Unregistered rights

[Jac]

I write : I think this is a bit misleading. Jac you said 'if that intent was to mislead, misdirect, or 'pass off'....I do not disgree with this. The example www.pcworld2.co.uk is clearly doing that if you sell computers or similar on the site....BUT the DRS says 'take unfair advantage'.....this is not decisive...to what degree is it unfair....The rights owners of Barbie claimed that it was unfair to sell in a different class because it was such a big brand.....the law decided that not to be true.....can we rely on the Patent Office.....For instance I do not know if its legally acceptable to take traffic that is clearly linked to another brand even if I am selling a product that the Patent office has said is not linked....if know one can answer the question then how can you expect the domain name owner to lose the domain name without a warning or pay court costs etc.....

Very unfair....knowledge is power and the knowledge is what I do not have

Lee

But Lee

This is the problem with legal disputes per se. Let's use your Barbie example. The makers of Barbie Dolls seem to lose legal cases on a continuous basis. For instance, they lost a high-profile trademark battle against the record company that produced the hit song "Barbie Girl" in 1997. Just recently they lost a trademark battle to a Canadian company that operates four "Barbie's" barbeque restaurants in Montreal. The restaurant chain was allowed to keep its "Barbie's and Design" trademark for the sale of food and catering service.

Recently in the UK Court the case of phones4u was heard. Whilst the High Court found for the registrant of www.phone4u.co.uk (against Phones4U) the Court of Appeal reversed the decision and found for Phones4U.

There are simply no guarantees on how a Court will rule. So whilst you say knowledge is power, look at the Courts. They have it; yet they still seem to disagree on verdicts and decisions. The best we can hope for is sensible decisions based on the available evidence.

Regards
James Conaghan

 

[grandin]

good point jac but

Jac that was certainly well explained and I do understand BUT....

A domain name is a very versatile if it can be used to represent many types of businesses (generic domain names or domain names non descriptive of the TM classification):-

Lets assume an unforeseen infringement occurs and therefore was more so a misunderstanding on the part of the domain name owner (in respect to trade mark law) then surely the domain name owner should not lose the domain name. The domain name holder should be told..... don't infringe in this way again or you will lose it...and maybe he would have to pay damages for the infringement.

Some domain names are now worth alot more than the cost of damages for infringement so it seems unbalanced.........For example a Complainant can cost up....it will cost me £2000 to take the domain name holder to court but based on previous experiences I can see I will get the £10000 domain name in return

The bounce case is a prime example. To me its worth £5k as a generic word so its worth at least that to the current owner. If the original decision was to stand then it has changed hands for a alot less than £5k!!

Lee

 

[Jac]

Answer to Lee Grandin's question

The question that Lee Grandin asked was: "Can any person or company have a prior right to a generic word represented as a domain name... when a domain name represents a WHOLE trading platform?"

I have had the following comments from my trademark attorney colleague. Please note, they are offered gratis and without prejudice:

James, so far as trade marks are concerned, "generic" needs to be considered in the context of the goods for which the word is registered. A word need not be invented in order to be registered as a trade mark, but it must not be directly descriptive of the goods for which it is to be registered.

It gets more complicated. Words which are descriptive (and even words which are geographic terms) can become perfectly good trade marks if they acquire a reputation that transcends their descriptiveness. (NOKIA is a town in Finland, but is now much more famous as a trade mark for mobile phones.)

I asked him to explain a little further on the word "bounce" and this is what he wrote:

The word need not be invented, but if it is a word that has simply been lifted from the language, then it must not be directly descriptive of any characteristics of the goods. So, Bounce (a) is not an invented word and (b) it is a descriptive word, but (c) it does not describe laundry products, so it is acceptable as a trade mark.

In any event P&G could get it accepted on the basis that in relation to laundry products it now exclusively denotes their goods

Please understand, I cannot take the proverbial and get into a to-ing and fro-ing exercise with a trademark attorney for free, so I hope the above suffices to answer your question.

