Use of the word joomla in a domain name.

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herb200mph
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Use of the word joomla in a domain name.

Post by herb200mph » Mon Jan 06, 2020 6:14 pm

Can someone direct us to the legal authority that forbids the use of "joomla" in a domain name.

Open Source Matters owns "Joomla!" with the quotation mark but not the word "joomla" per se.

And, given the fact that a "!" cannot be used in a domain name, any restriction on the use of the copyright and/or trademark word seems unenforceable because the copyright word (with the !) can't be used anyway.

Also, we are not aware of any restriction by any domain name registrars that does not allow the word "joomla" to appear in a domain name.

Accordingly, can someone please direct us to any statutory regulation or "official policy" of someone other than Open Source Matters as to why the word "joomla" cannot be used in a domain name.

Thanks for any help on this question.
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Re: Use of the word joomla in a domain name.

Post by Ch3vr0n » Mon Jan 06, 2020 6:35 pm

5 second google on "joomla trademark"

https://docs.joomla.org/Joomla:Trademarks
https://tm.joomla.org/
https://www.joomla.org/about-joomla/the ... ml?start=3 <== Jason Nickerson, Position: Legal & Finance Department Coordinator , considering the website linked on the bio is "joomlaxtc.com" you're probably safe if you use "joomla" in your name

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Re: Use of the word joomla in a domain name.

Post by herb200mph » Mon Jan 06, 2020 7:09 pm

Thanks Ch3vr0n, read all that stuff.

We just want the legal authority upon which Open Source Matters declares that "joomla" cannot be used in a domain name per se. They seem to waive the saber around in the air very threateningly, but we cannot find any legal authority for them to do so.

Would like an official chime in on their part to our question.
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Re: Use of the word joomla in a domain name.

Post by sozzled » Mon Jan 06, 2020 7:25 pm

The word "joomla" cannot be used in an official capacity as a domain name without approval from OSM. That is, a website using the name Joomla, purporting to be an entity associated with The Joomla! Project or Open Source Matters, is not allowed. The Joomla name (with, or without the exclamation mark) is trademarked. If you want the legal definition, I suggest that you write to the Board of Directors, OSM and seek clarification.

There are several "joomla" domain names used throughout the world that are not administered by OSM, e.g. https://www.joomla.fr/, https://www.joomla.de/, https://www.joomla.it/, https://www.joomla.ru/, https://joomla.org.au/ among others. All of these websites carry the following disclaimer in their footers:
<website-name> is not affiliated with or endorsed by the Joomla!® Project or Open Source Matters. The Joomla!® name and logo is used under a limited license granted by Open Source Matters, the trademark holder in the United States and other countries.
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Re: Use of the word joomla in a domain name.

Post by brian » Mon Jan 06, 2020 7:27 pm

Much as it is tempting to search the web and come up with a legal opinion the only word I would rely upon would be an expert in trademark law
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Re: Use of the word joomla in a domain name.

Post by herb200mph » Mon Jan 06, 2020 9:18 pm

OSM's claim is ludicrous. Asking for a disclaimer is reasonable, but we do not believe there is any legal prohibition if any attempt at fraud is not intended. There are hundreds of websites with joomla in the name and disclaim affiliation, which is likely the minimum a reasonable person would do. OSM does not own the word nor can the control domain name registrations.

Waiting for OSM to state their legitimate claim regarding use with a statutory citation.
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Re: Use of the word joomla in a domain name.

Post by sozzled » Mon Jan 06, 2020 9:30 pm

I cannot honestly comment on OSM's claim. I can only honestly offer my personal view. I am not associated with OSM and my comments are not endorsed by OSM or the J! Project. I think @brian's view is reasonable. I also think that my view is reasonable, too, given what I've read. I don't know the definitive legal answer; I don't know if there have been any legal challenges made in a court of competent jurisdiction or at equity.

I assume that, when @herb200mph wrote, "... wating for OSM to state their legitimate claim regarding use with a statutory citation", that @herb200mph used my suggestion and wrote to the OSM Board of Directors for that information. Otherwise, the only other information we can work with are the lists of disclaimers displayed at https://docs.joomla.org/Joomla:Trademarks and also at https://tm.joomla.org/disclaimers.html

However, when I wrote
sozzled wrote:
Mon Jan 06, 2020 7:25 pm
The word "joomla" cannot be used in an official capacity as a domain name without approval from OSM. That is, a website using the name Joomla, purporting to be an entity associated with The Joomla! Project or Open Source Matters, is not allowed.
... what is allowed or not allowed is only my opinion. To put it another way, if The Joomla! Project or OSM believe that a domain name is used to misrepresent the interests of The Joomla! Project or OSM, then it is a matter for OSM to challenge the use of that domain name and seek a "cease and desist" order, challenge the case at equity, or sue for defamation if OSM sees it that way.

