Goodwill Non-Profit Sues to Get Goodwill.com Domain Name

[FormerDnForumer]

Lol, not really sure why you are getting so personal about this, but what you are accusing me of, you are doing exactly the same, just on the opposite side of the table.

Whats the saying? "Get a grip" ?

Gosh you are a drama queen. I'm saying you should know the facts before you start screaming about reverse jacking. The new owner monetized the name after he got it, apparently. This is a grade one mistake for domainers. *If* he displayed Goodwill marks, he is showing bad faith and capitalizing on their mark, however briefly.

We don't know yet if Goodwill's assertions are true, but it sounds like the owner may have slipped up. We'll see.

 

[wussadotcom]

After I finished reading I felt a bit hot,, towards that so called charity org. Seems a bit childish to me and unfair.

 

[Mike Cruz]

Gosh you are a drama queen. I'm saying you should know the facts before you start screaming about reverse jacking. The new owner monetized the name after he got it, apparently. This is a grade one mistake for domainers. *If* he displayed Goodwill marks, he is showing bad faith and capitalizing on their mark, however briefly.

We don't know yet if Goodwill's assertions are true, but it sounds like the owner may have slipped up. We'll see.

Doesn't say anything about advertising Goodwill marks,

"After winning the auction, the lawsuit alleges that Cyber2Media parked the domain name with links related to charitable giving."

Try reading a bit better before insulting someone based on their opinion.

 

[FormerDnForumer]

Doesn't say anything about advertising Goodwill marks,

Try reading a bit better before insulting someone based on their opinion.

Actually it does:

"Goodwill Industries claims trademark infringement, unfair competition, violation of the anti-cybersquatting protection act, interference with prospective economic advantage, and unjust enrichment."

 

[Mike Cruz]

They are claiming that based on the assumption that they advertised charities, nothing about directly advertising the Goodwill charity.

 

[pergamon]

http://en.wikipedia.org/wiki/Goodwill_(accounting)

So Goodwill is an accounting term. I assume the best way to monetise a generic name/term is to put ads that derive from that term?

Of course awaiting development or so.

 

[draggar]

There are some TMs for Goodwill:

http://tess2.uspto.gov/bin/showfield?f=doc&state=4008:chlkjm.3.6

IC 035. US 100 101 102. G & S: Employment services for disabled and disadvantaged persons, namely employment outplacement services, promoting the interests of and encouraging and assisting in the establishment, development and growth of organizations throughout the World dedicated to providing rehabilitation services, training, employment and opportunities for personal growth for disabled and disadvantaged persons and for developing and maintaining operational standards for such organization, retail store services featuring a variety of goods of others. FIRST USE: 19160400. FIRST USE IN COMMERCE: 19160400

http://tess2.uspto.gov/bin/showfield?f=doc&state=4008:chlkjm.3.34

IC 035. US 101. G & S: PROVIDING EMPLOYMENT PLACEMENT SERVICES FOR HANDICAPPED, DISABLED AND DISADVANTAGED PERSONS; PROVIDING TECHNICAL AID AND ASSISTANCE, BUSINESS MANAGEMENT AND CONSULTING SERVICES, EXECUTIVE RECRUITING SERVICES, AND DEVELOPING AND MAINTAINING OPERATIONAL STANDARDS FOR ORGANIZATIONS THAT PROVIDE REHABILITATION, TRAINING, EMPLOYMENT AND OPPORTUNITIES FOR PERSONAL GROWTH FOR HANDICAPPED, DISABLED AND DISADVANTAGED PERSONS. FIRST USE: 19670120. FIRST USE IN COMMERCE: 19670123

IC 036. US 102. G & S: PROVIDING FUNDRAISING SERVICES TO BENEFIT HANDICAPPED, DISABLED AND DISADVANTAGED PERSONS; AND PROVIDING FINANCIAL MANAGEMENT SERVICES AND FINANCIAL ADVICE TO ORGANIZATIONS THAT PROVIDE REHABILITATION, TRAINING, EMPLOYMENT AND OPPORTUNITIES FOR PERSONAL GROWTH FOR HANDICAPPED, DISABLED AND DISADVANTAGED PERSONS. FIRST USE: 19670120. FIRST USE IN COMMERCE: 19670123

