A case of domain name envy?
A company that does business at Curated.io has sued (pdf) Deal.com, which uses the domain Curated.com. It claims that the latter is infringing its trademarks and cybersquatting. Among its demands: that Curated.com be transferred to it.
Plaintiff Curated Works Inc claims:
As a result of defendant’s conduct or that of its collaborators or others working in concert with defendant, plaintiff has been “delisted” from the first-level page position in Google
searches for the term “Curated,” as a result of which Internet users are routinely referred, not to plaintiff’s website, but to the goods and services offered by defendant or its collaborators.
Curated.com is indeed listed #1 when I search for “curated” on Google. As for Curated.io? It is below many other companies using this brand including Curated.co and even ShopTheCurated.net.
Reviewing the two businesses, it doesn’t seem like there’s overlap in what they do. Curated.io offers outsourced teams for web development, marketing, ecommerce, SEO, etc. Curated.com offers sports and outdoor pros who help you find the best products to buy. It’s difficult for me to believe that people would be confused by the two businesses.
Perhaps this is a case of domain name envy.
Update February 2021: the plaintiff dismissed the case.
Acro says
Nothing but a display of self-entitlement from yet another .io totting start-up. Young executives with zero patience and zero interest in defining a meaningful brand. Hopefully this will be tossed out. Strong team at https://www.curated.com/team
Richard says
Yep, strong case of ADES. Apparent Domain Envy Syndrome.
Observer says
I believe Curated.com launched in 2017 from what I can tell, correct?
Does Curated.com have a USPTO TM?
Curated.io seems to have launched slightly earlier in 2016.
Mike says
Does Curated.com have a USPTO TM ?
Not by look of it, but they do have a Filing at EUIPO and other places that Pre Date the Plaintiff’s Court Filing.
gpmgroup says
Curated.co shows up first in Google in the UK
Joern says
They vary widely by location: Canada gets bycurated.com on top (after merriam webster). Germany does not get any of these on the first couple of result pages,South Africa gets http://curatedsouthafrica.com/
Switching between international Google versions:
https://g.com.pub/
Mike says
This will be interesting, because although the Plaintiff has 2 Trademarks in USA, the Defendant filed for Trademarks in the EU and elsewhere BEFORE the Claim was filed at Court (by the looks of it anyway). Will be a jurisdictional thing then, because the Defendant, if granted the EUTM ,or other, will have rights from time of filing .
Acro says
The .io mark was filed with an ITU clause in 2016 and after several extensions to demonstrate use, was registered under these provisions in 2019.
In the US trademarks are “first to use” vs. “first to file” in the UK and elsewhere.
PS. Not a lawyer. Happy reading: https://trademarkangel.com/trademarks-first-to-use-and-first-to-file-countries/
Mike says
Yes indeed, it is an interesting “game” indeed ,when you bring in “Priority” claims as well it can become very complicated. For example. Someone who applies to reg a TM in UK in January 2019 can defeat someone who applies to reg at USPTO in July 2019. I have noticed more use of “Passing Off” claims being used towards domains though and when you think that whether the domain was registered 50 years ago, if it is used and inadvertently “Passes Off” it can be lost.
John says
This is so bad. It would be just as bad if the people behind the .io are not made to pay a price for this. And talk about clueless horrible branding imho for how the .io is using the sld. Considering that and what they are doing here, hard to believe they will survive unless they at least change their branding entirely. Honestly, it’s not even a desirable sld for almost all purposes to begin with and I wouldn’t be the least bit excited if I held the .com myself.
John says
PS, and yes, the way it’s being used with the .com definitely is a pretty sensible use too, notwithstanding the above.
Vince says
But since the two companies are in different industries, the whole “who had the TM first” question doesn’t matter and it will come down to whether the guys at Curated.com are operating a legal business, and as they clearly are, this suit will get tossed out faster than a McDonald’s wrapper.
snoopy1267 says
Curated.com recently raised $27million so I’d imagine this is going to be a very expensive lesson about frivolous lawsuits for curated.io.
Andrew Allemann says
The plaintiff dismissed the case and it looks like deal.com is keeping the domain.
aliciaowens12 says
It’s an interesting decision. In cybersquatter proceedings, however, if the alleged cybersquatter can show that he registered the domain name for reasons other than to sell it back to the trademark owner for a profit, a judge will likely allow him to keep it.
trademark registration says
They vary widely by location: Canada gets bycurated.com on top (after Merriam Webster).