Regards
James Conaghan
[PAB Member]

 

[grandin]

in reply to the TM attorney

Thanks for the reply.

When I have asked anyone 'in the know' regarding TM law I seem to get the same answer..........that an infringement occurs when the name and the goods/services being offered by the 'infringer' match the the TM. So therefore given a domain name (in its original state) is nothing more than a name how can any such name give anyone prior rights? it can't.....

Therefore, it is wrong to provide prior rights in respect to domain names in the much publicised .eu

The law doesn't match, Lee

 

[Jac]

Thanks for the reply.

When I have asked anyone 'in the know' regarding TM law I seem to get the same answer..........that an infringement occurs when the name and the goods/services being offered by the 'infringer' match the the TM. So therefore given a domain name (in its original state) is nothing more than a name how can any such name give anyone prior rights? it can't.....

Therefore, it is wrong to provide prior rights in respect to domain names in the much publicised .eu

The law doesn't match, Lee

Lee

Whilst I asked my colleague in a general capacity and he answered (I think) more in respect of .uk domains, it seems to me the law is such that it would require a court to set some precedent, because frankly, I find it confusing too. Whilst he seems to suggest a TM should not actually be descriptive of the goods for which it is registered, the contradiction seems to be that (at some stage) it can also exclusively denote the goods.

Very confusing.
James Conaghan

 

[grandin]

good

OK james we are now getting somewhere:-

The issue is this.......

We are unsure
Nominet are unsure
you are unsure..........

High Court judges and Nominet's experts are trying to understand whats in the mind of the domain name registrant and then applying subjective abusive intent in respect to unused domain names....can't be done because even the domain name registrant is unsure what he/shes got?

The high court judge in the citigroup case could not come to grips with the fact that the domain name owner has owned the domain name for many years and not used it.....beyond reasonable doubt?? whats reasonable??

Lee

 

[texidriver]

Consider this WIPO case

http://arbiter.wipo.int/domains/decisions/html/2006/d2006-0428.html

This is Reverse Domain Name Hijacking, if the Expert can invent this quote on behalf of the Complainant;

"it could for example arise through a genuine mis-understanding of the Policy or the Rules or the nature of the evidence required"

then it should swing both ways.

Show me a Respondent who is allowed to "mis-understand the Policy" and keep the domain ?

 

[grandin]

exactly

Texi wrote: This is Reverse Domain Name Hijacking, if the Expert can invent this quote on behalf of the Complainant; "it could for example arise through a genuine mis-understanding of the Policy or the Rules or the nature of the evidence required" then it should swing both ways.

Show me a Respondent who is allowed to "mis-understand the Policy" and keep the domain ?

I write: I am sure a lawyer can reverse alot of these domain name transfers on the back of a technicality in the policy.

I must say the .eu is a big mess in comparison to co.uk........they still haven't answered my email from months ago...they have now closed the ADR. Whats interesting is that I copied in the cabinet office...at least they all know the score now.

Lee

 

[Beasty]

Consider this WIPO case

http://arbiter.wipo.int/domains/decisions/html/2006/d2006-0428.html

This is Reverse Domain Name Hijacking, if the Expert can invent this quote on behalf of the Complainant;

"it could for example arise through a genuine mis-understanding of the Policy or the Rules or the nature of the evidence required"

then it should swing both ways.

Show me a Respondent who is allowed to "mis-understand the Policy" and keep the domain ?

Great case Texi - thanks for pointing it out. IMHO an excellent and very well set out decision by the arbitrator - who is also on the DRS list. Personally none too fussed by the "reverse hijacking" point - but much more generally relevant for a brief and clear dismissal of a claim for a "generic".

Worth noting that the requirement for "bad faith" does not apply to the DRS - and that the double requirement for both registration and use "offences" does not apply to DRS either. Compare and contrast with the game.co.uk case....