IC 041. US 107. G & S: PROVIDING VOCATIONAL TRAINING SERVICES FOR HANDICAPPED, DISABLED AND DISADVANTAGED PERSONS; AND PROVIDING COURSES AND SEMINARS TO TRAIN AND DEVELOP PERSONNEL FOR ORGANIZATIONS THAT PROVIDE REHABILITATION, TRAINING, EMPLOYMENT AND OPPORTUNITIES FOR PERSONAL GROWTH FOR HANDICAPPED, DISABLED AND DISADVANTAGED PERSONS. FIRST USE: 19670120. FIRST USE IN COMMERCE: 19670123

IC 042. US 100 101. G & S: PROVIDING REHABILITATION SERVICES FOR HANDICAPPED, DISABLED AND DISADVANTAGED PERSONS; PROVIDING LEGISLATIVE AND REGULATORY LOBBYING SERVICES ON ISSUES OF IMPORTANCE TO HANDICAPPED, DISABLED AND DISADVANTAGED PERSONS; PROVIDING LEGAL SERVICES AND LEGAL ADVICE TO ORGANIZATIONS THAT AID HANDICAPPED, DISABLED AND DISADVANTAGED PERSONS; PROVIDING RESEARCH SERVICES IN THE FIELD OF REHABILITATION, TRAINING AND EMPLOYMENT OF HANDICAPPED, DISABLED AND DISADVANTAGED PERSONS; AND PROMOTING THE INTERESTS OF AND ENCOURAGING AND ASSISTING IN THE ESTABLISHMENT, DEVELOPMENT AND GROWTH OF ORGANIZATIONS THROUGHOUT THE WORLD DEDICATED TO PROVIDING REHABILITATION SERVICES, TRAINING, EMPLOYMENT AND OPPORTUNITIES FOR PERSONAL GROWTH FOR HANDICAPPED, DISABLED AND DISADVANTAGED PERSONS. FIRST USE: 19670120. FIRST USE IN COMMERCE: 19670123

http://tess2.uspto.gov/bin/showfield?f=doc&state=4008:chlkjm.3.24

IC 035. US 100 101 102. G & S: Employment agency services, temporary employment agency services, job placement services, career placement and employment counseling all for disabled, handicapped and disadvantaged persons; retail store services featuring a variety of consumer goods of others. FIRST USE: 20020601. FIRST USE IN COMMERCE: 20020602

http://tess2.uspto.gov/bin/showfield?f=doc&state=4008:chlkjm.3.37

IC 042. US 100. G & S: ELEEMOSYNARY SERVICES-NAMELY, TRAINING AND REHABILITATING HANDICAPPED PEOPLE, INCLUDING INSTRUCTION IN THE RECONDITIONING OF FURNITURE AND APPLIANCES. FIRST USE: 19670120. FIRST USE IN COMMERCE: 19670123

The interesting thing is that NONE of these apply to a charity - even though we all know Goodwill is a charity (and the Goodwill stores, Goodwill games etc..).

Good will can also be considered a two word phrase meaning:

GOOD:

1. morally excellent; virtuous; righteous; pious: a good man.
2. satisfactory in quality, quantity, or degree: a good teacher; good health.
3. of high quality; excellent.
4. right; proper; fit: It is good that you are here. His credentials are good.
5. well-behaved: a good child.
6. kind, beneficent, or friendly: to do a good deed.
7. honorable or worthy; in good standing: a good name.
8. educated and refined: She has a good background.
9. financially sound or safe: His credit is good.
10. genuine; not counterfeit: a good quarter.
11. sound or valid: good judgment; good reasons.
12. reliable; dependable; responsible: good advice.
13. healthful; beneficial: Fresh fruit is good for you.
14. in excellent condition; healthy: good teeth.
15. not spoiled or tainted; edible; palatable: The meat was still good after three months in the freezer.
16. favorable; propitious: good news.
17. cheerful; optimistic; amiable: in good spirits.
18. free of distress or pain; comfortable: to feel good after surgery.
19. agreeable; pleasant: Have a good time.
20. attractive; handsome: She has a good figure.
21. (of the complexion) smooth; free from blemish.
22. close or intimate; warm: She's a good friend of mine.
23. sufficient or ample: a good supply.
24. advantageous; satisfactory for the purpose: a good day for fishing.
25. competent or skillful; clever: a good manager; good at arithmetic.
26. skillfully or expertly done: a really good job; a good play.
27. conforming to rules of grammar, usage, etc.; correct: good English.
28. socially proper: good manners.
29. remaining available to one: Don't throw good money after bad.
30. comparatively new or of relatively fine quality: Don't play in the mud in your good clothes.
31. best or most dressy: He wore his good suit to the office today.
32. full: a good day's journey away.
33. fairly large or great: a good amount.
34. free from precipitation or cloudiness: good weather.
35. Medicine/Medical. (of a patient's condition) having stable and normal vital signs, being conscious and comfortable, and having excellent appetite, mobility, etc.
36. fertile; rich: good soil.
37. loyal: a good Democrat.
38. (of a return or service in tennis, squash, handball, etc.) landing within the limits of a court or section of a court.
39. Horse Racing. (of the surface of a track) drying after a rain so as to be still slightly sticky: This horse runs best on a good track.
40. (of meat, esp. beef) noting or pertaining to the specific grade below “choice,” containing more lean muscle and less edible fat than “prime” or “choice.”
41. favorably regarded (used as an epithet for a ship, town, etc.): the good ship Syrena.

