Jac

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

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

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:

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

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

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

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

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/deci...2006-0428.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

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

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....