google IDNs, possible trademark issues?

[foka]

Can there be possible TM issues with google IDNs?

I have it in two languages, and cannot find any thing on google website about it.

 

[fab]

I'm sure there must be. Check to see if they have trademarks in the other languages as well.

 

[Domagon]

TMs, especially if globally famous, can very often be legally protected in other languages too.

I'm not an attorney, but would personally suggest deleting the IDNs unless they are earning substantal amounts of money; seems counter-intuitive, but TMs earning at least many thousands per month can sometimes be worth the risk, if one plays it right.

But again, to be clear, if the domains are earning little to nothing with little expectation of revenues increasing much, then deleting them, in my view, is the way to go.

Ron

 

[maartenbuuron]

A friend of mine just had a NAF / ICANN arbitration for the domain Goldmansex.

There is a lot of case material regarding putting words behind a famous trademark (e.g. Googlesex).

 

[Ian]

A friend of mine just had a NAF / ICANN arbitration for the domain Goldmansex. Investment bank Goldman Sachs issued a claim. Although Goldmansex is in a completely different business, has a complete different website and even registered the trademark he lost his domain name. This means that every famous brand can claim al simular domain names, even if they operate in a complete different line of business. You can read about it on www.goldmansex.com

There is a lot of case material regarding putting words behind a famous trademark (e.g. Googlesex).

The outcome of that case was rather predictable--Goldmansachs would win. however, the respondent claims that he will appeal, i doubt he was any chance!

 

[maartenbuuron]

Hi Abraham

Interesting response: why do you think the outcome of the case was rather predictable? Because Goldman Sachs is big and powerfull or that Goldmansex did not have a case?

As mentioned in one of my previous postings the owner is a friend of mine and I'm an attorney in a different area, but I try to help him. What surprises me most is that Goldman Sachs did not proof one point. The only point they come up with is "we are a famous bank with a global operation". Goldmansex is in complete differrent business, he did not try to sell the domain name, is not redirecting, it is simular but not confusingly simular (you have to misspell four letters before you get the Goldmansex website and nobody would believe the word SEX is affiliated with GS) and they have a registered trademark. Especially trademarks shows rights in the domain name. THe NAF regulations also state that a trademark is only valid in the registered areas.

Is this a game where Goliath will always win, not mather what the situation is? The NAF sets very strict criteria before they can decide in favour of the complainent. From my point in none of the criteria they came up with proof.

I seem to be the only one, but to me to verdict is pretty alarming: a famous trademark can claim every domain name that is remotely simular to their brand name, even when they are not competitors.

Maarten

 

[DNWizardX9]

Yes, they are TM's in their native countries that Google operates in.

Walmart has already WIPO'ed the korean version of their name.

 

[Brett Lewis]

Under U.S. trademark law, there is something callled the doctrine of foreign equivalents. The main gist is that foreign language translations of English language trademarks, registered in the United States, are also protected by U.S. trademark registrations as being substantiallly similar. There are factors that the courts may consider as exceptions to the main doctrine, but they are a bit too complicated to get into here or to discuss in the abstract. The safe bet would be not to register famous, coined marks in other languages, and if you are registering foreign translactions of dictionary words, do not register or use them in bad faith in any way that targets or monetizes trademarks.

Regards,

Brett Lewis, Esq.
Lewis & Hand, LLP
www.lewishand.com