WILL:

1. the faculty of conscious and especially of deliberate action; the power of control the mind has over its own actions: the freedom of the will.
2. power of choosing one's own actions: to have a strong or a weak will.
3. the act or process of using or asserting one's choice; volition: My hands are obedient to my will.
4. wish or desire: to submit against one's will.
5. purpose or determination, often hearty or stubborn determination; willfulness: to have the will to succeed.
6. the wish or purpose as carried out, or to be carried out: to work one's will.
7. disposition, whether good or ill, toward another.
8. Law. a. a legal declaration of a person's wishes as to the disposition of his or her property or estate after death, usually written and signed by the testator and attested by witnesses. b. the document containing such a declaration.

(Both definitions supplied by Dictionary.com)

So good will can mean something done by someone morally positive influence (which someone donating to a charity would be out of their own good will).

I see this as an interesting case to watch. I do not think Goodwill has the rights to the domain, let alone file a WIPO and sue for the domain - especially when their own trademarks do NOT say anything about charities yet the owner parked it with links to charities.

I'd say, at the worst, it is unethical but we all know unethical is not illegal.

 

[WhoDatDog]

These cases are going to set a pretty strong precedent. The simple question being asked is: When you have a generic name that has infringing links on a PPC page, what is the remedy?

Should someone be able to get a generic name transfered through a UDRP, or is that best left to the courts? There are going to be some big money names at risk for a long time.....unless the transfers of names are limited to obvious infringement without plausible other uses.

The easiest analogy would be if someone had the name Apple.com and had computer links on a PPC page. Should Apple the company have a right to the name because of the infringement, or should the perfectly generic name stay with the rightful owner, leaving Apple to pursue relief in court.

This is heading to the other big question of how many links in the chain are liable. Are the PPC companies liable, the registrars, etc? This is playing out in courtrooms right now, and it will likely have a huge effect on the industry going forward.

 

[draggar]

The easiest analogy would be if someone had the name Apple.com and had computer links on a PPC page. Should Apple the company have a right to the name because of the infringement, or should the perfectly generic name stay with the rightful owner, leaving Apple to pursue relief in court.

Apple's TM is in reference to their business with computers so computer related ads would be infringing. Just like if you had Windows.com or Office.com and had computer (software) related ads - but this brings up an interesting point (and maybe back to the original point?)

Office.com - I haven't seen an office that did not have any computers in them so a computer would be an important part of the office - is it possible to have software (even just ads for Quickbooks, Adobe Creative Suite etc..) related ads without infringing?

 

[Gerry]

The arguments about being generic...

Honestly, the term "Good Will" as a generic term or phrase is hardly used or valuable on its own merit. If there was no organization named GoodWill this would be only on a few people's radar and would be lucky to fetch a couple hundred bucks.

Beyond the song lyrics "good will toward's men" and Goodwill Industries, this is a rarely used phrase.

 

[PRED]

apparently if the udrp wins or fails another couple guys are going to go to wipo to get it
Good Will:smilewinkgrin:

 

[Gerry]

apparently if the udrp wins or fails another couple guys are going to go to wipo to get it
Good Will:smilewinkgrin:

Yeah, I thought about Good Will Hunting.

Happy Holidays to you and your precious little girl.

Cheers, Biatch!

 

[WhoDatDog]

Apple's TM is in reference to their business with computers so computer related ads would be infringing. Just like if you had Windows.com or Office.com and had computer (software) related ads - but this brings up an interesting point (and maybe back to the original point?)

