people against a mega corporation

[namealot]

Case involving normal people against a mega corporation and get a retrial
Amazing thing about the case is they did it without an attorney. Think the corporation will fire there attorney..?



http://www.thedomains.com/2010/07/1...ain-case-buy-a-lexus-com-buyorleaselexus-com/

 

[Bailey]

A nice outcome namelot - I'm glad to see it hit all the major press

 

[diablo]

The nominative fair use of a trademark in a domain name must have much wider consequences for domaining as a whole.

A really interesting find namealot.

“Toyota argues it is entitled to exclusive use of the string “lexus” in domain names because it spends hundreds of millions of dollars every year making sure everyone recognizes and understands the word “Lexus.” But “[a] large expenditure of money does not in itself create legally protectable rights.”

“Indeed, it is precisely because of Toyota’s investment in the Lexus mark that “[m]uch useful social and commercial discourse would be all but impossible if speakers were under threat of an infringement lawsuit every time they made reference to [Lexus] by using its trademark.”

“”It is the wholesale prohibition of nominative use in domain names that would be unfair.”"

“”It would be unfair to merchants seeking to communicate the nature of the service or product offered at their sites. And it would be unfair to consumers, who would be deprived of an increasingly important means of receiving such information. As noted, this would have serious First Amendment implications. The only winners would be companies like Toyota, which would acquire greater control over the markets for goods and services related to their trademarked brands, to the detriment of competition and consumers. The nominative fair use doctrine is designed to prevent this type of abuse of the rights granted by the Lanham Act.”

 

[scooter]

I think they will lose. If they don't it will open a massive can of worms.

If they were authorised dealers of Lexus I could see them being able to trade with their names as long as they stayed authorised but they are not.

I think there is a huge difference in the spoken trademarked word to actually making a financial gain in the trademarked word. If there wasn't you would have sites popping up like DysanHoovers.com

What would happen regarding all the previous UDRP cases? Would people be able to appeal given the outcome and using this as a reference as the final decision has come from the law of the land?

Could i then register CheapRolexHere.com? I don't think Rolex would be too chuffed with the word "cheap" in the same sentence.

Given if the final decision is denied against Toyota, Would it be ok to register BuyRolexHere.com but not CheapRolexHere.com? Who decides? Are we back at court again? I think this is a minefield and the only way for a plain decision is to say Rolex is trademarked, they decide who can and cannot use their name.

It will be intersting to see what happens.


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[GreyWing]

This precedent is over a year old though, check out volvoparts.com or similar, can't remember it's exact name.

Common sense has been apllied in my opinion, these examples are clearly not people passing themselves off as these companies and instead capitalising on keywords and a judge has realised that fact.

 

[Edwin]

I think there is also a vast difference between an existing, trading business registering a domain name and a domain investor/speculator/whatever (delete as appropriate) doing so. EVEN IF IT'S THE SAME DOMAIN!

In the one case, you might argue (as this lawsuit does) that there is no way to describe the product except by using the product name - the other's perceived, rightly IMO - as cybersquatting.

 

[GreyWing]

Trouble is Edwin, if companies were allowed to protect rights in the way you suggest, it would lead to price fixing and companies who are not open to keyword competition running a type of monopoly.

I can name many companies that operate in this way, one example... HPI

Check out the google ads for car data checks when you type in hpi.... there are none because HPI shut then down via google. How many competitors on page one of google, a grand total of 1.

Result hpi selling car data checks for £19.99 when it costs them less than £1.50 to perform a check, price fixing by the big guys. They use the Autotrader brand to compete on price, but HPI keeps that brand to get the creme from google.

I think there is also a vast difference between an existing, trading business registering a domain name and a domain investor/speculator/whatever (delete as appropriate) doing so. EVEN IF IT'S THE SAME DOMAIN!

Not that clear cut either http://en.wikipedia.org/wiki/Genericized_trademark

A few examples of trademarks which have lost their legal protection in the US are:

* Aspirin, originally a trademark of Bayer AG
* Escalator, originally a trademark of Otis Elevator Company[4][5][6]
* Thermos, originally a trademark of Thermos GmbH
* Yo-yo, originally a trademark of Duncan Yo-Yo Company
* Zipper, originally a trademark of B.F. Goodrich[7][6]
* Kerosene, originally a trademark of Abraham Gesner
* Butterscotch, originally a trademark of Parkinsons
* Heroin, originally a trademark of Bayer
* Sellotape
* Walkman
* Pop Tart
* Hoover
* Zeppelin
* Biro ballpoint pen
* Tipp-Ex, originally a trademark of German manufacturers Tipp-Ex GmbH & Co. KG
* Pogo for the toy Pogo stick[8][6]
* Gunk[8]
* Phillips screwdriver and screw

 

[Edwin]

Equating the two situations is comparing apples and oranges.

There is a clear difference between bidding against a trademark on the search engines (broadly = to being shelved next to the leading product at a supermarket) and registering domains with trademarks in them.

That's why companies have frequently (not always, granted) lost lawsuits trying to block trademark keyword bidding, and have very frequently (not always, granted) won lawsuits against people who have registered domain names containing their trademark.

In both cases, the courts have acted (broadly speaking) rationally and along the lines that logic dictates should be most appropriate when addressing trademark-related issues.

