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iRobot Sends Us Cease and Desist..brrr Chilling Effects

domain name

    RESOLUTION:

iRobot “gave” us seven days to respond. We did so within 48 hours and they have abandoned their request we “give them” our name.  It’s hard to argue with ICANN, Tim Berners Lee and local case law, especially  when you missed the 2 week period when trademark holders were allowed to purchase, after which it opens to the public. That’s when we bought the name, legally and above board.

This is the second domain name fight we have won. IDG attempted a reverse domain name hijacking in 2000 with us for the name eInfoworld. They too abandoned that and the story of their loss was written up on Electronic Frontier Foundation and later, NYU Law. As Tim Berners-Lee says, the domain name is not the domain of the big guy, this is for everyone. “Whatever solution is found must bridge the gap between law and technology. One problem is that the better domain names will wind up with people or companies that have the most money, crippling fairness and threatening universality…It is essential that domain names be primarily owned by the people as a whole, and that they be governed in a fair and reasonable way by the people,

Finally, if it is good enough for US Patent and Trademark Office to not own uspto.com, why should anyone complain? See below for more on ALL the legal arguments that allow iRobot.guru to legally remain ours.

 

 

“STOP!”, they said, “You are harming us!”

A Cease and Desist from iRobot for trademark infringement, claiming harm and trademark confusion, arrived in our email.  This is the rebuttal.   It is being posted here publicly and you see it as they see it.

 

Dear  brandprotection@mm-irobot.com   (or Dear Lawyers Who Think I am a Threat):

Where’s the 12 step program for domain name buyers?

Since 1998 when tech and words, 2 favorite topics, converged in the realm of domain names, I’ve been hooked. But let’s look at the juxtaposition of fact, policy, and law before we look at context.

 The Sunrise Period or, You Had a Chance

If you wanted your name with the .guru extension, there was a time period reserved for trademark holders. This is called the Sunrise Period when only trademark holders could purchase during this time.  After that,  it was open to the public and anyone can purchase any name.   iRobot neglected to register a domain name using .guru during the time when ONLY they could have done so. If protection of your brand was so critical via domain extensions, why not obtain it?   A domain registrar had this on their site to explain it:

Nine new web address suffixes, including .bike, .clothing, .singles and .guru, have been made available as the net names system undergoes a radical shake-up. 

The new names, formally known as generic top level domains (gTLDs) are currently open only to those with registered trademarks. 

They will be open to the general public at the end of January 2014.Nine New gTLDs Rolled Out To Trademark Holders [bbc.co.uk]

I bought after the TradeMark Holder’s  time frame to claim the extension was long gone.


What Does ICANN Say About Claiming My Domain Name Should Be Yours?

According to ICANN (Internet Corporation for Assigned Names and Numbers), the governing body of the Internet charged with overseeing domain disputes, the party making the complaint must prove that the disputed domain name was registered in bad faith.

The following is a description of what they mean by Bad Faith:

b. Evidence of Registration and Use in Bad Faith.For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in 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;

 

Let’s Look At Me or Where’s The Bad Faith?

The Early Days of My Addiction
( hyperlinked domain names are in use by me. Many of the others are still owned but not in use.)

Back in 1998/99 I bought everything from eztaxlaw.com to iNetphone.com to cyberchocolates.com to eFares.net and eGameWorld.com to cowsareveg (now morphed into cowsarevegetarians.com .) I bought ThisWiredHouse.com and TheWiredHouse.com, e-dates.com, and the one you are reading now, www.TheSiliconValleyStory.com. There was once also a siliconvalleywebdesign but I traded it to a web designer for some work. I bought cyberluv.com and etracking.com.  I bought etake-out.com. I was trying to envision the future: dating, airline fares, wired houses, selling food on the internet, phones online, games.  I wasn’t wrong but I was never on top of the game with great names.

Some domains became sites, some got abandoned, one got auctioned off – that was etracking.com in 2003, the only one sold.

As Time Goes By

And over the years many more have arrived. Yes, I am addicted. I bought my son’s name, my other son and his wife’s name for their wedding, I bought my name, there is guidetomars.com, happinesspsychology.com,

dumbblonde.tv

and powerguideforwomen.com

and divorceandlawyers.com

and narcissisticabuse.com oh, so many! So many!

