EU prior rights

[grandin]

I don't know if you are interested in the .eu domain name but I found it most interesting. Applying common sense......

How can a Trade Mark lead to a prior right in a solely generic word....surely generic words belong to the 'public at large'?

Polo is a game so considering human rights why did this person not have equal rights to apply for the name (non trading interest in the name):-

An old man who spent his life playing polo wants to set up a website for the love of the sport polo....he wants his grandchildren to have admiration for him....It would be great if he could have the website polo.eu??

A girl asks her dad can you build me a website so I can load up pictures of my dog polo so my friends can see......why can't the girl have the website polo.eu???

I asked EURID to answer some questions....so far they have not replied

Lee

 

[Jac]

I don't know if you are interested in the .eu domain name but I found it most interesting. Applying common sense......

How can a Trade Mark lead to a prior right in a solely generic word....surely generic words belong to the 'public at large'?

Polo is a game so considering human rights why did this person not have equal rights to apply for the name (non trading interest in the name):-

An old man who spent his life playing polo wants to set up a website for the love of the sport polo....he wants his grandchildren to have admiration for him....It would be great if he could have the website polo.eu??

A girl asks her dad can you build me a website so I can load up pictures of my dog polo so my friends can see......why can't the girl have the website polo.eu???

I asked EURID to answer some questions....so far they have not replied

Lee

Lee

But aren't you now in the realms of subjectivity? Polo is also the brandname of a VW car, it is famous in the fashion world too, and the name of that nice little 'mint with the hole', to name but a few. I would hazard a guess there is more than one trademark for the word "Polo". There was an interesting UDRP on polo.biz ... worth a read.

So how does any registry decide whether to give the name to the old man or the girl you cite as examples without adopting various trademark and sunrise periods after which it's a first come first served scramble? Isn't it a case that someone somewhere has to decide the rules to be used? I note in another thread you say "Nominet need to bring in dynamic Directors...pay them well and empower them to make changes without the need to pass it by members". Doesn't this in effect equate to what I just suggested? That someone somewhere has to take responsibility for the rules that are set?

This also highlights how difficult it is to find a solution that will please every individual and company who want the same domain name and as I keep saying, it ain't easy. :???:

Regards
James Conaghan
[PAB Member]

 

[accelerator]

Lee

Agreed it seems unfair that trademarks gave prior rights to register certain .eu generic domains.

The problem was that the trademark only applies to certain services, e.g. Volkswagen's trademark applies to cars, but not to mints, yet the trademark gave an automatic right to pre-register for the domain. This in itself led to abuse as many registered trademarks just to get the domain.

Here's a site you might be interested in to find out more about such issues:

http://www.out-law.com/

Rgds

Accelerator

 

[grandin]

you don't

James you wrote:- So how does any registry decide whether to give the name to the old man or the girl you cite as examples without adopting various trademark and sunrise periods after which it's a first come first served scramble?

I write:- you don't decide.... the old man or the girl has equal right no more right and no less right.......first come first served is the only resolution.

Trade Mark holders (my company included) would not complain about first come first served IF the mechanism for complaint in respect to infringement was well publicised and quick and efficient to implement......ie. when an infringement occurs it was a quick submission and within a few days the domain name is suspended and made reavailable......its not rocket science to workout an infringement.....

Is the domain name descriptive of the complainants trade mark? yes or no

Has the domain name registrant tried to sell products of the complainants business? yes or no

threats of action are empty threats as a domain name is empty in its unused state, so why threat about a non threat

Lee

 

[grandin]

thanks

Thanks Accelerator, I have followed your links before on this site...very informative.

I am a busy man but this domain name business just bugs me.....it is so fundamentally flawed on the back of a handful of old cases.....Marks and Spencers v One in a Million.....

When I discuss the issues with a normal person the consensus is the same.....so why are the rules being bent to accomodate trade mark holders....I am a trade mark holder in the name Landlord Mortgages but how come I got a prior right for a .eu??? The patent office said the text on its own was too descriptive on my business so I had to have a device......if i didnt have the domain name then someone can use the name to sell landlord mortgages (buy to let).....its my own fault for choosing a name that is wholly descriptive of my business......

Lee

 

[Jac]

I am a busy man but this domain name business just bugs me.....it is so fundamentally flawed on the back of a handful of old cases.....Marks and Spencers v One in a Million.....

