Discussion in 'Domain Name Disputes' started by Whois-Search, Apr 22, 2007.
Another "game" example where they agree that "playboy" is a generic term and even though there is no registered Trade Mark for Playboy Racing, the name is passed over.
It seems if you put enough branding behind a generic word they will favour you in such decisions.
Lots of very 'ODD' stuff with this one...
...So how does all that fit into the great scheme of things? :???:
More to follow...
As I posted earlier to nom-steer:
> What do people think of this appeal decision?
I personally think it was the wrong decision.
The respondent was using a English term in a totally different context to the complainant.
The complainant admits and the panel acknowledges that there is not a TM for Playboy Racing:
" None of them explicitly cover horse racing activities, but many of them cover general aspects of sporting and gaming. There are no registrations for PLAYBOY RACING per se."
The end result is a legitimate small UK business damaged for negligible benefit to a very large American one.
In the initial decision it ended:
" It is not for me to consider whether or not the Respondent is guilty of trade mark infringement or passing off. That would be a matter for the courts to decide. But, for all the reasons outlined above, the Complainant has not in my view established that the Domain Name is an abusive registration as defined in the Policy."
However in the appeal it does seem that the implication is that passing off has occurred...?!
I would be interested to know if the Experts Review Group review (Formed by 'experts', reporting to 'experts' etc) as per http://www.nominet.org.uk/disputes/drs/experts/expertsgroup/ has ever resulted in Nominet not renewing the contract of a DRS 'expert'.
You have to realise that having a registered trade mark is helpful in order to save on costly legal proceedings but not in itself enforceable under english law.
For example, one may have an unregistered right to trade under a specific mark and can overturn a later registered trade mark. The Patent seems to make it very clear that the courts are the only deciding place but it is in everyones interests to avoid the courts and come to a amicable solution.... hence why the Patent Office search, advise, examine, advertise, allow oppositions prior to registering a mark. What I don't agree with is this 'registering in bad faith' or the term 'abusive'.... how can anyone be deemed as acting in bad faith if so many parties haven't got a clue.... recently I had a TM application declined and then I recieved a later saying we have changed our mind and we are going to advertise the mark!!!
Too many get sued for not knowing any better and thats just sad
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