Cybersquatters challenged: UN - MyADSL

[Acorn Newsbot]

Cybersquatters challenged: UN
MyADSL,*South Africa*- 6 hours ago
... But the trend seemed to be tied to the expansion of the Internet, he said, noting that there were now about 60.0 million registered domain names.
Link To Original Article

 

[retired_member6]

Since 1999, trademark holders have been able to file cybersquatting complaints with the United Nations? intellectual property body.

Is that true? amazing, the same group of people who wish to tax nations directly. They'll get their day, they just need to wait five hundred years, everyone's in a rush to join all countries up together, I suppose it makes space rights easier in the end...

 

[domaingenius]

The less domains that become available the more pressure will be put on the "cybersquatters" and situations such as that recent 3 letter Nominet decision where a TM was obtained 3 years after the domain was registered and yet suceeded in winning the domain will occur. Lets look at that. Lets say I registered, or example, soap.co.uk and on that I have google adsense which puts adverts for soap related products on the web page of that domain. What is to stop someone obtaining a TM for "soap" and then the TM holder could claim that because adsense was putting adverts for soap related products on the domain web site it was passing off and violating the TM ?. I just see the situation starting to happen now where more and more people are getting TM's for names,words,phrases etc and then seeing that the domain is taken long ago they issue a DRS. It is going to get complicated in next few years I think and those who have built up stocks of domains will be at risk of losing them ,or at least will be forced into a position where they cannot dare use them for fear of inviting a DRS from the TM holder. That will mean that they wll literally just have to rely on the domain sale and not use it to generate revenue. Of course they could challenge the application for a TM, but I dont see many domain name holders challenging applications for TM's at the moment. Just my thoughts.

DG

 

[retired_member6]

I think those type of cases are a liberty to be honest, whoever made the rules up forgot to fill in the gaps, they used a very bad legal team to draw up the contracts and the basis of nominet, very bad!

How on earth can a trademark application and registration after a domain was bought have any consequence on that domain name whatsover? it's wrong and a bad, bad decision to even rule for the new trademark and against the old domain.

I just can't find a reason why it can happen.

Because under these circumstances I can register any trademark I like, spend £3700 on a DRS (Domain Recovery Service) and job done. The sooner nominet find a backbone and realise domaining is a business and a valued part of the economy, the better ('cause let's face it, there's not much left for the British to lay claim to these days) otherwise they're just mugging everyone off!

 

[olebean]

How many domain "stockholders" have applied for TM?

 

[texidriver]

What is to stop someone obtaining a TM for "soap"
DG

The way the WIPO and DRS see it, if you have a TM for "soap" then you can claim soap.com, soap.co.uk etc should belong to you, right or wrong.

But then go on to claim soapy.com/.co.uk, soaps, soapforsale,
greensoap, barosoap, ad infin.

It is the Respondent who is presumed guilty for regging the domain or owning it and must prove innocence.

 

[retired_member6]

Yes but this is Britain not America, you're innocent until proven guilty in this country! I know we don't live in a democracy anymore, it's whatever you call a government run by business but I don't think the statute has changed yet.

If the system is based on the fact that someone is guilty before they're innocent, then it is a sham and any organisation claming such should be hauled up in front of the courts and challenged on that aspect!

It should never be easy for a new TM to get 'their' so called domain, it's not and never belonged to them. I think people and the media get others worried needlessly about this TM issue to scare people off.

If you buy a domain and sit on it because you want to develop it or park it, as you're fully entitled to, then I don't see why some posh nob should be able to nick it off you for free. Everyone on this forum could lose their domains tomorrow - and you're telling me that breeds confidence? I find that shocking.

 

[Admin]

Drs

It is the Respondent who is presumed guilty for regging the domain or owning it and must prove innocence.

This is not the case with a DRS.

It is down to the Complainant to demonstrate both rights in the disputed domain name and abusive registration

Rights includes:
· a copy of a relevant trademark certificate,
· evidence to show use over time such as copies and dates of letterheads, advertising materials or media articles.

Example:
http://www.nominet.org.uk/digitalAssets/3372_butlergroup.pdf

This case was lost because the Complainant did not provide enough supporting evidence in their rights to the name, the Respondent didn't even reply.

Admin

 

[texidriver]

http://www.nic.uk/disputes/drs/policy/

4. How the Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration

A. used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services;

C. made legitimate non-commercial or fair use of the Domain Name;

How can you prove "A" and be "non-commercial?

There is no definition of "fair use" in the Policy

 

[sneezycheese]

How many domain "stockholders" have applied for TM?

TM application for a pet project of mine is being sent to the Patent Office next month. Wish I didn't have too, but I guess that's the way it is at the mo. I certainly can't afford to do this with all the projects I have planned, but I will be trying to protect 'the best of the bunch'.

 

[Admin]

TM application for a pet project of mine is being sent to the Patent Office next month. Wish I didn't have too, but I guess that's the way it is at the mo. I certainly can't afford to do this with all the projects I have planned, but I will be trying to protect 'the best of the bunch'.

How much is a UK TM application?

 

[sneezycheese]

How much is a UK TM application?

£200 covering one class of goods or service. £50 extra for each! additional class... Can get quite expensive if you have a lot of classes to cover.

Follow link for more info... http://www.patent.gov.uk/tm/forms/forms.htm

 

[olebean]

Thanks cheesey, that makes two of us that have applied for TM to protect domains I am also considering TM in the US

I considered getting EU TM thats 800 per class

 

[retired_member6]

You can pass trademarks on to new owners of a business, not sure if they're easy to transfer with a domain though.

So if any of you nominet members out there feel like getting together and approaching her maj - or whoever runs the show, and stating "we think TMs for domains should be cheap, around the £10 a year mark - what do you think" then they might offer more protection to the owner of a domain, rather than to TM squatters

A silly thought but still...

 

[olebean]

Oh dear Lee, The business opportunity is in the lease of the TM to the selling of it

 

[bb99]

This is a good strategy but remember that you do have to use your trademark for trading in your chosen class otherwise someone can later apply for it to be cancelled (or partially cancelled) for non-use.

You can register meganame.co.uk and then rademark "meganame" for (eg) trouser manufacturing. But if you don't get round to acutally developing your trouser manufacturing website, or if you don't actually have any business manufacturing trousers under the name "meganame", I could come along five years after the TM has been registered and apply for it to be cancelled on the grounds that you're not using it.

I'm not a TM expert though, so all the above might be horse sh&t.

 

[texidriver]

TM application for a pet project of mine is being sent to the Patent Office next month..

You should know that applications for new UK trademarks are often "copycatted" in the US (fee $325), this could prevent you getting a
US TM in the future.

"If you file this application based only on an "intent" to use the mark in commerce in the future, rather than actual use in commerce now, you must later file a second form (and additional fee) to establish use before we can register the mark, "
http://www.uspto.gov/teas/index.html

Also, if you do not enforce your TM like Porsche AG, it will dilute to the point of being worthless.

You could start by showing sneezycheese™, this gives you a "first use date"