Office.com - I haven't seen an office that did not have any computers in them so a computer would be an important part of the office - is it possible to have software (even just ads for Quickbooks, Adobe Creative Suite etc..) related ads without infringing?

Obviously it would be infringing. The question I posed is simple. Should the person lose the domain name or should the dispute be settled in court? Just because a domain name parking page has some links that may infringe on a trademark, is that cause for someone to lose the name, which is an asset.

If you started a pizza restaurant and called it Pappa Jons, instead of Pappa Johns, then you would get sued and likely be forced to change the name. You wouldn't give the restaurant (and land if you owned it) to the complainant. You could suffer monetary damages in a suit, but just because you infringed on Pappa Johns trademark does not mean that Pappa Johns gets the assets.

This seems like a pretty important issue that obviously just flies over people's heads here.

 

[YappYdo]

If it was that important to them, Why oh why didn't they just bid on it, Surely it would be cheaper than paying solicitors huge amounts after wards..

 

[Gerry]

Obviously it would be infringing. The question I posed is simple. Should the person lose the domain name or should the dispute be settled in court? Just because a domain name parking page has some links that may infringe on a trademark, is that cause for someone to lose the name, which is an asset.

If you started a pizza restaurant and called it Pappa Jons, instead of Pappa Johns, then you would get sued and likely be forced to change the name. You wouldn't give the restaurant (and land if you owned it) to the complainant. You could suffer monetary damages in a suit, but just because you infringed on Pappa Johns trademark does not mean that Pappa Johns gets the assets.

This seems like a pretty important issue that obviously just flies over people's heads here.

Seems that in today's tort system, nothing is simple.

Getting too ahead of different issues here.

First Goodwill, and then hypothetical situations of Apple and Papa Johns.

The domain name Goodwill pointing to a Goodwill (TM) or other similar charitable organizations would be monumentally risky to fight. And, as has been shown over and over (thanks to JBerryhill) then the simple answer is, YES...having links pointing to the "confusingly similar" legit business is cause to loose the domains. And, as for assets, YES - a domain name being an asset means you DO LOSE assets.

Seems to me the only way to prevent this is NOT to park but to BUILD a site. I have noticed that when I land on a search page there are many geo targeted links to local merchants.

 

[Focus]

$1000 bet say's goodwill does'nt win this one. They are clearly not entitles to it, what will happen is that the owner will not be allowed to advertise related ppc links on it I'm predicting.

*entitled

thiss janky forum won't let me edit my typo lol

 

[Gerry]

$1000 bet say's goodwill does'nt win this one. They are clearly not entitles to it, what will happen is that the owner will not be allowed to advertise related ppc links on it I'm predicting.

*entitled

thiss janky forum won't let me edit my typo lol

I agree that it will be a tough win.

But, the owner will have a time monitizing this.

 

[David G]

No question this will be an easy win for the TM owner.

 

[WhoDatDog]

Too me the most important question is why someone should lose a generic name if it has links infringing on someone ele's trademark. You can argue all day long about whether there is infringement or not, but if you can't see the bigger issue involved then there is nothing left to say.

Domains are assets. Why should a company be given an asset if the Parking page links infringe on their trademark. They should pursue their case in civil court and get a cash judgement. I know that it is hard to keep people from putting up infringing links, but why nobody sees the bigger picture is a mystery to me. Each time these cases come down the pike everybody argues the same things over and over, when it is obvious that the more important issue is the loss of an asset just because it infringes on the trademark.

If you had a nightclub and called it the Playboy Club you would be infringing on Playboy, and the would get an injunction and you would no longer be able to use the name Playboy. You wouldn't turn over the keys to the club, and the deed to the property.

When there is no plausible other use for a name then transfering the name might be the most appropriate.....like if someone was using EbayMotorCars.com. You are going to see a huge trend of companies taking shots at decent generic names, and some of them are going to win the UDRP and get names that they really shouldn't be entitled to, and the only way to stop the transfer is hire an attorney and spend lots of money.

That is going to put somewhat of a ceiling on very nice, but potentially troubling names. They are going to be worth less until it can be shown that you aren't at risk of losing it.

 

[David G]

$1000 bet say's goodwill does'nt win this one. They are clearly not entitles to it, what will happen is that the owner will not be allowed to advertise related ppc links on it I'm predicting.

As fas as I know they don't rule that way. It's either a complete victory or a loss. I don't believe there is a middle ground as you suggest? Maybe John Berryhill can chime-in?