Another bad faith / abusive registration question

[bb99]

OK let's assume you own cheese.co.uk.

Let's also assume that someone else owns cheese.com. Cheese is a generic word, but they use the "Cheese" brand for manufacturing and selling a certain type of microchip. So it's not known by mass market consumers, but those in certain electronic industries will probably have heard of it - not that this makes their trademark any less valid.

Moving on... You park cheese.co.uk with one of the popular parking providers and use the keyword of "cheese". You envisage that this will bring up adverts for different speciality cheeses, shops, manufacturers, etc - it is, afterall, a generic word.

However, lots of adverts for this type of microchip appear on the parking page because all of Cheese.com's competitors are PPC bidding on the "cheese" keyword. These adverts dominate the parking page, with maybe some Wensleydale / Cheddar / Edam right at the bottom.

Is this an open and shut case for an abusive registration? I'm thinking that it is. There's been plenty of DRS cases whereby the use of a parking page that shows adverts for a competitor's products etc has lost the respondent the case.

But in these cases, or rather in the ones that I have read, nobody seems to have argued "Well yes the adverts do appear, but it's actually the advertisers that are in the wrong - not me."

A purely hypothetical situation you understand - cheese.co.uk is nothing to do with me.

Interested in people's views on this or whether there's any DRS cases where this has been argued...

Ta

 

[aqls]

point 1) Namedrive do but I don't think Sedo, allow you to negatively select what ads are allowed on your page
2) otherwise it is google that provides the controls for it.
3) it is the advertiser that has some control as to which domain his adverts fall on - with google adwords at least.
4) perhaps the advertiser is attempting directly, or indirectly by not policing ads for their own product, to influence the decision by allowing his products ads on your page in order to argue the DRS.

5) The system is not set up such that it is reasonable for you to check each ad on your page - in fact it is impossible as each view of yours will be different.

Maybe if at least some attempt is made on your part to try to limit these ads then that argument can be made redundant, e.g. email to google, or neg keyword in namedrive,

Is there possibly a grain of argument that says that the international co. should not be advertising in a medium that is not particularly targeted to their own registered trademark population.

e.g. if Big Cheese electronic chip manufacturer advertises in a place more (or at least equally) likely to be frequented by cheese eaters then it cannot be said that that advertising medium is at fault for misleading the public as to the trademark because *most* of the visitors will be considering cheesy wotsits.

Virgin Holidays, advertising in a dating site would have to particularly state that it is holidays provided by virgin or else *they* might be misleading the visitors into thinking they will get more than what is offered.

Although I don't think that is much more than an advertising standards problem, it may put the onus on the complainant to describe why they are advertising on a totally open-to-everyone medium when their product is suited mainly to people elsewhere.

It may be a clever advertising choice from their point of view to get that proportion of visitors that may be related to their product, but it is a bit rich to extend that to decide that they therefore own the advertising medium.

-aqls-

 

[Beasty]

There has been criticism - and maybe even litigation started I can't recall - of Google for use of registered TMs in adwords used by third parties to the TM holder.

Also metatag use is not TM use in the UK according the LJ Jacob in Reed v Reed.

 

[domainer]

In the example above if the domain was cheese.co.uk then IMHO I would say it is not abusive. It would become abusive if it was pointed purposely at a competitor to cheese.com. I have a similar situation and I use framed forwarding using the facilities at 123reg to add title, keywords and description - I make it clear the site is about edam,cheddar etc although the parking page still throws up references to cheese.com.

 

[domaingenius]

First off you have to differentiate between (a) DRS and (b) Court cases as they are two seperate things entirely with different purposes.
Forgetting drs. Trademarks are issued to protect "A" name for "A purpose/s (i.e. classes) . If the company has a trademark for "cheese" you have to look at the actual trademark and see whether it was granted for the same purpose that you are using your domain cheese.co.uk for. Also you have to see on what basis the TM was granted because if it is a generic word, like cheese, then the chances are it was only granted because it was written in a distinctive way ChEeSe and thus was distinquished, or it maybe in bright red and blue colours. They would NOT grant a TM simply for the word "cheese" with no distinction.
You can only violate a TM in you choose to use the same or similar name for the same product (Class) as th company has protection for. If you used www.cheese.co.uk to sell ringtones you would be ok,. If you used it to sell ,cheese, then you may well be violating the TM granted for even a distinctive "cheese" trademark.

As for DRS, that is slightly different. If you tried to blackmail them with threats to use the name to harm them or compete with them, say goodbye to the name. If you offer to sell it then no problem Im sure.

DG

 

[retired_member11]

Add another keyword, say 'spread', to demonstrate that you were intending to only attract food themed links and not electronics themed links. It would be a good pre-emptive defence strategy to counter possible 'grabbers'.