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Archive for the ‘trademark’ Category

CraigsList sues JamesList, the “Craigslist for the rich”

July 20, 2012craigslist, Domaining, Domainnamewire, jameslist, Policy & Law, trademarkComments Off on CraigsList sues JamesList, the “Craigslist for the rich”

Confusingly similar yacht sales platforms.

If you’ve never heard of JamesList, it may be because you aren’t in the market for a Yacht. Or you wouldn’t think of buying one used.

Craigslist has sued (pdf) Jameslist, a classified site for luxury goods such as yachts, jets, and helicopters, for trademark infringement. Craigslist says JamesList’s name is confusingly similar to it, and that JamesList purposely selected its name to sound similar.

Craigslist may have a point, as noted in an article about JamesList in 2010:

“[JamesList CEO] Perski acknowledged the stark simplicity of his new venture by giving it a cheeky name, an obvious word-play on the ubiquitous classified ad site CraigsList.com.”

Jameslist raised the ire of Craigslist when it filed for U.S. trademarks in 2009, which it later abandoned when Craigslist filed an opposition.

Among Craigslist’s requests: that the domain name JamesList.com be “forefeited, cancelled, or transferred to craigslist”.


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Owners of FirstDibs.com and 1stDibs.com duke it out in court

July 12, 20121stdibs.com, Domaining, Domainnamewire, firstdibs.com, lawsuit, Policy & Law, trademarkComments Off on Owners of FirstDibs.com and 1stDibs.com duke it out in court

1stDibs.com says owner of FirstDibs.com is cybersquatting.

The registrants of FirstDibs.com and 1stDibs.com are embroiled in a court battle, with the latter saying that FirstDibs.com infringes its trademarks.

The owner of FirstDibs.com is seafood wholesaler Seafood Supply Company of Dallas, Texas. 1stDibs.com is an online retailer offering upscale home decor, jewelry, and real estate.

In a lawsuit (pdf) filed in New York late last month, 1stDibs.com said it first informed Seafood Supply that it was infringing on its mark back in 2008. 1stDibs.com also claimed that Seafood Supply didn’t register the domain until 2004, four years after 1stDibs.com began using its “1stDibs” mark in commerce.

But in its own lawsuit (pdf) over the matter (for declaratory judgment), just filed in Texas, Seafood Supply says it registered the domain name in 1997, which was before 1stDibs.com was registered.

Historical whois records from DomainTools seem to verify Seafood Supply’s claim, although the domain has bounced around and apparently expired at some point. The oldest historical record from 2001 shows “CLARK HOUSE INC” as the registrant, although the contact is with Seafood Supply Company. That record shows a 1997 creation date. The domain is then transferred to someone in New York for a few years before landing back under Seafood Supply’s control in 2004 with a 2004 record creation date.

So why now, in 2012, is 1stDibs.com following up on its 2008 demands with a lawsuit?

According to 1stDibs.com, Seafood Supply changed FirstDibs.com to a parked domain earlier this year. It has since forwarded the domain to its Seafood web site.

Here’s my opinion based solely on the two lawsuits filings and historical whois information:

* 1stDibs.com had no reason to complain back in 2008. 1stDibs.com and FirstDibs.com are two completely different domains owned by businesses in two different industries. And, FirstDibs.com was originally registered prior to 1stDibs.com. Also, 2008 was pretty late to claim infringement.

* The only rationale for filing a lawsuit now is that the domain was allegedly parked earlier this year and showed ads related to 1stDibs.com’s business. First, it’s unclear if Seafood Supply parked the domain or if its registrar did. There’s a good chance it was the registrar. Second, would a very short period of parking mean a domain name registered in 1997 should be transferred to a business that obviously settled on 1stDibs.com because FirstDibs.com was taken?


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Is this Trademark Lawsuit Unethical or Something Worse?

September 24, 2011Domaining, Domainnamewire, lawsuit, marchex, Policy & Law, trademarkComments Off on Is this Trademark Lawsuit Unethical or Something Worse?

Trying to get a domain name that existed before your trademark.

I’m a big supporter of intellectual property rights. Unfortunately I’m stuck writing more often about lawyers and companies that overstep their bounds.

