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"Zilla" Lawsuit: Your Opinions?

Discussion in 'Domain Name Legal Issues' started by DeluxeNames.com, Apr 25, 2006.

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  1. DeluxeNames.com

    DeluxeNames.com Platinum Member

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    You are all aware that there are thousands of "Zilla" domains registered and hundreds of "Zilla" trademarks approved by the USPTO.
    As even the Wikipedia notes:

    " "Zilla" is a recent Internet phenomenon involving the naming of websites and services with the suffix -zilla. This trend has been observed since the popularization of the Mozilla Project, which itself included the Internet relay chat client ChatZilla. The suffix is derived from the character Godzilla."
    http://en.wikipedia.org/wiki/Zilla_(Internet_phenomenon)

    You are also aware that Toho of Japan holds the Godzilla trademark and sometimes tries to go after "Zilla" domains.

    My question is two fold:
    Let's say the USPTO approves your trademark on your "zilla" domain (that you were using for legitimate business, not in anyway related to Godzilla) and it's gone unchallenged for enough years to become a Registered mark, does Toho still have a chance to win a WIPO or lawsuit against your use of a "zilla" domain?

    Secondly, if Toho goes after your un-trademarked "zilla" domain (that you were using for legitimate business, not in anyway related to Godzilla), what do you think your chances of winning are if you theoretically had unlimited funds and a great lawyer on your side?

    Here's some Toho/Zilla background (if I'm missing some history, let me know):

    To differentiate Godzilla from the version of Godzilla that appears in the 1998 TriStar Pictures film Godzilla, Toho Studios' official name for the title creature later became, "Zilla." This info is taken from Wikipedia's entry for "Zilla": http://en.wikipedia.org/wiki/Zilla

    History of Toho lawsuits from the best that I can find:

    Toho's Godzilla® has won some and lost some. His name and persona were found to be protected against trademark and copyright law infringement in Toho Co., Ltd. v. William Morrow and Co., Inc., 33 F.Supp.2d 1206 (C.D.Cal .,1998). In contrast, the "King of the Monsters" lost his claim against Retail Giant Sears arising from the promotion of "Bagzilla" plastic lawn bags, Toho Company, Ltd. v. Sears, Roebuck & Co., 645 F.2d 788 (9th Cir. 1981), a decision which turned on the differences in the products ("fire-breathing, pre-historic, often-schizophrenic dinosaur," 33 F. Supp.2d at 1214; vs. "Monstrously Strong Bags" ), the character representations, and the marketing channels.

    I found this link to be very informative on the Toho vs. "Zilla" history and tells the rumor that Mozilla has a deal with Toho:
    http://news.com.com/2100-1023-949804.html?tag=fd_top

    Many of you will remember Toho versus the blog, http://www.DaveZilla.com. Here's some more balanced links from the Trademark blog that show Toho just wanted DaveZilla's dragon gone:
    http://www.schwimmerlegal.com/archives/2002/08/giant_lizard_le.html
    http://www.schwimmerlegal.com/archives/2002/08/all_your_zilla.html

    Here's a case that is harder to find as it never went to WIPO and never became a lawsuit:

    One company changed their name of their product from Hubzilla to "Firewire Dino" after receiving a C&D letter from Toho. I have added the company's response below. However, their product was made to look exactly like GodZilla's likeness. Here is the response from the former "Hubzilla" when they were asked why they changed the name for their product :

    "I hope all is well. I am writing to make you aware of a situation regarding the product formerly known as Hubzilla. We have been contacted by Toho Co. Ltd, the company that owns all service marks, trademarks and copyrights to the Godzilla intellectual property and in an effort to avoid any future issues or confusion in the market place we will now refer to our firewire hub as "Firewire Dino." All references to Hubzilla have been removed from our site, if your project has not yet gone to print we would appreciate you making the changes as well.
    Thank you very much for your help. The product will still move forward, we'll just be referring to him with a different name.
    Tony"

    Someone sent me this link to show how many "Zilla's" are registered:
    http://domain-search.domaintools.co...h=B&right=y&pool=A&bc=rows&service=512&page=1
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