Hello JP and Adam

We have actually been getting the usual form letter for two domains we had
registered recently, replied to them, explained, and that was that.
The domains I am referring to are: e-golddinar.com and egolddinar.com

There are two main distinctions between the two above and
e-gold-casino.com, though. As JP points out, latter has actually the name
'e-gold' in it, and I would think that to be indeed an infringement.
More so as the message that White Bear posted actualy quotes 'Egold
Casino'.

The difference between the casino and our two domains is this:
We registered the two names as 'Electronic Golddinar', NOT as 'eGold
Dinar'.
This fine nuance, makes all the difference. After all, as I explained in
my reply to the e-mail from e-gold at the time, E-gold Ltd. can not
possibly claim the trademark on a currency that what widely in use some
600 years before Columbus (re-)discovered America.

Adding the 'e-/e' in front is a widely used practice that signifies the
electronic version of a real life article or service. Hence
e-golddinar.com can not possibly infringe on the e-gold trademark.

Of course, in our case, there is also to consider that we are building an
information site about the electronic version of the Golddinar system as
it is being developed and promoted by the Malaysian government. That in
itself, should make a lot of difference.

To sum up, rather than looking at the words used in the domain three other
tests need to be applied to establish if an infringement indeed takes
place:

(1)
Does the domain name include the actual trademark or parts thereof and
does the operator engage in a related field?
(ie. e-gold-seller.com infringes, egoldcardonline.com doesn't - if it
stands for Electronic GoldCard Online and neither is, nor accepts DGC)

(2)
Does the domain name that includes all or parts of the trademark,
capitalize on the trademark? (in the sense of promoting something that
will benefit from the use of the trademark, such as e-goldseller.com)

(3)
Are the motives of the registrant of a domain name such, that he wants to
benefit from the fact that e-gold.com is well known in certain circles and
is there evidence that the registrant acted in bad faith?

Looking at the above, I would say e-gold-casino.com does indeed infringe
in the first two instances, while e-golddinar.com doesn't at all.

I personally dislike the thinking of 'anything goes unless litigation
proves otherwise'. On the other hand, there need to be limits to what one
can claim and I think that the three tests above should be used - in
addition to common sense - to establish if an infringement is taking place
or not.
And if a site that has e-gold in the domain name but has nothing to do
with DGC and the domain name actually means 'electronic gold-something'
then that can not possibly seen as an infringement on the e-gold
trademark, or?

Cheers,
Robert.

PS - just imagine the Austrians would claim prior art on the word 'Dollar'
because it is derived from the word 'Taler' and would then proceed to
trademark it and force other countries to rename their currencies...

budget & privacy website hosting
http://www.cyberica.net
budget & privacy domain registrations + mail
http://www.u2planet.com/cfdomaintrust.html



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