Trademark

Northland Insurance Companies v. Blaylock

Date: 

02/08/2000

Threat Type: 

Lawsuit

Party Receiving Legal Threat: 

Patrick Blaylock

Type of Party: 

Organization

Type of Party: 

Individual

Court Type: 

Federal

Court Name: 

United States District Court for the District of Minnesota

Case Number: 

No. 00-308(DSD/JMM)

Legal Counsel: 

Paul A. Ledford - Saliterman and Seifferman

Publication Medium: 

Website

Relevant Documents: 

Status: 

Concluded

Disposition: 

Injunction Denied
Settled (total)

Description: 

In February 2000, Northland Insurance Companies (Northland) sued Patrick Blaylock in federal court in Minnesota, claiming trademark infringement, trademark dilutions, and violations of the Anticybersquatting Consumer Protection Act (ACPA). The case revolved around Blaylock's registration and operation of gripe sites at www.northlandinsurance.com and www.sailinglegacy.com. Blaylock, a former client of Northland, created the websites after a dispute arose about insurance coverage for a yacht. On the sites, Blaylock commented upon and criticized Northland and its business practices.

Northland's lawsuit focused on the use of its trademark in the domain name of the website at www.northlandinsurance.com. Northland filed a motion for a preliminary injunction, asking the court to order Blaylock to shut down the site. Blaylock filed a motion to dismiss. In September 2000, the district court denied both motions. In its ruling, the court held that Northland had not shown a likelihood of success on the merits of its trademark claims, nor had it shown that it would suffer irreparable harm without an injunction.

Specifically, the court found that Northland had not shown a sufficient likelihood of confusion to justify issuing an injunction, and it refused to apply the doctrine of "initial interest confusion" to Blaylock's conduct because he was not a competitor of Northland and he did not stand to gain financially from consumers' initial confusion about the domain name. The court also found that Northland was unlikely to succeed on its dilution claim because Blaylock used the site for noncommercial commentary. Finally, the court determined that Blaylock 's registration of the domain name was not motivated by a "bad faith intent to profit," as required for a successful claim under the ACPA. The court gave weight to the fact that Blaylock used the website for noncommercial commentary, had not registered multiple variants of Northland's name or previously registered other trademarks as domain names, and had not offered to sell the domain to anyone.

In early 2001, the parties submitted a joint stipulation dismissing the case with prejudice, indicating that they probably settled.

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CMLP Notes: 

 

 

How Trademark Law Casts A Dark Cloud Over Free Speech

Bill McGeveran, a University of Minnesota law professor and friend of the CMLP, has published his article, "Four Free Speech Goals for Trademark Law" in the Media & Entertainment Law Journal, volume 18 (available at SSRN).

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T-Mobile v. Engadget

Date: 

03/20/2008

Threat Type: 

Correspondence

Party Receiving Legal Threat: 

Weblogs, Inc.

Type of Party: 

Large Organization

Type of Party: 

Organization

Publication Medium: 

Blog

Status: 

Pending

Description: 

On March 20, 2008, Deutsche Telekom, the parent company of T-Mobile, sent a letter to Weblogs, Inc., the company that runs Engadget, requesting that it stop using the color magenta in the logo for its Engadget Mobile news blog. The letter, which is available on Engadget, states that T-Mobile has been "using the color magenta as a company identifier and core branding element for years," and that "the company therefore holds trademark protection for the use of this color in connection with its products and services in many territories around the world."

The letter goes on, in an uncommonly polite tone for a C&D, to indicate that customers might be confused about T-Mobile's relationship to the blog. Even more diplomatically, it continues: "we would therefore appreciate if you would replace the color magenta in the Engadget Mobile logo and discontinue using the color in a trademark-specific way on your website." The letter concludes with a request that Engadget "respond with any comments" within two weeks. T-Mobile officers deny that this is a cease-and-desist letter at all (which is a plausible reading), indicating instead that it was meant to "open a dialogue."

