PartySupply.com and CookieGifts.com forward to category-defining domain names.

ClickVentures, the company behind Cookies.com and PartySupplies.com, continues to snap up category killer domain names as it builds out its web empire.

The company, led by Drew Sharma, made two big domain purchases this summer to solidify its brands.

First, it picked up PartySupply.com. This will complement its PartySupplies.com web site. It bought the latter domain for $360,000 in 2010. PartySupplies.com is a recently launched e-commerce site featuring 20,000+ party products including plates, costumes, balloons, and party favors.

Also this summer it bought CookieGifts.com from Frank Schilling and forwards it to its Cookies.com site. Sharma and his partners bought Cookies.com in 2009 and launched the site in 2010.

These domains may as well appear next to the definition of “category killer” domains.

Company plans to apply for .web and says no one else should be allowed to get the TLD.

Publicly traded Web.com plans to apply for the .web top level domain name and says no one else should be allowed to apply for the TLD due to its trademarks.

The company has a pre-reservation form up on its web site and just filed a trademark application for the name.

This is the first I’ve heard of the company’s plans, although its trademark application says it has been using .web in commerce since June.

I expect multiple applications for .web. A number of companies have proposed it over the years, and an unofficial version runs outside the official root.

Still, Web.com is making it clear it thinks no one else should be able to operate the .web top level domain name. On its terms and conditions page for .web it states:

In addition to the significant common law trademark rights and consumer goodwill acquired in its Web.com business name and trademark, Web.com also owns several U.S. and international trademark registrations with respect thereto. Web.com and its predecessors have used these trademarks or variations thereof since 1996 and in the process have developed a strong reputation and unquestionable goodwill in conjunction with them. Web.com spends considerable resources building and maintaining this valuable goodwill and consumer recognition associated with its brand and services and is committed to enforcing its significant intellectual property rights related thereto.

Since the “.WEB” TLD is obviously very similar to the Web.com trade name, trademarks, and the character string associated with the main Web.com web address, www.web.com, it is clear that Web.com should be the company to operate and administer the .WEB™ domain registry and this is a role that Web.com expects to assume and looks forward to doing so. Moreover, the issuance of .WEB™ to anyone other than Web.com would not only infringe on the trademark rights in Web.com, but the use of .WEB™ by anyone other than Web.com would mislead and confuse consumers into thinking that any website with the .web suffix was associated with or sponsored by Web.com. Therefore, Web.com has taken steps to secure the necessary approvals to operate and administer the .WEB™ domain name registry and remains committed to aggressively continue to pursue such approvals.

Web.com owns Register.com and is buying Network Solutions, so if it actually runs the registry this would be another example of a registrar wishing to take advantage of possible loosened registry/registrar co-ownerships restrictions.

This will be an interesting one to watch.

The challenges of a descriptive trademark.

The Dolan Company, owner of Minnesota Lawyer Magazine, is claiming that MinnesotaLawyer.com is violating its trademark.

MinnesotaLawyer.com is maintained by Minnesota lawyer Aaron Hall. His law firm Twin Cities Law Firm, LLC
also owns MinnesotaAttorney.com. Dolan company sent him a cease & desist letter (pdf).

Hall says he has a right to blog on the web site. In a press release, he provides a comparison:

This is like a company naming its magazine ‘California Wine’ and then telling California wineries to stop using ‘California Wine’ on their websites,” stated Hall. “In trademark law, the general rule is that no one can prevent others from using a geographic term that accurately describes the origin of goods or services.

In its cease and desist letter Dolan company claims there’s a distinction:

“While, in some cases, “Minnesota layer” can be used descriptively to indicate that a person is a lawyer from or practicing in Minnesota, your use of “Minnesota Lawyer” is not descriptive. Rather than using the phrase to indicate that you are a (underlined) Minnesota lawyer, you are suggesting you are the (underlined) Minnesota lawyer. This is underscored by your prominent use of “Minnesota Lawyer” in the header of your website at “minnesotalawyer.com” and in the website’s copyright notice…”

Dolan company is asking Hall to refrain from publishing legal articles on the web site.

Dolan company’s publication is at MinnLawyer.com.

Company that filed .secure trademark application is now apparently using it in commerce.

People will try to game the U.S. Patent and Trademark Office all day long.

In August I wrote about how Asif LLC applied for the .secure trademark. It later applied for .bank.

Now Asif alleges actual use of the term in commerce.

How did the company allege it’s using the top level domain .secure in commerce?

Well, first of all it isn’t claiming it’s a TLD. It says it wants the trademark for domain registration services. This is a common tactic when trying to trademark a TLD since the USPTO won’t grant trademarks for TLDs.

Fine, but how to prove you’re using .secure for domain registration services? Sign up for a Go Daddy reseller account and create your own domain registration services. Take a look at this specimen submitted by Asif:

That address in the top level corner is for securepayment.net, GoDaddy’s URL for its reseller sites.

If you go to dot-secure.us it forwards to the reseller site.

Lego finally loses a UDRP case.

LEGO Juris A/S, makers of the popular legos toy, has filed nearly 300 UDRP cases to date. It hadn’t lost a single one — until now.

In a decision dated October 1 (but for some reason just published this week), a single member panel found against Lego in its case for the domain name legoworkshop.com.

The domain was just registered this year. When Lego looked at the site it still had the registrar’s coming soon page with parking links on it. But the owner of the domain said he registered the domain for his son to display his lego projects and that the parked page was something his registrar created.

The panelist agreed that the respondent had rights or legitimate interests in the domain and that it wasn’t registered in bad faith. The panelist determined that the registrant was creating a non-commercial fan site, and that this is not necessarily forbidden under UDRP.