iEstates.com

8 years after the introduction of  Google’s Gmail email offering, it appears it has settled a dispute over the use of the brand in Germany as shown by a transfer filing with the German patent office. When Google introduced the service worldwide in 2004, they encountered problems with the name in Germany, England and Switzerland, which forced Google to operate under the name GoogleMail instead. While the case in Switzerland was settled in 2009 and in the UK in 2010, the  negotiations in Germany continued until the trademark was transferred last Wednesday. The domain gmail.de changed ownership on the same day and is now also owned by Google with the domain now displaying a Mark Monitor holding page.

The German brand for “G-mail… und die Post geht richtig ab” (gmail – and off the mail goes, based on a German idiom), which was registered in 2000 was owned by entrepreneur Daniel Giersch who enforced his rights in 2005. His email service is now available under the domain and name “@quabb.com”. While the price for the settlement is not known, Giersch turned down an offer of 250.000 Euro from Google for the mark and domain in 2006.

Google also had trouble obtaining the domain YouTube.de, but was able to settle with the owner of the domain in 2007.

[via Computerworld | Golem.de (German) | SZ (German), thanks to Christoph Kilz]

Related posts:

• Google Loses Domain Name Dispute Over Groovle.com
• Google Introduces Public DNS Service
• Google Launches URL Shortener
• Google Sued Over Poor Traffic Conversions From Parked Domains
• Harvard Professor Says Google is Profiting From Typo-Squatting

In what might be a ground breaking case that could shake up the entire PPC industry, the US Court of Appeals for the 4th Circuit Monday reversed a lower court’s ruling allowing Rosetta Stone’s trademark infringement suit against Google to continue.

Rosetta Stone filed suit in 2009 accusing Google of committing trademark infringement by selling ads under keywords of Rosetta Stone Trademarks  to third-party advertisers.

A Virginia district court dismissed the case in 2010, finding that sale of the keywords was not likely to create confusion in the minds of consumers over the source of Rosetta Stone’s goods.

The US Court of Appeals overturned most of the lower court’s ruling, allowing claims that  Google committed direct trademark infringement and diluted the Rosetta Stone brand to continue.

There have been other cases brought by other TM holders against Google alleging that selling ads under their trademark amounted to trademark infringement.

Google has generally won every case brought by Trademark Holders but in one of the most interesting findings by the court, “(about 7% of Google’s)  total revenue was driven by trademarked keywords.”

We have asked over the years at TheDomains.com how Google is allowed to sell ads of trademarked terms to third parties when if a domainer registers a domain containing a TM, they very well my wind up losing this domain or getting sued for trademark infringement.

This case may change the entire industry.

Here is some of the courts ruling:”

“”We agree that summary judgment should not have been granted.

“As explained in the discussion that follows, the district court did not properly apply the summary judgment standard of review but instead viewed the evidence much as it would during a bench trial.”

The entire Fox story on the WIPO/North Korea situation is quite lengthy and you should check out the full story here.

According to UDRPSearch.com a UDRP has been filed against the owners of the domain name Norcross.com

Norcross is a city in Georgia whose official site is Norcrossga.net

Norcross.com is a parked page and returns results for mostly hotels and other travel links in Georgia which shouldn’t be a problem.

Norcross.com is owned by Marchex  (Nasdaq: MCHX)

The UDRP was filed on March 30, 2011 and was assigned the case number, 1437030.

The complainant is not listed as of now.…

Anytime you use Facebook you agree to follow its User Agreement.

As Wired.com pointed out in Facebook’s newly revised version of its “Statement of Rights and Responsibilities,” users agree that Facebook has common law trademark rights over the term “”book”  and agree not to use any “confusingly similar marks, without our written permission”

Under the current Statement of Rights and Responsibilities, anytime you use Facebook you agree that:

“You will not use our copyrights or trademarks (including Facebook, the Facebook and F Logos, FB, Face, Poke, Wall), or any confusingly similar marks, without our written permission.”

The newly revised user agreement reads as follows:

“You will not use our copyrights or trademarks (including Facebook, the Facebook and F Logos, FB, Face, Poke, Book and Wall), or any confusingly similar marks, except as expressly permitted by our Brand Usage Guidelines or with our prior written permission.”

“Not accepting the terms isn’t really an option for anyone with a Facebook account. “By using or accessing Facebook, you agree to this Statement,” the document says.”

In November 2010, Facebook was granted a trademark by the USPTO over the term “Face” for:

“usages in “Telecommunication services, namely, providing online chat rooms and electronic bulletin boards for transmission of messages among computer users in the field of general interest and concerning social and entertainment subject matter, none primarily featuring or relating to motoring or to cars.”

