)

    by doyoulikeworms (1094003) on Sunday November 04, 2007 @06:38AM (#21230213)
    I'm registering www.tehsimpledog.com as well as www.thesimpledog.net.

    Evil laughter.
    • by telbij (465356)
      If you register another 100 or so typos maybe you pick up 0.1% of his intended traffic, all for the low low price of $1000 a year!!
  • 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.
  • by Colin Smith (2679) on Sunday November 04, 2007 @06:41AM (#21230227)
    Then sue the fucker. For real.

     
  • Trademarks (Score:5, Informative)

    by GhengisCohen (778368) on Sunday November 04, 2007 @06:42AM (#21230229)
    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.

    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 .com is supposed to be a US thing it would be subject to US law first.

    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.
    • Re:Trademarks (Score:5, Informative)

      by damsa (840364) on Sunday November 04, 2007 @06:58AM (#21230277)
      You don't need to register to get trademark protection. You get protection by simply using the name in commerce. That's the TM mark. You may register with either the state or with the USPTO once you register you fet the circle R mark. Simpledog.com is probably not using the name in commerce. Also the OP probably cannot register because he currently does not have a product. You must use the product first and then register. insert standard this is not legal advice here.
      • Re:Trademarks (Score:4, Informative)

        by hyc (241590) on Sunday November 04, 2007 @08:16AM (#21230515) Homepage Journal
        Close. Only Federally registered marks are allowed to use the (R) mark. You can register at the state level but that's essentially meaningless; there are no laws giving you any particular protection for those.

        I happen to know all of this because I went thru the legwork of registering my band name "Highland Sun" with the USPTO. A horse ranch somewhere in Kentucky (IIRC) wrote me a letter claiming I was infringing on their name "Highland Sun Farms", registered in their state and I wrote back essentially (1) we're not in similar businesses, no one will ever get us confused and (2) mine is Federal, yours is state; if you want to push this, you'll lose. They went away.
      • by Jim Hall (2985)

        You don't need to register to get trademark protection. You get protection by simply using the name in commerce. That's the TM mark. You may register with either the state or with the USPTO once you register you fet the circle R mark. Simpledog.com is probably not using the name in commerce. Also the OP probably cannot register because he currently does not have a product. You must use the product first and then register. insert standard this is not legal advice here.

        I'll insert my knowledge from when I claimed "FreeDOS" as a trademark [freedos.org] in 2001. (Although I now believe there is no difference between "typed drawing" of "FreeDOS" and "FREEDOS" in this context.)

        I had once considered applying for a registered trademark, which is ® not TM, but the issue is tricky. I think I have come to a reasonable understanding of trademarks in the US. First of all, to apply for a registered trademark (®) in the US, you need to pay a fee to the US Patent and Trademark Office (US

      • by eonlabs (921625)
        Also, think of the free advertising you just provided him by dumping his name on slashdot. There's no such thing as bad publicity when you're already a dick. How much traffic does that guy's site have? Instant gratification.

        I'm sure the phrase http://www.ihateyouall.com/ [ihateyouall.com] isn't trademarked yet, but the site has been there for almost four years now, if I remember correctly. That won't stop me from saying I Hate You All for the stupid things people do.

        Slashdot: Still not a lawyer, no matter how many times
      • by thefinite (563510)
        And just having a trademark on the Internet doesn't mean that you are the only one who gets to us that name on the Internet. Different products in different industries can use the same name as a trademark. Ritz crackers and the Ritz hotels both get to have webpages with the word Ritz in them. One other thing, unless your website is actually about a simple dog, it's probably not a descriptive mark.
      • by pongo000 (97357)
        Or you can use the SM mark if it's a service oriented business. Either way, to even register a trademark, one must show it has *already* been used in legitimate commerce by providing proof of commerce.
    • (I guess since .com is supposed to be a US thing it would be subject to US law first.
      Since when is the international domain for commerce supposed to be a US thing? Do you guys think you've cornered the market or something...
      • by cdrudge (68377)
        Hey, it's our internet. We are just letting the rest of the world use it too.
    • He might even be able to register "thesimpledog" and then claim the simpledog.com infringes him! Still simpledog.com is a sleazy link farm, but they are on the air, thesimpledog.com doesn't even have a domain-holder site on the net, so he's going to have to get something going soon. Some how I imagine if he told those cretins to send all future correspondence to his lawyer's office, the whole thing would just go away. If your running a site based on the premise that people will make a mistake in the URL and
  • by sakdoctor (1087155) on Sunday November 04, 2007 @06:43AM (#21230239) Homepage
    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.
  • ridiculous. (Score:4, Informative)

