Domain Manage

drs possible on generic word or just fair competition

Discussion in 'Domain Research' started by julian, Apr 15, 2014.

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  1. julian United Kingdom

    julian Banned

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    e.g US company own connect.org - a dating website running for years

    Today I buy connect.org.uk and launch dating site just for UK

    Obviously anyone can start a dating site, is there an issue here down the line regarding domain :confused:

    connect.org have tm'd the domain text in relation to electronic dating services but can't see it's relevant here.

    Your thoughts
     
  2. Domain Forum

    Acorn Domains Elite Member

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  3. AssetDomains United Kingdom

    AssetDomains Well-Known Member

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    It would be an interesting one I'm no expert on trademarks but didn't nominet say under consultation v1 that US and and EU trademarks would be taken into account because of a reciprocal agreement between countries in terms of trademark law.
    If there TM does of them some protection here my guess is a DRS may well go in there favour.

    You might have some defence in there use of such a generic term as a trademark

    The house of lords judgment on Office Cleaning Services v Westminster Window and General Cleaners (1946)

    Would offer an avenue to be considered
     
  4. julian United Kingdom

    julian Banned

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    Thanks for your response.

    Maybe the TM thing here is slightly irrelevant at this stage and confusing the issue

    What I'm asking is, is it ok to set up identical services on a generic domain that because of the word could really only be used for that purpose anyway.

    Obviously if one reg'd instagr.am you would be potentially looking at a world of hurt.

    archive.org vs archive.org.uk - can one set up an identical service on the .org.uk


     
  5. AssetDomains United Kingdom

    AssetDomains Well-Known Member

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    On just a generic term with no trademark I can't see any problems
     
  6. scooter United Kingdom

    scooter Well-Known Member

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    If they owned EU/UK trademark you would be stuffed.

    If they own US trademark it has no relevance in UK.

    If they are not (yet) offering their services to UK customers you have nothing to worry about and for £170 you can register your domain name as a trademark in the UK under the class of service you will be offering.

    (I would be going down the trademark route)



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    Last edited: Apr 16, 2014
  7. Rob_F United Kingdom

    Rob_F Well-Known Member

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    I wouldn't consider "connect" generic in relation to dating. Sure, it fits perfectly for dating, but not generic, imo. Date/Dating.ext would be generic, connect.ext is a brandable.

    In your example, I'd want a to register a UK trademark before proceeding. Even if the US company doesn't operate in the UK, they could still kick up a fuss if they wanted to – they might not ultimately win but is it worth the hassle? For me, not.

    - Rob
     
  8. Edwin

    Edwin Well-Known Member Exclusive Member

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    Similarly I wouldn't consider "archive" generic in the context of what the Internet Archive does. It describes what it offers, but it's a brandable too.

    If the example was "oakfurniture.org" and "oakfurniture.org" for example (or even "furniture.org" and "furniture.org.uk") then that looks 100% fair use to me.
     
  9. Retired_Member42

    Retired_Member42 Retired Member

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    Keep in mind though that even if it is fair to use i.e. a general word or phrase. If you're operating in the same niche they might take legal action for passing off. Don't think for a second it's as simple as letting Nominet see that it's fair use of a generic phrase via DRS.

    I guess ask yourself is it worth the £X,XXX to defend it should the other domain/site owner take legal action. Even if you're 100% within your rights, you still have to defend it and if you don't come to an agreement, it could very well go to court and then your legal bill will get even higher.
     
  10. anthony United Kingdom

    anthony Well-Known Member

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    With so much talk of trademarking, people should be aware that that approach is only the tip of the iceberg, it can cost a fortune to enforce your rights via legal channels.
     
  11. julian United Kingdom

    julian Banned

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    giddy up there a second chaps,

    I'm confused..

    I'm entitled to set up a internet business that archives websites - no problem there.

    Next, I own archive.org.uk - the perfect domain to set up a legitimate internet archiving website for .UK websites.

    archive.org already exists and has TM on text 'archive.org' obviously 'archive.org.uk' is different and I'm offering a slightly different service.