Literally, OSM doesn't own or restrict the use of "joomla" as a domain name; what is allowed or disallowed as a domain name is handled by domain issuers (or whatever is the correct term for these organisations) around the world. OSM is not a domain issuer. Ultimately, it's a matter for a court of competent jurisdiction to make the final determination but, as far as OSM's policy is concerned, the references in this discussion are fairly clear.

Some things cannot be trademarked. For example, "water" or "The Earth" or "God". That's a matter for intellectual property regulators to determine what can, or cannot, be trademarked.
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Re: Use of the word joomla in a domain name.

Post by toivo » Tue Jan 07, 2020 12:51 am

According to the Trademark Policy at https://tm.joomla.org/trademark-policy.html,
tm.joomla.org wrote:Second, you may not incorporate the Joomla! name or logo into the name or logo of your website, product, business or service.
Please note that the exclamation mark (bang) is irrelevant here because it cannot be used in domain names, according to https://docs.joomla.org/Joomla:Proper_u ... omla!_name.

You can send a request to OSM to be able to register a TLD with one of the trademarks, as long as OSM remains as the registrant: https://tm.joomla.org/registration-of-domain-names.html. Open-and-shut case.

However, as implied already by @Ch3vr0n, it is not clear how closely the use of the word 'joomla' in domain names is monitored by the TM office holders nowadays because the list of approved domains at https://tm.joomla.org/approved-domains.html has not had a TM ticket since 2017, only JUG cases in 2018, and new domain names with 'joomla' in them seem to appear all the time.
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Re: Use of the word joomla in a domain name.

Post by brian » Tue Jan 07, 2020 11:18 am

> Literally, OSM doesn't own or restrict the use of "joomla" as a domain name;

As the trademark holder it holds a much wider set of rights
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Re: Use of the word joomla in a domain name.

Post by herb200mph » Tue Jan 07, 2020 12:52 pm

My summary: The word "joomla" can be included in any domain name, given the lack of statutory restrictions.

Now then, to keep OSM from having an issue, all that is needed is a "disclaimer" of a non-relationship. That is what is demand whened "they" approve a domain name with "joomla" within it, an action, per se, they have no right to demand nor require of a private individual registering a domain name.

Accordingly, our view is "use it" then do a Mission Impossible thing and "disavow any knowledge or relationship" with OSM. And also do not use the Joomla! logo within the website, and when referencing anything specific, simply enter a legal disclaimer and credit OSM.

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Re: Use of the word joomla in a domain name.

Post by waarnemer » Tue Jan 07, 2020 1:50 pm

As far as I was once told by some US legal eagles... when in a dispute on domain names and trademarks:

A trademark is a trademark and that is protected by law. Period.
You can have a similar name as the trademark if you and your business use the name since a periode as long or before the use of the particular trademark.

Or

If the trademark is a surname like Baker... there is too many bakers around to have that one distinct enough.. in these situations, industry, area, target and some more are taken into the legal soup of what is allowed or not.

In the case of Joomla! which has been derived from the Swahili Jumbla/Jumla... it is clear this name and the way it is written (double O) is distinct enough to be a full trademark without exceptions...

Anyone in the world can register a domain name with Joomla! in it. That doesn't mean they can actually use it.

And true no action can be taken. But soon as the domain is actively used, legal action can be taken to have you give up the domain.

So on Joomla domains and trademarks..

OSM is owner and is to decide who is allowed, can and may use it.
So of course you can register any domain name out there in the world with Joomla(!) in it but you cannot use it.
Unless, unless... you already owned a business way before the trademark on Joomla(!) was coming into effect and you can prove you already used Joomla(!) in your business outings way before and not related to Joomla(!) as a cms, framework etcetera, etcetera... and of course much more...

And since you are in the USA... you are in no situation to "escape"... same jurisdiction sort of... if you where in "Whateveritania" with odd laws and rules, and "looking-the-other-way" authortities... yep maybe....

Then again... this is what I was told by some USA trademark lawyers.... and lawyers cannot be trusted they say... sorry lawyers for the stereotyping... no pun intended....
You want to know all? ask https://www.uspto.gov/




Anyway... So, what exactly holds you back from asking them? (OSM)

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Re: Use of the word joomla in a domain name.

Post by herb200mph » Tue Jan 07, 2020 1:59 pm

So, after you get in OSM's face about this issue, do you really think use permission would be given? HA HA
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Re: Use of the word joomla in a domain name.

Post by waarnemer » Tue Jan 07, 2020 2:23 pm

As far as I can read in https://tm.joomla.org/trademark-policy.html you sort of have all the permissions you need.... just ask.

Unless there is something that violates the interest of Joomla! of course

 

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