    by Xaositecte (897197) on Sunday November 04, 2007 @06:49AM (#21230259) Journal
    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?
    • Re: (Score:3, Funny)

      by rking (32070)

      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?
      The folks at whitehouse.gov don't want to make the case that they're trading under that name. In court they'd tend to actively claim that they're not for sale. Hence no trademark issue.
    • Re:ridiculous. (Score:5, Informative)

      by oDDmON oUT (231200) on Sunday November 04, 2007 @07:23AM (#21230367)
      Have you been out to www.whitehouse.com [whitehouse.com] lately? They've turned into a clearinghouse for the '08 candidates, both Rep & Dem.

      No, really, they have.

      They're even running political polls. Granted the last one, from the 8th of October, was "Should George W. Bush be impeached?" and the current one is "Does The Media Favor One Party Over Another In It's Reporting?", but the days of being NSFW seem to be over.

      At least until cadidates have been picked. : )
      • by Nazlfrag (1035012) on Sunday November 04, 2007 @10:17AM (#21230923) Journal
        They're just diversifying which whores get on their site.
      • I was actually at work when I posted that...

        Ergo, I didn't check.
  • Why would you answer and confirm your email address to someone who is about the same as a spammer?
  • No, but... (Score:5, Insightful)

    by NMerriam (15122) <NMerriam@artboy.org> on Sunday November 04, 2007 @07:19AM (#21230351) Homepage
    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.
  • by markdavis (642305) on Sunday November 04, 2007 @07:36AM (#21230417)
    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
    • Re: (Score:2, Informative)

      by Anonymous Coward
      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.

      Did you guys miss the part in the summary where he says "something like thesimpledog.com"? The use of the word like in there indicates that this isn't the actual thing, but something similar to it. There are quite a few responses here basing your answers on the appearance of the example website which isn't the site he's actually talking about.
      • by markdavis (642305)
        Yep, I missed that part. Sorry! That is what I get for replying to something so early in the morning.
  • by Alex Ethridge (985475) on Sunday November 04, 2007 @07:56AM (#21230459)
    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.

    There was also a man named McDonald who was also a software developer. You guessed it. He registered McDonalds.com and .net before McDonald's Hamburgers did. McDonald's sued and lost and finally bought the name from Mr. McDDonald.

    Here's an article: http://msl1.mit.edu/furdlog/?m=20040306 [mit.edu]
    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.
    • by Samurai Cat! (15315) on Sunday November 04, 2007 @08:11AM (#21230507) Homepage
      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 [wired.com]
      • by Dunbal (464142)
        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.
        • by grumling (94709)
          Boy, they play hardball... Don't mess with the golden arches or you may end up at the pearly gates.
    • 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.

      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,

    • 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 ele
  • http://theyellowpages.com/index.php [theyellowpages.com] vs.http://www.yellowpages.com/?From=Branding_ypbrnd_yellowpages vs. http://yellowpages.msn.com/ [msn.com]
    vs. http://www.yellow.com/ [yellow.com] vs. http://www.yp.com/ [yp.com] vs. http://www.authoryellowpages.com/ [authoryellowpages.com] vs. http://yellowpages.washingtonpost.com/ [washingtonpost.com]
    vs. http://www.yellowpages.ca/ [yellowpages.ca] vs. http://www.musicyellowpages.com/ [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.
  • by richg74 (650636) on Sunday November 04, 2007 @09:02AM (#21230623) Homepage
    There is a Groklaw page [groklaw.net] that has a pretty good summary of the law (in the USA) regarding trademarks.