    If there was such a problem, surely every generic .UK has to fear the gTLD equiv punting on a DRS down the line.
     
  12. anthony United Kingdom

    anthony Well-Known Member

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  13. julian United Kingdom

    julian Banned

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    Yes, I'm not sure what bearing tm has on the service and acquisition of the domain. The fear of the 'dom-veloper' is perhaps US corp DRSing based on confusion of an already established website e.g. my example: archive.org is already established - is archive.org.uk an abusive registration if it's a legitimate website that operates in the same sector - which begs the question many .UK domains are perhaps 'undevelopable' (another made up word :) )?




     
  14. Skinner

    Skinner Well-Known Member

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    Its 3 simple questions

    Are you prepared for it goin south in regard to time and funds and stress ?

    Is leakage a problem (which may help with their case should they bring one) ?

    Do you really need the hassle vs another name ?

    If the services are in a similar market as the other own 9/10 I'd just save myself the hassle and go elsewhere.

    Connect.org = dating
    connect.co.uk = computers
    connect.org.uk = you doing plumbing joiners
    connect.com = personal contact means

    I can live with that, but soon as you change your sie to dating, computers, personal contact, it just ain't worth the hassle to me.
     
  15. max_rk Lithuania

    max_rk Active Member

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    “Connect” for dating industry is not generic use.
    As far as DRS policy goes, rights ( registered and unregistered rights, trademarks etc) can be anywhere in the world and would be considered by Expert. I know it may look somewhat unfair considering we talking about country code domain. But one can argue that business is localised ( this is not DRS policy but my suggestion) . i.e. I successfully argued that because I am in London I never came across brand of complainant because their stores are in another part of the country. Similar with websites it can be argued that, website is targeting localised visitors.

    If you have explanation of legitimate use of domain and you can demonstrate that you have not targeted the complainant, most likely case will go in to your favour. DRS is not for trademark enforcement but for abusive registration or use of domain name.
     
  16. scooter United Kingdom

    scooter Well-Known Member

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    But if they are not trading in the UK they have no grounds.


    I have not looked theses names up, this is just an example.
    toasters.com regd 1996 and trades in the USA
    toasters.co.uk regs 2014 and trades in UK

    toasters.com not happy you have the same name dealing in the same sector so goes for DRS

    If they are not operating in the UK they have no grounds.

    what happens if "toasters.vietnam" was regged before the .com?
    Does that mean they can get the .com and every other world extention 'cause they reggd and traded first???


    ......................

    You've been here as long as me so you know the score. The very fact you are asking makes it a close call and therefore as the othes have stated "is it worth it"?

    If it is a big corp, chances are (as already stated) it would be a DRS bypass and threat of court instead. We are coming for you, your car, your house and your pants. :)




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  17. julian United Kingdom

    julian Banned

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    Surely if its a business open to users globally that constitutes operating in the UK too.



     
  18. woopwoop United States

    woopwoop Well-Known Member

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    I don't think so. They must have had significant involvement in the market to keep their trademark (registered or unregistered) valid in the countries they seek to maintain trademark protection.

    I think just having a website and maybe xxx visitors from countries around the world doesn't provide evidence of significant trade in each country.

    It can be argued what is significant involvement, but it usually involves some kind of advertising and a reasonable amount of customers beyond family / friends / even xxx visitors ...

    Without any of that even a paid for (registered) trademark is useless especially for a generic term.
     
  19. julian United Kingdom

    julian Banned

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    Thanks for your input, but methinks this more of a DRS issue rather than TM.

    In a nutshell going back to my example: can one make legitimate use of archive.org.uk in the same way as archive.org has - the service is similar, the domain is similar - is it abusive to make use of the domain in this way.




     
  20. invincible

    invincible Well-Known Member

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    One could. Without seeing the implementation of your idea, and whether you are clearly not passing off your implementation as that of another party, it is likely that you will receive very guarded answers here. How your plan is accepted depends on how well thought out your implimentation is and how much other interested parties that you may potentially overlap decide to take notice. An email to a good IP lawyer, such as Adlex, might be a good investment and might also help you decide how far you are prepared to go with this.
     
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