 

[JMOT]

I'm actually quite interested in this. At some point I plan to start selling a certain brand of cars. I have classic(pluralbrand).co.uk

Selling classic used variants of the marque and that domain is the most descriptive & best URL to promote it....

Hmmm

 

[scooter]

I think there is also a vast difference between an existing, trading business registering a domain name and a domain investor/speculator/whatever (delete as appropriate) doing so. EVEN IF IT'S THE SAME DOMAIN!

In the one case, you might argue (as this lawsuit does) that there is no way to describe the product except by using the product name - the other's perceived, rightly IMO - as cybersquatting.

What about a business investor/speculator/whatever who wants to start a bonafide business? That was what i was really trying to say with the domain name examples above. There are a lot of businesses that now start up with the net as their main focus and walk in visitors to their shop as secondary.

If Toyota lose, and i want to get into the spare parts business online but i'm offering alternative parts to the original. (as all garages do when you take your old car in for repair) would it then be ok to register and trade under AlternativeToyotaParts.com?



volvoparts.com:
I find it hard to believe Volvo did not go to the highest in the land to sort this one out. Have you seen the site? They must cringe everytime the take a visit. I think this is wrong. I think it would be acceptable to have something along the lines of "carspares.com" and have a sub heading for each manufacturer.

What is the point in trademarking and then branding a name to let someone trade under your trademarked name that has no affiliation to you? If you did not brand the name in the first place they would not be in business.

I don't think any of the manufacturers would have a problem with "UsedToyotaParts.com as this is entirely a secondary market but if I was Volvo I would have a problem with volvoparts.com. Same with dysanparts.com etc.

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[scooter]

Interestingly, I see none of the below have been reg'd:

dysanparts.com
dysanparts.co.uk
dysanspares.com
dysanspares.co.uk


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[GreyWing]

There are a lot of businesses that now start up with the net as their main focus and walk in visitors to their shop as secondary.

It reminds me of a chairman of a company that was on that Radio 3 programme with the guy from Dragons Den, you might have seen it on BBC news channel at the weekends.

Anyway he said that it is cheaper to have a shop open in the town centre, run it as a loss and use it as an advertisement for your online brand. That compares financially better than bidding on keywords and seo through google.

One thinks he had a point.

 

[GreyWing]

Interestingly, I see none of the below have been reg'd:

dysanparts.com
dysanparts.co.uk
dysanspares.com
dysanspares.co.uk


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Because it's dyson mate, lol your getting as bad as me.

 

[scooter]

feck me! so it is

heheh, room here for a little typo cybersquat :lol:

I will change the above:
Interestingly I see 3 out of the four domains have been registered and are parked!

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[scooter]

Now I wonder. If one was to trade under any of the registered names and had no affiliation with Dyson, what would happen if:

1. You traded in original parts (but still had no affiliation)
2. You traded in "made in china" replica specials

Would they be likely to take action?



If Toyota loses, could i trade under any of the above names no matter where I was buying the spares as I "need" the trademarked name to inform purchasers what manufacturers trademarked name I am selling spares for so they can make an informed decision as to what kind of trademarked spare they actually want to purchase? An original or a "made in china"?


I have to say, I am in favour of UDRP rather than the above. If it is trademarked, it should be up to the trademark holder to decide and UDRP saves the expense involved to going to court.

But i may be wrong.


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[GreyWing]

Remember that there is a difference between what is right / wrong, legal and not legal and which way a DRS will go.

The Toyota and Volvo case were judged in America, the land of the free and all that. Here you will be subject to a DRS, I wouldn't like your chances on a .uk name.

 

[scooter]

Remember that there is a difference between what is right / wrong, legal and not legal and which way a DRS will go.

The Toyota and Volvo case were judged in America, the land of the free and all that. Here you will be subject to a DRS, I wouldn't like your chances on a .uk name.

I agree and that is the point i am trying to make. I think the american decisions are wrong and that is why i think common sense will prevail and Toyota will win.

UDRP's and DRS's tend to go the same way. If it is a trademarked name and you have registered a name with the trademark in it and are gaining financially from that trademark (as you are trading in the same sector) then you lose the name and ultimately any future financial earnings you would have gained from the name.

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[scooter]

If it goes against Toyota, it will open a whoop ass can of worms.


As i said previously, what would be the difference of 2 bonafide businesses starting up with the domain names:
BuyRolexHere.com
CheapRolexHere.com

Are we back in court because Rolex hates the word "cheap" to be described alongside their product? or do the courts stamp on it now and save everyones time by stating it does not matter what the phrase is, if it has "Rolex" in it it is an infringement of their trademark unless they have endorsed it.

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[GreyWing]

I agree and that is the point i am trying to make. I think the american decisions are wrong and that is why i think common sense will prevail and Toyota will win.

UDRP's and DRS's tend to go the same way. If it is a trademarked name and you have registered a name with the trademark in it and are gaining financially from that trademark (as you are trading in the same sector) then you lose the name and ultimately any future financial earnings you would have gained from the name.

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Yep but the point I would be trying to make is just because you lose a DRS or a UDRp case, doesn't mean that you are in the wrong. These have had a long history of wrongly judging TM rights IMO, Bounce.co.uk etc and loads of other crazy decisions.

It's a tough one and I'd value the judgement of a legal judge rather than a UDRP or a DRS "expert". In my opinion the Toyota and Volvo cases were judged correctly, but each to their own opinion I suppose.

 

[scooter]

Fair point. There have been some crazy decisions.