Engadget does not see the letter as a request or invitation to dialogue, but as a demand (also a plausible reading). And the blog has responded by posting the letter and arguing that there are no grounds for confusion. Engadget has also changed its logo in jest to make it look more like T-Mobile's. A number of other tech and mobile phone bloggers have "gone magenta" in solidarity with Engadget (here, here, here, and here). As of April 3, T-Mobile has taken no further action.

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CMLP Notes: 

Source: Likelihood of Confusion blog

Status checked on 6/9/2008, no new information. There was a related posting on Engadget about T-Mobile's loss in a similar magenta-related suit against Telia in Denmark, which I thought was too tangential to include in the description, but salient enough to throw into the related links field. (AAB)

T-Mobile Asks Engadget to Stop Using the Color Magenta

I was sure that this was an April Fool's joke. But alas, it's true. Deutsche Telekom, the parent company of T-Mobile, sent Engadget a letter a few weeks ago, requesting that the popular tech blog stop using the color magenta in the logo for its Engadget Mobile news blog. Here are the two logos side-by-side (courtesy of Engadget):

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Court Rejects Wal-Mart's Bid to Silence Criticism Through Trademark Law

Last Thursday, a federal court in Georgia handed down a big win for free speech when it ruled that Wal-Mart could not use trademark law to stop a critic from disseminating his virulently anti-Wal-Mart views over the Internet. From Public Citizen's press release:

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Wal-Mart v. Smith (Counterclaims)

Date: 

03/28/2006

Threat Type: 

Lawsuit

Party Receiving Legal Threat: 

Charles Smith

Type of Party: 

Large Organization

Type of Party: 

Individual

Court Type: 

Federal

Court Name: 

United States District Court for the Northern District of Georgia

Case Number: 

No.1:06-cv-526-TCB

Legal Counsel: 

Paul Alan Levy; Margaret Fletcher Garrett, Elizabeth Lyn Littrell, Gerald R. Weber

Publication Medium: 

Website
Other

Relevant Documents: 

Status: 

Pending

Disposition: 

Dismissed (total)

Description: 

Wal-Mart filed counterclaims in a lawsuit against Charles Smith, asserting trademark and unfair competition claims under federal and state law. The case arose after Smith created a website using the domain name www.walocaust.com and started selling nazi-themed "Walocaust" merchandise through his account on Cafepress.com. Smith, a passionate critic of Wal-Mart, created a number of "Walocaust" graphics that parodied Wal-Mart's familiar trademarks and slogans by likening Wal-Mart's business practices to nazism and its effect on communities to the Holocaust. Smith reproduced these graphics on his website and printed them on T-shirts and other novelty merchandise that he sold through Cafepress. Wal-Mart sent cease-and-desist letters to Smith and CafePress in December 2005 and February 2006. Smith responded by filing a lawsuit in federal court in Georgia seeking a declaration that his use of the "Walocaust" was lawful, and Wal-Mart counterclaimed.

Wal-Mart asked the court for an injunction barring Smith from making any commercial use of the prefix "Wal," for an order awarding it ownership of Smith's Wal-Mart-related domain names, and nominal damages. After the lawsuit commenced, Smith registered the domain names www.wal-qaeda.com and www.walqaeda.com and developed a new series of graphics for CafePress merchandise combining "Wal-Mart" with "Al-Qaeda" and expressing Smith's virulently anti-Wal-Mart views.

In March 2008, the federal district court granted summary judgment to Smith on all counts and dismissed Wal-Mart's counterclaims. The court held that Smith's use of Wal-Mart trademarks was a parody, and that no reasonable person would be confused by Smith's parodic use. The court further ruled that Wal-Mart's trademark dilution claim was barred because Smith's use of the company's trademarks was protected "noncommercial" speech, despite the fact that he placed his graphics on items like T-shirts sold to the public.

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CMLP Notes: 

Source : Randazza and Likelihood of Confusion.

