invincible

Well of course they can, as can a multitude of uses, although it may depend on what the advertisements are for and if the content of the advertisements infringe on another entities rights. This has always been the case. It's nothing new.

invincible

The Complainant only gained it's registered trademark on the term in the UK months before the domain name was registered. Gaining that obviously helped their case. I'd also think it common sense for any complainant to wait for the best opportunity to file a DRS. Why disadvantage yourself or your case by filing a complaint at anything other than the most advantageous time?

invincible

For me it was another response which, unfortunately, I didn't consider was particularly great. The Complainant, on the other hand, had clearly spent copious amounts of time preparing their complaint. The Respondent is known to have been a collector of domain names in the past and surely has the funds to employee appropriate legal counsel. In this particularly case it's something that the Respondent might have been better off doing. A strong response from a suitable representative prior to the DRS might have slowed the Complainant down for a moment or two. Alternatively, if the Respondent had no chance, they might have been better off negotiating some sort of settlement to stave off the DRS.

Respondent states that "mercer" has been adopted by numerous businesses in the UK, that there are more than 3000 .com and 244 .uk domain names containing the term and 523 others registered to individuals with the name "mercer". No annex detailing this was apparently provided. Complainant capitalised on this ommision in their Reply, stating that they have been unable to verify the truth in this statement (well they aren't going to assist the Respondent are they!).

Respondent claims that they did not register the domain name "for the purposes of selling, renting... to the Complainant or a competitor". Unfortunately putting up a "for sale" sign on the resulting web page doesn't add weight to that assertion.

Expert found it hard to believe that Respondent had never heard of the Complainant. That is possible but put "mercer" into Google and see what comes top. Combine that with the fact that Respondent is clearly not a lay domain name registrant.

Respondent claims that they registered The Domain Name along with a number of other surnames to offer email services. I saw no reference to any annex exampling the full list of surnames that Respondent had registered. So again, no weight added to Respondent's claims.

All in all a pretty weightless response. Perhaps if the Respondent had provided some backup to their claims of a planned email service or an explanation of why the domain name resolved to the chosen sponsored result, the Complainant might not have had such an easy time. The Respondent seemed to spend more time trying to rubbish the Complainants claim to the domain name rather than getting on with proving why they had rights in the domain name. If a Complainant has a registered trademark on the exact term, they have rights! Better get on with explaining why you do too, if you want to keep hold of the domain name.

Beasty

I disagree slightly with Lee.

I think that mercer is a dictionary word; and so is generic.

Here's the defninition - it's a cloth merchant, quite like a haberdasher. My guess would be the surname comes from the occupation, like many others. Plenty of place names too - which I guess follows from the surname. Wiki says Dick Whittington and William Caxton were mercers; and that the Mercers are the longest established City livery company - both of which were news to me.

http://en.wikipedia.org/wiki/Mercer

http://www.answers.com/topic/mercer

Anyway, all of this pre-dates a firm of management consultants or whatever they are - and as the Respondent pointed out, they took their name from someone called Mercer.

Beasty

Top post Invincible!

You refer accurately to how the DRS is applied by an increasing number of the Experts. However, the actual written DRS Policy actually places the burden of proof on the Complainant - so it should have to show that the Respondent's registration is Abusive; rather than the other way round, as is increasingly required by the Experts.

The Respondent should have accepted Complainant had "Rights" under the DRS - but focussed on establishing that they did not have monopoly rights. They should also have demonstrated that they had a right to the name - even offering to sell a "generic" for profit has been accepted by Experts in the past; whilst what you say about evidence of the suggested email service is also totally correct. Evidence, evidence, evidence!

One point though - Experts have shown themselves keen to use Google and other search tools (e.g. TM registry) in the past when a Complaint left out evidence to back up a claim. Curious that - in an even handed and fair system - the Expert showed no such search skills to verify (or otherwise) the Respondent's assertions here!

Beasty

If the ads are not for related services then this - and a few other recent decisions relating to "generics" - are a bit new. Certainly previously, unrelated PPC was seen as acceptable use for a generic. Assuming the ads were not pointing at related services - and I don't recall reading that they did - then I think this is a new development. I don't think it's an accident either....

grandin

Beasy I take your point BUT...

The experts work on 'the balance of probability'....did the respondent 'on the balance of probability know of your dictionary definition' his assertions clearly stated he knew of the name rights linked to mercer and then went onto offer it for sale with no evidence of preparation to use the name for email.

Lee

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Beasty

Hi Lee

Agreed "balance of probablity" is the standard of proof for any of the assertions made by either party.

However, the issue of whether a domain is "generic or descriptive" is a question of fact that is not for either party to prove - rather it is for the Expert to consider and decide. In this case, it is a pretty common English surname and also a dictionary word - so even if neither party pleaded it, I think the Expert should have addressed himself to it and decided it was "generic". It is not however "wholly descriptive" - so he was right to find that the Complainant had "Rights" and then turn himself to the question of abuse.

In any event, does not a common English surname satisfy the definition of "generic"?

"relating to or characteristic of a whole group or class"

http://www.m-w.com/dictionary/generic

Beasty

grandin

Yes Beasty BUT

As I said to Nominet....stating things like is not abusive to sell generic domain names is misleading.....If the name is generic it has no bearing IF you then go and unfairly take advantage of someoneelses right in that generic name...

The expert probably decided that the respondent took advantage of rights holders in general (please remember i think the remedy was wrong)....the respondent 'on the balance of probability' took unfair advantage of someoneselses rights....Nominet were clear to high light the following to me.....

Its not about taking advantage of someones rights its more taking UNFAIR advantage of someones rights

ie. MAYBE an email website would take advantage of rights BUT not UNFAIRLY as it would be offering a service to many rights holders

Lets face it........all is as clear as mud...........give the respondent a second chance to set up his email service

Lee

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Beasty

Maybe so Lee - but to be abusive the registration must take unfair advantage of the specific Complainant's rights - not the rights of a class of people or businesses. There is (not meant to be) any such remedy under the DRS. In common law it only exists in exceptional circumstances - e.g. the right of the champagne growers or Scotch whisky makers to sue as a "class".

Put it another way - let's say the domain was "smith" - and the Registrant was not called Smith and was not a blacksmith. Would it be abusive to say he knew it was a common name and he hoped that it would be of value to people called Smith or running a business with Smith in the name? Now if he'd reistered whsmith - as someone did pre-new-DRS - that might be different. Just as it should have been if this were mercerhr or mercerhotel or whatever - where there is a specific "target".

Anyway, I reckon we probably agree on whether we support this decision or not Lee!