“We have also reported on Facebook going after such sites as against Faceporn.com,  TeachBook.com and  Lamebook.com.

I saw a pretty good domain hit the auction place last week but we passed on bidding on LikeBook.com for this exact reason.

 …

We just took on one of the biggest company’s in the world and won.

We acquired the domain name Move.me, in a auction by the .me registry on Sedo.com in November 2010.

Sony launched it product fits called Move.me, for its PlayStation 3 in January 2011

Sony filed for a trademark on term Move.me in February 2011.

We hired Erika L. Hengst, Esq,  the wife of domain developer Sean Sullivan, to object to the trademark.

Now several months after filing our objection, Sony this week, dropped their application to trademark the term Move.me

If you go to the UPTO today it shows the trademark as abandoned.

Obviously in the time following our objection and Sony’s abandonment Sony reached out to us to chat about acquiring the domain.

Pointing to the sale of Meet.me, we told them we would only consider offers in the six figures for the domain name.

They passed.

They expressed they might be interested in acquiring the domain but for no where near six figures.

To recap, Sony launches a product without having a TM, then files the TM then upon objection walks away.

We can now either build out the domain, or sell it without the threat of Sony hanging over our heads to take our domain away based on their made up TM.

How did Sony get in this position?

I think Sony, which has other trademarks for two words with a period between them, like “make.believe”, didn’t realize that move.me was an actual domain name, a thing that someone else had the rights in.

They just put two words together gain with a period but this time they matched an existing domain name.

We stood up for our rights.

Our thanks go out to Erika who did an outstanding job.

We covered another big win by Erika in a UDRP defense of the domain name ChannelGuide.com, a few months ago.

 …

There has been an update in the Kentucky domain name seizure case and its not a good one.

This week the original judge in the matter issued another forfeiture order on 132 domain names, this time not directed just to the registrars but to the registry, Verisign.

You might remember in the original case, the Judge ordered the registrars, not the registry, to turn the domain names over to the Commonwealth of Kentucky.

Some registrars reportedly complied with the order but many did not.

For the record, the Kentucky Domain Name Seizure case is now 3 1/2 years old as the original seize order came on September 22, 2008.

In the original order there were 141 domain names.

9 of the domain names included in the list of 141 domain has since been seized by the Federal Government since the Kentucky case was filed.

These domains are FullTiltPoker.com, PokerStars.com, AbsolutePoker.com, UltimateBet.com, DoylesRoom.com, TruePoker.com, Bookmaker.com and Bodog.com.

As to the remaining 132 domain names On March 8, 2012, Wingate ordered and adjudged:

“”1.   The Court finds as fact that no party made any attempt to prove to the court that they installed and implemented software or devices to geographically block users from inside the Commonwealth of Kentucky from their “illegal, unregulated internet gambling websites”.

2.   The Court previously heard evidence from the Commonwealth and determined that probable cause existed to justify the seizure of the domain defendants.

3.   Seizures of the property in rem constitutes notice to any persons that may lay claim to their interest.

4.   No party has appeared with standing to contest the forfeiture or submit evidence.]

5.   The Court finds that no lawful owner or claimant of the domain defendants has been identified or is identifiable.

6.   The Court finds that evidence presented by the Commonwealth does establish by a preponderance of the evidence, “indeed by overwhelming evidence”, that the domain defendants are gambling devices and gambling records in violation of Kentucky statutes and therefore can be forfeited.

7.   While the Court considers amendments to the Kentucky statutes that define said “devices”, the court believes that those definitions are only a broad definition and determines that the intent can and does include a domain name.

8.   The Court re-adopts and incorporates its previous conclusions of law and holdings contained in it’s original order of seizure, September 2008 Exhibit B; it’s findings of fact and conclusions of law, September 2008 Exhibit C; and Opinion and Order, October 2008, Exhibit D.…

Ari Goldberger beat back a UDRP on the domain name UTV.com brought by UTV Limited of Belfast

Here are the relevant facts and findings of the three member panel:

The Complainant was formed in November 1958 as Programme Contractor for Northern Ireland and was incorporated as Ulster Television in 1959.

It has been broadcasting television and radio in Northern Ireland since October 1959.

As such the Complainant is the TV arm of UTV Media plc, which is a media company in United Kingdom and Ireland incorporating radio, television, new media and publishing.