Updated 6/6/08 (JMC)

Wal-Mart v. Smith (Letters)

Date: 

12/28/2005

Threat Type: 

Correspondence

Party Receiving Legal Threat: 

Charles Smith

Type of Party: 

Large Organization

Type of Party: 

Individual

Legal Counsel: 

Paul Alan Levy; Margaret Fletcher Garrett, Elizabeth Lyn Littrell, Gerald R. Weber (in subsequent litigation)

Publication Medium: 

Website
Other

Relevant Documents: 

Status: 

Concluded

Disposition: 

Lawsuit Filed

Description: 

On December 28, 2005 and again on February 1, 2006, Wal-Mart sent cease-and-desist letters to Charles Smith and CafePress asserting trademark and unfair competition claims. The letters came after Smith created a website using the domain name www.walocaust.com and started selling nazi-themed "Walocaust" merchandise through his account on Cafepress.com. Smith, a passionate critic of Wal-Mart, created a number of "Walocaust" graphics that parodied Wal-Mart's familiar trademarks and slogans by likening Wal-Mart's business practices to nazism and its effect on communities to the Holocaust. Smith reproduced these graphics on his website and printed them on T-shirts and other novelty merchandise that he sold through Cafepress.

In response to the cease-and-desist letters, CafePress removed all of Smith's Wal-Mart-related merchandise from his online "store." With the help of Public Citizen, Smith filed a lawsuit in federal district court in Georgia asking the court for a declaratory judgment that his use of "Walocaust" was lawful. Wal-Mart counterclaimed, asserting various federal and state trademark claims and asking the court for an injunction barring Smith from making any commercial use of the prefix "Wal," for an order awarding it ownership of Smith's Wal-Mart-related domain names, and nominal damages. After the lawsuit commenced, Smith registered the domain names www.wal-qaeda.com and www.walqaeda.com and developed a new series of graphics for CafePress merchandise combining "Wal-Mart" with "Al-Qaeda" and expressing Smith's virulently anti-Wal-Mart views.

In March 2008, the federal district court granted summary judgment to Smith on all counts and dismissed Wal-Mart's counterclaims. The court held that Smith's use of the Wal-Mart trademarks was a parody, and that no reasonable person would confused by Smith's parodic use. The court further ruled that Wal-Mart's trademark dilution claim was barred because Smith's use of the company's trademarks was protected "noncommercial" speech, despite the fact that he placed his graphics on items like T-shirts sold to the public.

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Subject Area: 

CMLP Notes: 

Source : Randazza and Likelihood of Confusion

Utah Lighthouse Ministry v. Wyatt

Date: 

04/25/2005

Threat Type: 

Lawsuit

Party Receiving Legal Threat: 

Allen L. Wyatt; Discovery Computing, Inc.; The Foundation for Apologetic Information & Research (FAIR); Scott Gordon; Does 1-10

Type of Party: 

Organization

Type of Party: 

Individual
Organization

Court Type: 

Federal

Court Name: 

United States District Court for the District of Utah

Case Number: 

2:05CV000380DAK

Legal Counsel: 

Lance Starr (for DCI and Wyatt); Ronald L. Dunn (for FAIR and Gordon)

Publication Medium: 

Website

Relevant Documents: 

Status: 

Concluded

Disposition: 

Dismissed (total)

Description: 

The Utah Lighthouse Ministry (UTLM), an organization that publishes information critically analyzing the history and doctrines of the Church of Jesus Christ of Latter-day Saints (LDS), sued Allen Wyatt, his company Discovery Computing, Inc. (DCI), the Foundation for Apologetic Information & Research (FAIR), and one of FAIR's directors, Scott Gordon. UTLM publishes its views and sells books written by its founders, Jerald and Sandra Tanner, on its official website, www.utlm.org. Wyatt, a professional website designer and the Vice President of FAIR, a non-profit organization that responds to criticisms of LDS, created a website which attempted to parody the UTLM official site and linked visitors to pro-LDS sites. Wyatt bought several domain names and redirected them all to his parody website. The domain names included www.utahlighthouse.com, www.sandratanner.com, www.jeraldtanner.com, www.uthahlighthouse.org, plus six other similar names.

In April 2005, UTLM sued Wyatt,DCI, FAIR, and Gordon in Utah federal court for trademark infringement and dilutition, trade dress infringement, cybersquatting, and violation of federal and state unfair competition laws. Among other things, the complaint alleged that the defendants' use of UTLM's trademarks in the domain names associated with the Wyatt website infringed its trademark rights because that site and the official UTLM site were confusingly similar.

