“Automattic is actively asking businesses having the word ‘woo’ in their domain name to change the domain name,” WP Mayor wrote Monday in a blog post.
The first known site to bow to the pressure is WooGPL, a WooCommerce plugin and extension company. WooGPL owner Billy Ablett announced in March that he will close up shop in June in an effort to “keep the peace.” Automattic contacted Ablett and claimed his use of the word “Woo” constituted trademark infringement, the announcement stated.
WooGPL’s announcement points out that the company has been operating for two years and Automattic’s trademark on Woo began in October 2015, roughly five months after Automattic acquired WooThemes.
“[But] to keep the peace and ensure we don’t step on anyone’s toes we have decided to cease operation and close down the WooGPL service in 90 days of writing this post,” WooGPL wrote.
This isn’t the first time Automattic has gone after a company citing a trademark breach. In July of last year, a dispute between Automattic and Thesis developer Chris Pearson erupted into a very public trademark battle. Automattic outbid Pearson for the domain name Thesis.com in 2014. The following year, Pearson filed a cybersquatting complaint with the National Arbitration Forum.
Pearson claimed he had the right to the Thesis trademark, which Thesis.com would fall under. Because of this, he claimed Automattic intended to use the domain name to confuse potential customers.
The panel decided Automattic did not buy the domain name maliciously, and Automattic was allowed to keep it.
The WordPress Foundation last year also waged war on domain names when it claimed wordpresshelpers.com violated its trademark by using “WordPress” in its domain.
The suit cited the WordPress Foundation Trademark policy:
“Under no circumstances is it permitted to use WordPress or WordCamp as part of a top-level domain name.”
The case was eventually settled out of court. The site’s creator Jeff Yablon agreed to cease the use of all WordPress name, logo, and trademarks. He then had to transfer all of the disputed domain names to the WordPress Foundation. This was another instance, however, that the trademark for “WordPress” was officially filed after wordpresshelpers.com was created.
The Foundation agreed to direct the disputed domains to Yablon’s sites for six months and drop all legal proceedings.
These cases were hotly debated within the WordPress ecosystem, and polarized the community.
Although a very complicated issue, it is definitely an important one. This begs the question: what will happen with the non-WordPress companies that use the Woo moniker, like the coupon company Woobox?
WooThemes does provide a style guide that details when the use of “Woo” is an infringement and when it’s not. In addition, the bottom has a contact form where you can reach out to Automattic directly to ask for permission.