    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.

  • 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.
    • by julesh (229690)
      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.

      Capital letters are usually required for any proper noun, and trademarks are proper nouns. But that's a grammatical rule of English, not a legal rule concerning trademarks.

      Of course domains don't use uppercase, so this is where the ambiguity is.

      Domain names are case insensitive. You're free to write your domain name with a capital if you wish.
    • by qzulla (600807)
      But then I couldn't write this sentence - Windows are transparent.

      qz
  • by sammy baby (14909) on Sunday November 04, 2007 @10:10AM (#21230871) Journal
    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 [shieldmark.nl], 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 [icann.org] 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.
  • by RealityThreek (534082) on Sunday November 04, 2007 @10:12AM (#21230887)
    .. is just someone trying to get hits on simpledog.com. He's playing us all for fools.
  • by cenonce (597067) <anthony_t.mac@com> on Sunday November 04, 2007 @10:17AM (#21230919)
    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.
  • ... 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.
  • 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 [uspto.gov] and click "search" over in the right-hand box.

    Step 2: How strong is the trademark? A mark like Exxon is extremely stro
    • by julesh (229690)

      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.


      Not really, no. You're free to use "exxon" in any way you like as long as it does not cause confusion between you or a business you are promoting and Exxon. A trademark is only enforceable in respect of this.

      IANAL; this is not legal advice.
      • by Spazmania (174582)
        Exxon was cited by my IP law professor as, "this is an example of what it takes to create a trademark that genuinely can't be used by anyone else." But YANAL, so I guess you know more than he does. Because "exxon" has no meaning in any language on earth except in reference to the oil company, any use of the name will necessarily be associated with (thus cause confusion with) the company.
  • 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
  • by TheWorkingStiff (1183897) on Sunday November 04, 2007 @12:08PM (#21231707)
    I'm the guy who asked the original question... It looks like the general consensus is "Maybe... maybe not."

    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/ [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.

    • by julesh (229690)
      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.

      As far as I understand it, and assuming you're in the US, not at all. See here [blogspot.com] for a blog entry written by C. E. Petit, a successful IP lawyer. I quote:

      For one thing, it's a lot harder to get an award of attorney's fees in trademark actions (requires an "exceptional case") than in copyright actions.
    • by Ritchie70 (860516)
      If you like that domain name, then stick up for it. If it was just a whim, you're right, just move on.

      Based on searching the USPTO, it looks to me like you're the only one with a registered trademark.

      GoDaddy is your slimeball's registrar as well, by the way.

      I would do a whois search and have a lawyer send a "nasty lawyer letter" as I call them to the snail-mail address, with a PDF CC to the email address you've been dealing with. In my experience, people take "F.U." letters from lawyers more seriously than
    • by Todd Knarr (15451)

      The question wouldn't be about the UDRP, I'd start with the trademark itself. If he doesn't have a registered trademark, register the mark yourself. In both the courts and the UDRP, if one party has a valid registration for the mark and the other doesn't the party with the registration has an overwhelming advantage (we can thank our corporate overlords for this, but occasionally it can be used to advantage). In fact, once you've got the registration in your name, you can probably force him to give up his do

    • by jellie (949898)
      (Somewhat offtopic)

      I realized that most lawyers only take cases they *think* they would win.

      I don't think that statement is necessarily true. If they're on contingency, then that would probably be true. However, I don't think lawyers in (relatively) small trademark case would be on contingency. Lawyers would want to be billed by the hour.

      I remember a study [nytimes.com] that found that court-appointed, private attorneys cost the government millions more than public defenders would. Additionally, the average sentence received by the private attorneys was significantly longer. The reasoning by

  • Put a link on your page for any viewers who were looking for simpledog.com and arrived at your domain by accident, and don't use any content or logos from his site.

    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 e

  • 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.
  • OK, let's do some lookups.

    First, the USPTO trademark database. [uspto.gov] "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. [domaintools.com]. "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

  • by istartedi (132515)

    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

  • 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...

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