keys

There is growing controversy over DRS decisions, especially ones where rights to "generic" names are concerned.

The first hurdle for a claimant to over come is to establish some rights over a name. At the lowest level (more of a chalk mark on the track than a hurdle) any established use of the name by a business or organisation, however small, would be enough.

The second test requires evidence that the domain has been registered or used to the detriment of the claimant’s interests or that the Registrant is engaged in a pattern of abusive registrations.

It might be argued by a future claimant that even a Trademark obtained by a Registrant (after the registration) is primarily a measure of protection against DRS, if the Registrant could other wise not clear the first hurdle. A UK TM only secures rights to the use of a name covering clearly defined goods or services, and most names are covered by many TM’s held by different parties.

In these circumstances I wonder if a Registrant and holder of a corresponding TM might lose a DRS case, if the claimant (probably another TM holder) could successfully argue that the registration was abusive prior to granting of the Registrant’s TM.

invincible

If Respondent had gained a trademark on term similar or identical to The Domain Name, post registration of The Domain Name, and whilst Complainant also had a trademark on a term similar or identical to The Domain Name, then I would strongly suggest that Respondent had met the criteria for 4(a)(i)(B) of the DRS Policy.

I am sure it is possible under some circumstances. It depends on what The Domain Name had been used for. If Respondent [had] used The Domain Name in a manner which infringed on the trademark rights of another party, and even if Respondent subsiquently gained a registered trademark, in a different category to Complainants registered trademark, on a term similar or identical to The Domain Name, it is perfectly possible that an Independent Expert could conclude that Respondent had [previously] been using The Domain Name in a way which had confused people or businesses into believing that The Domain Name was registered to, operated or authorised by, or otherwise connected with the Complainant.

If Respondent merely registered and warehoused The Domain Name, or used The Domain Name for services unrelated to those for which Complainant held a registered trademark, prior to gaining a registered trademark, in a different category to Complainants registered trademark, on a term similar or identical to The Domain Name, then I cannot see how Complainant could successfully argue that the registration was abusive prior to the granting of Respondents registered trademark. (I hope you enjoyed reading my overly long sentence!)