The Future Is Now 

And this year, I binged. I’d been good, but I fell off the wagon.  In two binges, a few days apart, I bought these names:

InternetofTechnology.com

TheInternetofEveryone.com

SiliconValleyFuturist.com

futurism.guru

futurist.technology

futurism.technology

irobot.guru

SiliconValleyFuturist.guru

There was no malice aforethought! No desire to bring you down, dilute you, confuse, tease or otherwise annoy or decommercialize you.  In fact, dear lawyers who think I am a threat, I didn’t even think of you. I was actually thinking of my dystopian slice of life story which I have on my post about the movie HER. You can read it here: My AI story.  (written in 2000) I thought of that and it lead to the domain name you think I have that will harm you.

All of these names came at a time when I was  awakening to The Internet of Things (unknown by many back then, but I had met and interviewed  Jeremy Walker, CEO of IOTA (Internetof Things Architecture) and there was CES and oh, so much going on. See Jeremy interview here: Jeremy Walker and IoT

 

WHAT DOES THE LAW SAY?

 

Well, it doesn’t say what you threaten me with in your letter.

In Hasbro v. Clue Computing – ……. the court ruled that holders of a famous mark are not automatically entitled to use that mark as a domain name.   The court held that “if another internet user has an innocent and legitimate reason for using the famous mark as a domain name and is the first to register it, that user should be able to use the domain name, provided that it has not otherwise infringed upon or diluted the trademark.”

 

irobot.guru has nothing to do with you and everything to do with me and my current and past and future interests.  As Hasbro v Clue says: innocent reason..nothing malicious.  And I registered it first. One has to wonder, why, if it is so important to the use of your cleaning robots, why didn’t you register it?  Or, if your AI robots are hard at work, why didn’t they register it? Or warn you?  Actually,  the use of irobot.guru by your corporation seems less and less appropriate than might appear on the surface given both case law and the evidence of “who thought of this?”  Not the trademark holder, but the person who was thinking of futuristic issues with a whole lot of other domains registered at the same time. Me. Not you.

There is no cybersquatting, no commercial use, no attempt to associate with your name. In fact, there is nothing there.

Clearly, the name was not bought in isolation with you in mind and as Harvard says on its page on law and domain names, unless there is cybersquatting or competing use, there isn’t a claim.

So, Where Are We? 

Reading the above we find:  No court of law has found any infringement of your rights and I was the first to register it and have not diluted it. So when you say, “In view of your infringement of our rights…” clearly you are assuming a posture and position with nothing to back it up.   No one has infringed your rights and your statement is neither evidence or fact and holds no weight or validity.    In fact, it borders on a threat, but we will not assume that, just that you are unaware of the case law.

So, when you say you want my assurance that I

1. Immediately discontinue any and all use of the Domain Name;
2. Immediately and permanently refrain from any use of the term iRobot or any variation thereof that is likely to cause confusion or dilution;

I can tell you that 1) since I am not using that domain name there is nothing to stop so this is a moot point and 2) I will of course not use the term to cause confusion or dilution of your cleaning robots. I never would nor, as you can clearly see, was that intended.

Let’s move on.

If It Is Good Enough for the Government – The US Patent and Trademark Office Trademark

Let us look at the USPTO itself – the US Patent and Trademark Office. USPTO is the commonly recognized abbreviation of the U.S. Patent and Trademark Office.  So why is USPTO.com not owned by them? Why is it a privately owned domain name?  Because it, like me, doesn’t dilute, confuse, or try to make money off of the name.  It lives with no acrimony or bellicosity with its own exact name as a dot com.  And we can all recognize that .guru is hardly of .com value.  So we find a harmonious, peaceful, weaving together of the pieces of the web: the people and the government.  Good enough for them, so let’s follow their lead.  The government has USPTO.gov and this brings us to the  person whose words count for so much: the father of the www  who speaks often of the harmony that must co-exist for this to work.

Tim Berners-Lee

In a 2014  interview on guardian.com:

Sir Tim Berners-Lee told the Guardian the web had come under increasing attack from governments and corporate influence and that new rules were needed to protect the “open, neutral” system.