The Complainant has a national registered device mark UTV with registration number 2233923A in United Kingdom since May 25, 2001 for goods and services in classes 9, 16, 35, 36, 37, 38, 39, 40, 41 and 42 for, inter alia, computer related goods and service, television and radio broadcasting services and entertainment.

The Respondent registered the disputed domain name on August 19, 2005 after it became available for registration.

The Respondent first relied on the doctrine of laches for the reason that the Complainant waited over seven years before filing its Complaint against the Respondent. Although the Panel cannot rule out that the doctrine of laches could apply to this case for the reason put forward by the Respondent, the Panel rather prefers to decide this matter on the merits as set forth below.

The Panel is of the opinion that the Complainant sufficiently showed that it has rights in the Trademark, which predate the registration of the disputed domain name by the Respondent. Although the registered trademark as referred to in paragraph 4 above is for a device mark, the Panel is of the opinion that this device mark consists of the letters “utv” in a specific graphical form, which can only be represented in a domain name as “utv.” Therefore the Panel finds that the disputed domain name is identical to the Trademark UTV, and the first element is met.

The disputed domain name consists of only three letters. The Respondent submits a declaration of Mr. Kwang Pyo Kim, who claims to have registered the disputed domain name, that he registered the disputed domain name because it is a three-letter combination to which he believed no party could claim exclusive rights and it also an acronym for many different third party uses, and without him having knowledge of the Trademark. The Respondent further claims that “utv” stands for “utility terrain-vehicle” and submits evidence that the Complainant does not exclusively use “utv” in outside the context of television.…

Rick Schwartz has ferociously been on the attack since getting hit with a UDRP on the domain name Saveme.com.

As I’m sure all of you have read by now, Rick registered the domain name Saveme.com in 1996 and now based on a domain name registered in 2010, SaveMe.com.br, owned by Márcio Mello Chaves, and Heitor Chaves filed a UDRP with WIPO to take the .com domain name away.

Of course its outrageous that someone can register a ccTLD 15 years after the .com is registered and try to take to the .com.

Yet outrageous decisions happen in UDRP world, Paul Keating in recent guest posts on TheDomains.com highlighted two such cases recently and you can read about them here and here which led Phil Corwin of the ICA to send a letter to ICANN demanding an investigation into the National Arbitration Forum (NAF) and there handling of UDRP cases.

As outrageous as UDRP decisions are, we already know that Trademark groups are fighting to expand the Uniform Resolution System, one in which if place could have been used by the SaveMe.com.br, folks.

Under the URS, Rick would only get a chance to file a 300 word response, no right to a three member panel, and would only have cost $300-$500 to file not the $4K the owners of SaveMe.com.br paid to bring this action.  Yesterday at ICANN Phil Corwin again representing domain holders interest took issue with the ICANN board on the whole URS issue.

Phil Corwin has over the last few years been a literally a one man army fighting a huge army of trademark interests, as well as congressional members in favor of such bills as SOPA and PIPA.

Phil has represents domain holders at ICANN, in Congress, through lobbying efforts and most recently as an a often cited writer on issues of dire importance to domain name holders.

Actually Phil is  only one to fight for domain holders interest in Congress and at ICANN.

As the domain industry is growing the world is finding out that domains are very valuable.

The new gTLD program regardless on your opinion on its success, its shinning a light on the industry like never before.

Trademark holders were out in force at ICANN from Verizon to Google to Fairwinds, the leader of  CADNA, and many, many more.

We had one representative Phil Corwin of the ICA.

As I previously wrote,  Law enforcement was also at ICANN with a strong show of force, with the FBI, Homeland Security, ICE, Interpol and the rest meeting together, pressuring ICANN to make registrars gather more information on its customers which will led to every domain holder paying more money to register a domain.  There presence was also a great reminder that without SOPA or PIPA they can, and have seized domain names, without notice to the domain holder and certainly prior to the domain holder having a chance to defend themselves.…

According to the  guardian.co.uk,  A U.K. Court of Appeals has held that ISPs will need to pay 25% of costs associated with establishing and running an appeals body for alleged file sharers.

“ISPs will now be forced to pay 25 percent of all “qualifying” costs related to establishing and operating an appeals body for alleged file sharers and pay 25% of costs related to identifying alleged file sharers.

“Ofcom, a U.K.-based communications regulator, will pay the remaining 75 percent of the costs.”

“Today’s ruling now paves the way for the U.K.’s Digital Economy Act to be enforced across the country. The Act, which was ready to be implemented nearly two years ago if not for the ISPs’ appeals, requires providers to disconnect subscribers from their broadband service if they’re found guilty of illegal filesharing.”…