In March 2007, the district court granted the defendants' motions for summary judgment and dismissed the lawsuit. The court held that the trademark, trade dress, dilution, and unfair competition claims failed because Wyatt's website did not constitute a "commercial use" of UTLM's marks, but rather a "noninfringing parody of Plaintiff's site." The court further held that there was no evidence that the defendants registered the domain names with a "bad faith intent to profit" from the UTLM marks, as required for a cybersquatting claim.

Update:

5/29/2008 - On appeal, the Tenth Circuit affirmed the district court's judgment.

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Lifestyle Lift v. Real Self -- Using Trademark Law to Silence Critical Reviews?

Eric Goldman published an interesting post yesterday about a new case, Lifestyle Lift Holding, Inc. v.

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Lifestyle Lift Holding, Inc. v. Real Self, Inc.

Date: 

01/07/2008

Threat Type: 

Lawsuit

Party Receiving Legal Threat: 

Real Self, Inc.

Type of Party: 

Organization

Type of Party: 

Organization

Court Type: 

Federal

Court Name: 

United States District Court for the Eastern District of Michigan

Case Number: 

2:08-cv-10089

Legal Counsel: 

J. Michael Huget; Deborah J. Swedlow; Timothy J. Lowe

Publication Medium: 

Forum

Relevant Documents: 

Status: 

Concluded

Disposition: 

Settled (total)

Description: 

Lifestyle Lift, Inc. owns the trademark "Lifestyle Lift" for use in connection with cosmetic and plastic surgery procedures. The company licenses this trademark to cosmetic and plastic surgery centers across the country, and doctors perform facelift procedures marketed to the public under the name "the Lifestyle Lift." In January 2008, Lifestyle Lift sued Real Self, Inc., the operator of RealSelf.com, an interactive website with forums that let consumers discuss their experiences with cosmetic and plastic surgery procedures and vote on whether a procedure was "worth it" or "not worth it." A number of RealSelf users have written negative reviews of the Lifestyle Lift procedure, with 55% of users currently saying that the procedure was "not worth it."

The complaint alleges federal trademark infringement, unfair competition under federal and state law, and a violation of the Michigan Consumer Protection Act. It claims that RealSelf.com passed itself off as affiliated with Lifestyle Lift by using its trademark in metadata and publishing a page that incorrectly listed contact information for doctors performing its procedure in Michigan. It is not altogether clear the extent to which Lifestyle Lift is alleging that RealSelf user reviews incorporating its mark violated its trademark rights. (Notably, one of the exhibits to the complaint consists almost entirely of user reviews about Lifestyle Lift.)

On March 3, 2008, Real Self filed an answer alleging that its use of the mark is a fair and nominative use (the latter defense refers to situations where you need to use someone's trademark in order to discuss or comment on a product or service). The company also filed counterclaims, alleging that Lifestyle Lift violated its terms of service (and unfair competition laws) by planting shill reviews in the Lifestyle Lift discussion threads.

Update:

5/12/08 - The parties settled. The terms of the settlement are not public. 

7/15/2009 - According to the New York Times, Lifestyle Lift agreed to pay $300,000 in penalties and costs to New York State to settle an action brought be the New York Attorney General over Lifestyle Lift's practice of posting fake reviews on consumer review websites posing as satisfied clients.

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The Boston Beer Co. v. Sam Adams for Mayor

Date: 

10/17/2007

Threat Type: 

Correspondence

Party Receiving Legal Threat: 

David Anderson; Sam Adams for Mayor

Type of Party: 

Large Organization

Type of Party: 

Individual

Publication Medium: 

Website

Relevant Documents: 

Status: 

Concluded

Disposition: 

Withdrawn

Description: 

Sam Adams, the Portland City Commissioner, was considering running for mayor of Portland, Oregon. Two DJs from local news radio station 1190 KEX registered the domain names www.samadamsformayor.com and www.mayorsamadams.com because they were supporters of Adams and wanted him to run for mayor.

