While walking along W 34th Street, under the Empire State Building, I had to do a double take. At first my eyes were drawn to the massive Super Dry logo – my colleague has a Super Dry jacket and I never really understood the name – but then my eyes were hooked on the first NYC domain name that I won back in October 2014, Kids.nyc. Is this domain trademark infringement, a harmless coincidence, or something else?
Even though it’s been sometime since I posted at Kids.nyc, did that really give this store the feeling that they could move in on my turf!
I did a little research and found that the store wasn’t there back in August 2017 as shown in Google Street View below:
I had a similarly shocking, yet less worrisome feeling when I saw my domain being used in an illustration in the Wall Street Journal a couple of weeks after bidding on the domain back in 2014. The article was called, “The Gold Rush is on for Dot NYC Domains” and I remember feeling validated that the almost-$3000 that I spent on the domain must have been worth it if it was one of the 4 domain names that the WSJ illustrator chose to use.
So I snapped my photos of the storefront and rushed to the train, with lingering thoughts of, “Why did they choose this logo?”, “What’s the deal with that apostrophe?”, “How do I protect my domain and my website?”, “Although I don’t have a registered trademark, I have developed the domain, written articles and even printed business cards and pins. Doesn’t this somewhat establish unregistered trademark protection?”.
A while ago, while reading information on the Trademark Clearinghouse website (the system created to safeguard rights holders and alert potential registrants during the gTLD expansion) I learned that they were not accepting trademarks containing a dot and that the right of the dot (in this case .nyc) is rarely considered as part of the trademark. In the case of Kids.nyc, “Kids” becomes the mark in question which seems far too generic to be awarded a registered trademark.
Anyways, I think that this kind of misunderstanding is more possible with geoTLDs (especially a short one like .nyc) as businesses stick “.nyc” next to a word to make a new construct. This both increases the likelihood of these types of coincidences and simultaneously gives generic.nyc domains the strength/power of familiarity. I wonder if this store knows that .nyc makes their name (absent the apostrophe) a domain name or are they oblivious?
I don’t necessarily think this is harming my website, but arguably there is a level of infringement happening (confusingly similar trademarks in the same category of business – kid stuff!) and if they get bigger and open more stores then this could possibly cause confusion and make shoppers/visitors think there’s an association between their store and my website.
To a larger point in the naming of websites and gTLDs, it all goes down to the effect of a dot (“.”). Why did “KID’S.NYC” add a dot in their sign instead of a space, star or dash? Are people outside of domain investors and web developers even thinking “website name” when they see (or “hear”) “word dot word”? In a city like NYC where .NYCs are becoming more commonplace maybe there’s less of an excuse, or maybe not?
So what do you think the legality is here? Should they have to take their sign down or at least switch the dot for a star? Is my domain, website and investment at risk? Would be great to hear some perspectives in the comments below.