Lee

The One In A Million case (1997) is probably not the best example as the terminology and understanding of the internet (and its uses) seems rather dated now. However, I said in another thread there is often a comedy of errors on the part of some respondents which inevitably works against them whether in the DRS or in Court and I think that's as relevant today as it was in 1997. When one reads through the One In A Million appeal (the appeal is IMO more significant than the judgement) it is obvious that greed often gets in the way of making a return on investment in these matters. IMHO, the One In A Million issue might have been solved amicably, prior to any court action, had the respondent/defendant been a tad more realistic in their thinking.

The judgement stated that "The history of the defendants' activities shows a deliberate practice followed over a substantial period of time of registering domain names which are chosen to resemble the names and marks of other people and are plainly intended to deceive". Let's not forget we are talking about domain names like sainsburys.com, bt.org, marksandspencer.co.uk and marksandspencer.com (to name just a few in this case).

When I discuss the issues with a normal person the consensus is the same.....so why are the rules being bent to accomodate trade mark holders....I am a trade mark holder in the name Landlord Mortgages but how come I got a prior right for a .eu??? The patent office said the text on its own was too descriptive on my business so I had to have a device......if i didnt have the domain name then someone can use the name to sell landlord mortgages (buy to let).....its my own fault for choosing a name that is wholly descriptive of my business......

I would hazard a guess the rules initially accommodate TM holders in a preemptive attempt to stem the flood of TM disputes that would inevitably arise if everyone got every domain name on a FCFS basis. (See the One In A Million case you referred to.) Personally, I think it is in the best interests of the global community that Registries give aforethought to damage limitation and try to stop unnecessary disputes by giving preference to registrants who hold trademarks or 'prior rights'. The alternative might be what I said, a flood of domain name disputes after registration.

PS: I accept the system is not perfect.

Regards
James Conaghan
[PAB Member]

 

[olebean]

Jac

Should we add BAA.com to that.....

it couldnt possibly have been about sheep :0)

 

[grandin]

But

Hi James,

A compromise with the EU would have been this....Every single word in the dictionary, along with surnames, first names, places etc.... are left out of prior rights...........rights do not just belong to Trade Mark holders because every tom, dick or harry uses them

String of words...polo mints.....polo cars.....toysrus....are less likely to be used in common by others so prior rights are more likely....this would certainly reduce the abuse........saying that I think it is morally incorrect to prejudge abuse before it occurs.....as Nominet say themselves the proportion of drs cases is very small...or are you or Nominet saying that the first come first served in respect to the co.uk is a mistake??

If VW were not given polo.eu and it went to a guy who on a first come first served basis used it for a polo sport website.....are you saying this was unfair? Would VW be able to claim it in a court of law? I say no so why has it happened...it is morally incorrect

Lee

 

[Jac]

Jac

Should we add BAA.com to that.....

it couldnt possibly have been about sheep :0)

Nice to see you have a sense of humour olebean!

Baaaaa.....

 

[Jac]

A compromise with the EU would have been this....Every single word in the dictionary, along with surnames, first names, places etc.... are left out of prior rights...........rights do not just belong to Trade Mark holders because every tom, dick or harry uses them

Lee,

Do you really really mean every single word in the dictionary? Blimey! If I remember correctly there's a whole team of editors constantly updating the dictionary on a daily basis, so it is conceivable that trying to monitor every single word could be its own nemesis... but I see your point.

String of words...polo mints.....polo cars.....toysrus....are less likely to be used in common by others so prior rights are more likely....this would certainly reduce the abuse........saying that I think it is morally incorrect to prejudge abuse before it occurs.....as Nominet say themselves the proportion of drs cases is very small...or are you or Nominet saying that the first come first served in respect to the co.uk is a mistake??

I agree it is morally incorrect to prejudge abuse before it occurs with the proviso that certain precedents for abuse have already been established in Law. On your question of first come first served (FCFS) Nominet says here that: "Also, bear in mind that when you register a domain name, you are agreeing to abide by Nominet's Terms and Conditions. These require that you declare that the registration does not infringe the rights of others."

Nominet also says here under 4.2 that: "We will accept applications which comply with the Rules and register Domain Names on a first come first served basis. This means that, except where set out in the SLD Rules, we will not vet your application."