David Anderson, one of the DJs, received a cease-and-desist letter from The Boston Beer Company, manufacturer of Sam Adams beer. The letter noted Anderson's registration of the domain names and claimed that "the sale of any services or products under this name" would infringe and/or dilute the company's rights in its SAM ADAMS and SAMUEL ADAMS registered trademarks. It also suggested that Anderson could be held liable for violation of the Anticybersquatting Consumer Protection Act.

In response, the radio station called The Boston Beer Company and explained the situation. A little over a week later, the Beer Company issued a press release apologizing for the initial letter and stating that candidate Sam Adams has every right to use his own name.

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CMLP Notes: 

stefani editing

Menhart v. Grossman

Date: 

01/01/2007

Threat Type: 

Correspondence

Party Receiving Legal Threat: 

Michael Grossman

Type of Party: 

Individual

Type of Party: 

Individual

Legal Counsel: 

Martin Schwimmer

Publication Medium: 

Blog

Status: 

Concluded

Disposition: 

Withdrawn

Description: 

Eric Menhart is a lawyer who practices Internet law or "cyberlaw" in Washington, D.C. He is the principal attorney at a law firm called "CyberLaw P.C" and operates the blog Cyberlawg. Michael Grossman, a Chicago-based attorney, operated a blog entitled "CyberBlawg." Menhart sent Grossman a letter asserting Grossman was violating his trademark rights. In his own blog entry about the topic, Menhart says that the letter was "informal" and was about a "potential dilution" of his blog's name. Grossman has since changed the name of his blog.

This is part of Menhart's ongoing quest to trademark the term "cyberlaw." In December 2007, Menhart applied for trademark rights on the term, sparking outcries from many cyberlawyers who claimed that Menhart's application would not succeed because the term "cyberlaw" is generic. In February 2008, Menhart amended his trademark application, and he now is only trying to register his firm's stylized logo which incorporates the word "cyberlaw." In Eric Goldman's view, this move signifies that cyberlawyers, including Grossman, "are now free to use the term 'Cyberlaw' for its dictionary meaning without fear of getting sued by Menhart."

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Whitney Information Network v. Xcentric Ventures

Date: 

01/27/2004

Threat Type: 

Lawsuit

Party Receiving Legal Threat: 

Xcentric Ventures, LLC; Badbusinessbureau..org; Ed Magedson

Type of Party: 

Individual
Organization

Type of Party: 

Individual
Organization

Court Type: 

Federal

Court Name: 

United States District Court for the Middle District of Florida; United States Court of Appeals for the Eleventh Circuit

Case Number: 

2:04-CV-47-FtM-34SPC (trial court); 06-11888 (appellate court)

Legal Counsel: 

Maria Crimi Speth; Denise B. Crockett; Michael L. Gore; Jonathan P. Ibsen; James A. Weinkle; Brian J. Stack

Publication Medium: 

Forum

Relevant Documents: 

Status: 

Concluded

Disposition: 

Dismissed (total)

Description: 

In January 2004, Whitney Information Network, Inc., a company that provides real estate training programs and seminars, and its CEO Russ Whitney sued Xcentric Ventures, LLC and its founder and managing member, Ed Magedson. Xcentric operates the Ripoff Report website, located at www.ripoffreport.com and www.badbusinessbureau.com, which allows visitors to read and post reports about companies that allegedly have "ripped off" consumers. A number of reports saying derogatory things about Whitney Information Network appeared on the Ripoff Report website. In the original complaint, the plaintiffs alleged that Xcentric and Magedson violated federal and state trademark laws and committed defamation of business reputation (often referred to as "trade libel") by publishing these reports.

In July 2005, the district court dismissed the original complaint, but granted the plaintiffs permission to file an amended complaint. Whitney Information Network re-filed an amended complaint, including only the defamation claim. In the amended complaint, Whitney alleged that Xcentric and Magedson not only published critical reader reports, but edited the complaints to include words like "ripoff" and "scam," and also fabricated certain reports altogether. In February 2006, the court dismissed the amended complaint, reasoning that CDA 230 barred the defamation against Xcentric and Magedson. The Eleventh Circuit Court of Appeals reversed the ruling in March of that year, holding that the allegations that the defendants had altered and fabricated reports were sufficient for Whitney Information to survive a motion to dismiss.