The latest case: Smart Tax Holdings, LLC. The company filed a federal lawsuit (pdf) against Marchex for the domain name SmartTax.com.

The plaintiff started using the name “Smart Tax” in 2006 and filed a trademark on it. The trademark was granted in November 2008.

SmartTax.com was originally registered in 2000. It was part of the Ultimate Search portfolio later acquired by Marchex.

So Marchex has owned the domain name since well before Smart Tax Holdings, LLC even started using the Smart Tax term. Yet its lawyer has the gall to write this:

Defendant has not used Plaintiff’s mark coincidentally, but rather chose to associate Plaintiff’s mark with its own website for the sole purpose of unfairly steering traffic thereto.

How can you suggest that a company is “unfairly steering traffic” to a domain name it owned many years before you existed?


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iPhone Jailbreak Site Files Lawsuit Over Domain Name

August 22, 2011apple, Domaining, Domainnamewire, iphone, lawsuits, Policy & Law, trademarkComments Off on iPhone Jailbreak Site Files Lawsuit Over Domain Name

Company behind Cydia app directory files lawsuit.

After losing a dispute under the uniform domain name dispute resolution policy (UDRP) in March, a jailbreak iPhone app store has filed a lawsuit in an effort to get the domain name Cydia.com.

Saurikit, LLC has a directory of apps that work on jailbroken iPhones and iPod Touches that it hosts at cydia.saurik.com. It also has a U.S. trademark for “Cydia”.

Earlier this year it filed a UDRP to get Cydia.com. The UDRP panel ruled against Saurikit, noting that the domain name was registered six years before Saurikit started using the name Cydia.

The company’s in rem lawsuit against the Cydia.com domain name alleges that the owner of the domain name changed the content of the page from a parked page to one about Apple products after it contacted him.

Although the lawsuit (pdf) goes through details of the plaintiff’s communications with the domain owner, it strangely omits discussion about its domain name arbitration loss.


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You Probably Shouldn’t Brag About Registering a Trademark Domain Name

October 13, 2010Domaining, Domainnamewire, Policy & Law, trademarkComments Off on You Probably Shouldn’t Brag About Registering a Trademark Domain Name

This isn’t a very smart thing to do.

If you’re going to register a domain name including a famous trademark, you probably shouldn’t brag about it. Like this guy did [update: removed link. Guy took post down. He also has a new post up that says "I recently decided it was time to migrate my personal blog away from this business as my view points at times can be a bit controversial."] after registering Starbucks.im.

I recently picked up a few good .im top level domain names including starbucks.im. Though this particular domain extension represents the county code top level domain of the Isle of Man in Western Europe, this domain name is quickly getting picked up by companies wanting to offer instant message services as well as a great domain to describe who you are.

It’s pretty easy to prove bad faith when you register a domain if you tell the world.

.IM has its own ccTLD dispute policy outside of UDRP. So if Starbucks wants this domain it can probably just follow that process. Or heck, it can sue the guy in the U.S. where he’s based.

But my guess is a nice cease & desist letter and a cup of hot coffee would do the trick.

(Hat tip Nick Braak)


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Mac Poker Sites Face Off, But Could Have Bigger Problems Ahead

April 12, 2010Domaining, Domainnamewire, Policy & Law, trademarkComments Off on Mac Poker Sites Face Off, But Could Have Bigger Problems Ahead

Company sues other company over trademark…while it has Apple’s trademark in its domain name.

From The Las Vegas Sun comes news of a lawsuit filed by the owner of Macpokeronline.com against the owner of macpoker.com and macpoker.net.

Best Odds Corp., owner of the macpokeronline.com, filed the suit claiming MacPoker.com and MacPoker.net infringe on its trademark for Mac Poker.

A trademark for Mac Poker? Yep. Best Odds Corp has been working to get this approved for a while. In the most recent struggle, Best Odds didn’t want to have a disclaimer of the descriptive word “Poker” in its trademark. The U.S. Patent and Trademark Office disagreed.

But here’s the bigger issue. Best Odds Corp might be upset about a competitor using a better domain name than it owns. Yet it could be drawing some unwanted attention from Apple, which owns the mark for Mac. I think Apple might not be pleased to have its brand associated with gambling. So it’s somewhat ironic to sue someone over trademark infringement when you may be infringing yourself.


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