Personally, I cannot see how you can offer a FCFS service without some preconditions and I think Nominet is as fair as can reasonably be expected in saying you must declare that the registration does not infringe the rights of others. If you go back to 1997 and view the domain names cited in the One In A Million case, I think it is reasonably clear that these domain names did indeed infringe the rights of the various companies making complaint.

If VW were not given polo.eu and it went to a guy who on a first come first served basis used it for a polo sport website.....are you saying this was unfair? Would VW be able to claim it in a court of law? I say no so why has it happened...it is morally incorrect

On your first point re "polo.eu". Ralph Lauren and Nestle and others all lost out to VW on "polo.eu" and as an aside, Land Rover also lost out to the Discovery Channel on "discovery.eu" though technically both companies had a right to the domain. Apparently 330,000 applications sought the same 235,000 .eu domain names; so does that mean that 95,000 are potential domain name disputes, where 2 or more entities have tried to register the same domain name? The mind boggles; where does FCFS start and end?

It may not be morally correct but isn't that why we have courts of law, to be 'legally correct'? Unfortunately, the law is not just, it is just legal; and I suppose that in itself is morally incorrect (but that's a philosophy argument, not a legal one). So when you suggested on another thread that "The value of settling out of court through diplomatic resolution is the right answer"... isn't the ultimate answer of what is fair and what isn't, a matter that may have to be addressed by the DRS or the courts? FCFS in itself will inevitably create unintentional infringements because not everybody registering a particular name will know whether someone else thinks they have rights to it or not. The DRS and the courts can only address these issues after the event but someone then has to make a decision that is (possibly) never going to be palatable to the loser.

Regards
James Conaghan
[PAB Member]

 

[grandin]

take your point

I totally agree...I am a simple man and thats why I am good at business....I know how people buy...

It is very simple, I will digest what you have written and reply but this comes to mind...

It was never upto the law or Nominet to decide..........the law and nominet drs is there to put right wrongs when they occur....BUT no wrong is done until an infringement occurs and unless you change the trade mark rules to reflect eu regulations under prior rights then you have a conflict.

EU regulations have set the EXISTING trade mark holders have a prior right....on that basis then no further trade marks should be issued where an existing trade mark exists even if the class is different

Common sense says its a manipulation to give trade mark holders a right to a domain name but we all know a domain name can represent any trade whilst a trade mark cannot

its WRONG

 

[tifosi]

The EU 'what is a valid prior right and what isn't' has been an absolute farce, joke and pretty frankly a dsigrace.

In searching through the whois for the landrush2 names I've come across masses of inconsistencies and outrageous sunrise accepted domains.

The name Lee Ansell of ansellandsons has been a name that has cropped up
e.g websecurity.eu has been accepted as a national trademark of the NL! with the mark web&security. So does Stephen Stock, a well known person to some people on here. They've been playing the game EU style, and if the loopholes are there then if not them others.

I thought they'd stamped out on that, but obviously not. The whole EU registry is riddled with invalid prior rights like this.

too late now and eurid have rejected all claims like this and gone all ostrich on us... head in sand.

 

[grandin]

this bit

James you wrote: Do you really really mean every single word in the dictionary? Blimey! If I remember correctly there's a whole team of editors constantly updating the dictionary on a daily basis, so it is conceivable that trying to monitor every single word could be its own nemesis... but I see your point.

I write: Not hard...the cambridge dictionary has every word on a computer file....run a script and disregard every word at a given point in time

Please explain to me how...lets say the word MEAL gives any trade mark holder a prior right????

Its morally wrong....until abuse occurs you cannot do anything.....spend you time seeking out abusers and make a example of them....that will deter others....you are looking in the wrong hedge

I look on sedo and see many are selling domain names with clear trade mark infringements....polo does not infringe but domain name...pamelaandersonsboobs.com does!!!!! that was a hypothetical scenario but so true

 

[grandin]

you are right

tifosi you are right...any simple man can see.....I am well connected in the press and powers at be have only got away with this rubbish because the average consumer doesn't care. I posed questions to a well known jorunalist at the mail on sunday and I know its turning round in his brain but does not comprehend......on a plus note I am looking at making a fortune from virtual property developing but sad that morally its all wrong.