 He has stuck firmly to the principle of openness, inclusivity and democracy since he invented the web in 1989, choosing not to commercialise his model. Rejecting the idea that government and commercial control of such a powerful medium was inevitable, Berners-Lee said it would be impossible: “Not until they prise the keyboards from our cold, dead fingers.”

and speaking specifically about domain names, Berners-Lee has said in Weaving the Web

“Much of the conflict is due to the mismatch between the domain name structure and the rules of the social mechanism for dealing with the ownership of names: the trademark law…”Whatever solution is found must bridge the gap between law and technology. One problem is that the better domain names will wind up with people or companies that have the most money, crippling fairness and threatening universality…It is essential that domain names be primarily owned by the people as a whole, and that they be governed in a fair and reasonable way by the people, for the people.”

 

 

A PEACEFUL RESOLUTION 

 

Let’s  follow the lead of Tim Berners-Lee and build a bridge between law and technology, between corporations and the people. You are building bridges between people and machine, changing the world one robot at a time until they teach themselves. So, since there is no competition, dilution, bad faith, confusion and I love my domain names, let’s not turn this into a case of reverse domain name hijacking.

Robot_Vector_Character_with_Thumbs_Up_Preview

 

thanks to  Vector Characters – you are so cool for setting free these robots

 

 

 

 

 

 

 

 

 

 

 

 

 

WHAT IS REVERSE DOMAIN NAME HIJACKING?

CASE NO. C-96-20434 from San Jose , CA Court in the TY , Inc Case says:

28. In a reverse domain name hijacking, the holder of the registered trademark in an entirely different trademark classification and business tries to take advantage of the fact that a small business or individual cannot afford to litigate the issue of an alleged infringement. The holder of the trademark, after deciding it would like to use the domain name itself, notifies the registered owner of the domain name of its specious claim, and simultaneously demands that the hapless individual domain name holder give up the domain name, based upon an allegation of trademark infringement and dilution. The allegation occurs, as in this case, totally without regard to the fact that, in a trademark infringement action involving two products of the same name, the registered trademark owner could not show infringement or confusion by the same mark in a totally different classification, and cannot prove dilution or diminution of the trademark by the mere existence and use of another product or service using the same mark. Furthermore, a domain name is usually just an address, as in this case, and not a product or service. It is at most a service mark, which by definition does not infringe a product trademark which is unrelated to the service.

 

Let’s not go there. As the web evolves, we can work to make it a cultural and political haven and not a gestapo ghetto of power over.

 

 

 

 

 

 

 

 

Almost Done

 

 

 

 

 

 

 

 

 

 

 

 

oh, and one more thing: when you say, “As you are no doubt aware” and “the famous iRobot trade name” , I have to tell you, I had no idea you were the cleaning robots. So, no, I wasn’t aware and your mark is maybe not as famous as you think. Yes, I have an interest in robotics, but not in cleaning robots and never saw your products before I looked them up today.  I flip a lot of robotics articles into my Flipboard magazine, Silicon Valley, but have never seen anything from you there. 

 

 

 

email received, June 27, 2014 

Dear Sir or Madam:

iRobot Corporation is the owner of the well-known trademark and trade name iRobot.  As you are no doubt aware, iRobot is the trademark used to identify products, services, activities and events related to iRobot Corporation.

In connection to iRobot Corporation proprietary rights over its famous trademark we bring to your attention the following:

1) You have registered, without iRobot Corporation’s permission or authorization, the domain name ‘irobot.guru’.  The Domain Name incorporates the famous iRobot mark in its entirety, and, by its very composition, suggests iRobot Corporation’s sponsorship or endorsement of your website and correspondingly, your activities.

Your use of a Domain Name that incorporates the famous iRobot mark constitutes trademark infringement and dilution of iRobot Corporation’s trademark rights and unfair competition.  Your use of our mark in the Domain Name is diluting use because it weakens the ability of the iRobot mark and domain name to identify a single source, namely iRobot Corporation.  Further, your registration and use of the Domain Name misleads consumers into believing that some association exists between iRobot Corporation and you, which tarnishes the goodwill and reputation of iRobot Corporation’s products, services, and trademarks.

In view of your infringement of our rights, we must demand that you provide written assurances within 7 days that you will:

1. Immediately discontinue any and all use of the Domain Name;
2. Immediately and permanently refrain from any use of the term iRobot or any variation thereof that is likely to cause confusion or dilution;

We look forward to hearing back from you within the above-mentioned time frame.

Sincerely,

iRobot Brand Protection on behalf of
iRobot Corporation
8 Crosby Dr, Bedford, MA 01730
781-430-3000
brandprotection@mm-irobot.com 

 

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