Back in the trial court, the defendants moved for summary judgment, arguing that there was no evidence that they altered or fabricated reports and that CDA 230 thus barred Whitney Information's claim. In February 2008, the court granted the motion for summary judgment, dismissing the amended complaint in its entirety. The court held that Whitney Information had not come forward with any competent evidence to show that Magedson or anyone else working for Xcentric edited or fabricated any reports about it.

The court also rejected Whitney Information's argument that Xcentric and Magedson forfeited the protection of CDA 230 by requiring readers to describe their complaints by choosing from a drop-down menu of tags when submitting a report. The available tags included categories like "con artists," "corrupt companies," and "false advertisements" (which were allegedly applied to reports about Whitney), as well as more neutral terms like "seminar programs," "multi level marketing," "financial services," and "business consulting," just to name a few. The court also rejected the argument that the defendants should lose the protection of CDA 230 because they encouraged and actively solicited defamatory statements from their users.

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CMLP Notes: 

See about status

Ford Motor Company v. 2600 Enterprises

Date: 

04/18/2001

Threat Type: 

Lawsuit

Party Receiving Legal Threat: 

2600 Enterprises; Eric Corley (a.k.a. Emmanual Goldstein)

Type of Party: 

Large Organization

Type of Party: 

Individual
Organization

Court Type: 

Federal

Court Name: 

United States District Court for the Eastern District of Michigan (Southern Division)

Case Number: 

01-CV-71685-DT

Legal Counsel: 

Eric Grimm

Publication Medium: 

Website

Relevant Documents: 

Status: 

Concluded

Disposition: 

Injunction Denied

Description: 

As an act of "cyber-art," defendants 2600 Enterprises and Eric Corley registered the domain name www.fuckgeneralmotors.com and programmed the associated website so that it would automatically redirect to www.ford.com, Ford Motor Company's official website. Ford sued for trademark dilution, trademark infringement, and unfair competition under the Lanham Act. In its complaint, Ford claimed that the defendants' actions caused Ford to be "linked not only to the vulgar, strident criticism of a competitor, but also associated with the offensive, obscene word that is used in the domain name."

The federal district court in Michigan denied Ford's motion for a preliminary injunction, thus allowing 2600 and Corley to continue to link their website to Ford's. The court ruled, for purposes of the trademark dilution claim, that 2600 and Corley had not made a "commercial" use of the Ford trademark because it appeared only in the programming code that created the hyperlink to Ford's site. The court reasoned:

This court does not believe that Congress intended the FTDA to be used by trademark holders as a tool for eliminating Internet links that, in the trademark holder's subjective view, somehow disparage its trademark. Trademark law does not permit Plaintiff to enjoin persons from linking to its homepage simply because it does not like the domain name or other content of the linking webpage.

Based on similar reasoning, the court ruled that 2600 and Corley had not used Ford's mark "in connection with the sale, offering for sale, distribution, or advertising of any goods or services," as required for the trademark infringement and unfair competition claims.

Ford initially appealed the decision, but later withdrew the appeal.

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CMLP Notes: 

 

 

Slandering Sandwiches and User Submitted Content

Our very own Sam Bayard popped up today in a New York Times article about the Subway v. Quiznos lawsuit, humorously named: "Can a Sandwich be Slandered?" The article does a good job highlighting the complicated issues involved in the case (and implicated by company sponsored competitions for "homemade commercials" generally).

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Naming Your Business: Searching for Trademarks of Others

Once you have chosen a business name, you should make sure that someone else is not already using it in a similar field. The easiest first step is to search an Internet search engine for your proposed name. If it is a common word that brings up a lot of results, add keywords relevant to your business or organizationto see if any similar enterprises have adopted the same name. If you see any other websites doing work similar to yours, you should consider choosing a different name.

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