Lee

 

[olebean]

I look on sedo and see many are selling domain names with clear trade mark infringements....polo does not infringe but domain name...pamelaandersonsboobs.com does!!!!! that was a hypothetical scenario but so true

A subject close to my heart hehe

Grand

Are you suggesting that there could be no other pamelaandersonboobs?

It also seems odd that without representation you assume that infringement does take place.... In other words does the arrangement of letters represent something you have an affiliation to rather than you seeking plausible legitimate alternatives

 

[grandin]

tell me the truth

your video domain name...the purpose is what???

I am only concerned with fundamental flaws

 

[olebean]

Grand

I could take the mick and say have a pet call ronald in ho video?

or I have a pet call ronaldinho...

Either way I have a plan for it which I am unwiliing to discuss and doe no infringe on the name used by th person whos name is not ronaldinho the footballer but goes by that name

As for fundamental flaw, the flaw exists in the data that is displayed on a webpage and not the name.... In some cases, people park the domains - or possibly forward the domain to another domain, which they dont own. Should a domainer be responsible for another companies information displayed on that page, which comes from a further company.

That is like saying I have a field, allowing somone to use it placing advertising boarding on, they pay a some for each advert/sales lead. That person who pays field owner then sub sells the site to another company who then supplies the adverts..... Should the field owner be held responsible for content? Would the holder of that space lose his field?

 

[Jac]

I write: Not hard...the cambridge dictionary has every word on a computer file....run a script and disregard every word at a given point in time

My point was, that the dictionary is constantly changing and words keep getting added; which is why I said it could be its own nemesis; because you are trying to make a decision based on something that may have changed at the precise moment of judgement.

Please explain to me how...lets say the word MEAL gives any trade mark holder a prior right????

Pesonally, I don't think it does, just as I don't think the term "Granary" should have been trademarked by Hovis; but the powers that be (TPTB) allowed it anyway. For the sake of clarity; "Granary bread" is bread made from granary flour, which is pretty commonly used, but (apparently) no other baker can now call their bread "Granary" because it is trademarked to Hovis. I think this one is totally ludicrous. So please don't think I don't take your point.

Its morally wrong....until abuse occurs you cannot do anything.....spend you time seeking out abusers and make a example of them....that will deter others....you are looking in the wrong hedge

IMHO, by its very nature "abuse" has to be a pro-active exercise (as in when it is identified or brought to the attention of the relevant authority). To spend time seeking out the abusers of a system could cost millions and would inevitably add to everyone's end price in the future. Why penalise everyone because of infringements by a minority?

I mentioned in my last reply to you that 330,000 applications sought the same 235,000 .eu domain names; so does that mean that 95,000 are potential domain name disputes, where 2 or more entities have tried to register the same domain name? The hypothetical question that springs to my mind is: what would happen if the courts were actually inundated with another 95,000 cases? They are already overstretched. What would happen if the same happened in the DRS or the .eu ADR? Let's assume the Patent Office is handling them; 95,000 cases? IMHO, nobody (whatever body) could cope.

This is why I believe certain preconditions (on rights) have to be set by TPTB in the interests of plain old-fashioned sanity. I accept these preconditions need to be more equitable than they now appear to be.

Regards
James Conaghan
[PAB Member]

 

[aqls]

something that may have changed at the precise moment of judgement.

Oh, the disputes we would have.

What would happen if the courts were actually inundated with another 95,000 cases? They are already overstretched.

Yes, very inconsiderate, the court system is a stakeholder too.



What happens to a pamelasboobs domain after that interest/publicity has receded (or ronaldinho, or virgin, or bt in say 30 years time) Does the next best trademark at the time then get first dibs, or should it be up to the discretion of the domain name holder.

-aqls-

 

[grandin]

expert I am not

Hi Ole

I must say if I was an expert, which I am not, then I would have concern about your domain name.

My concern would be this:-

The website contains the name of a world class footballer and you have a link from the web site to another well known footballer. If you are knowingly gaining revenue (click through) then I think as an expert I would find it difficult to....

If however the registrar chose the holding page for their own revenue then I think its unfair that you would lose the site. Soon as a complaint was made you would make an effort to stop the holding page...

Very hypothetical....I don't believe 'transfer' is a correct remedy.

Lee