Domain Names and Copyright example

[crabfoot]

I've been looking for a good summary of this case for a while -

http://www.out-law.com/page-6721

It details how someone used the Tesco mark in domain names to drive traffic to Tesco, and how Tesco were so unimpressed that they refused to pay for the traffic, then sued for the domain names and won the case.

It is a salutary lesson in "why you should not use Trade Marks in domain names", especially salutary because the defendant's actions were all to the benefit of the TM holder.

I'm posting this in the general forum because I regard it as very important, and something that, while we may not agree with it, we should all be aware of.

That's how THE LAW sees it ...

 

[doodlebug]

I remember some guy made 25k with Tesco domains through aff networks and lost all his money

TMs are a waste of time, as I said before there's enough money in generics

 

[crabfoot]

I remember some guy made 25k with Tesco domains through aff networks and lost all his money

Yup, that's the story - but he didn't make any money at all because Tesco refused to pay out ...

 

[furryanimals]

Isn't there a gap or overlap where tm is a verb or noun (and so a generic)? I am sure there is nothing remotely available in the yahoo, orange apple etc etc field but I would guess certain rights are lost because of it. (some may say even google is now a verb) Sorry, I am probably stating the obvious

 

[furryanimals]

hmmm I thought I just posted something here. Was just going to add this to it...but post seems to have disappeared? Anyway, interesting case here http://www.dnjournal.com/archive/lo...htm?utm_source=twitterfeed&utm_medium=twitter

PS: had just commented that tm may not be so valid if tm is generic eg noun or verb like orange apple, ask or even something like yahoo (as in yahoo = shout/scream etc) and some people may even class google as a verb as I think it is now in showing up some dictionaries Although after all this, I doubt there is anything along these lines that is available for registration

 

[crabfoot]

Looky, that chap created a lot of business for Tesco, but he did it using domains which contained the word "Tesco", and they got upset about that.

They didn't pay his commission, they made him hand over the domains, and they used "Tesco diets" to create a new multi million pound business!

It's a lesson in avoiding TM domains.
The point is that you cannot use a trademark without the holder's agreement. If you are not associated with a company, you have to get permission. If your business is in reconditioning or repairing Hopoint Widgets, you would have to ask Hopoint for permission to use their name for a site because you are not part of the company.

There is a latitude extended to words in general use which have been trademarked, but there is also an ICANN ruling that says a TM holder only needs to provide evidence that he holds a TM, and a hosting company has to take down sites they object to - there was a real ruckus not long ago when Micro$hit got uppity and caused a lot of disturbance to the sites of people legitimately selling double glazing.

The bloke in the Tesco case should have got agreement from Tesco, and gone to Sainsburys or similar if they wouldn't give it.

Those French people were "trying it on" and got what they deserved.

 

[GreyWing]

It's a lesson in avoiding TM domains.
The point is that you cannot use a trademark without the holder's agreement.

Not true, check out things like this from the last month or so http://www.lexology.com/library/detail.aspx?g=f95ee523-dbf8-4436-9f3b-9170dc05125e

Volvo lost many similar case last year

 

[crabfoot]

Yes, well, sanity has to be upheld, even if it is on a case by case appeal basis.
Whatever, it is a minefield and there are legal fees involved in disputes that would induce quadraplegia (ie cost an arm and a leg twice over).


Care to comment on the grey area regarding my local farm shop selling Wingate Wonder apples?

 

[GreyWing]

Mate I am of the same opinion in that I wouldn't build a business round a tm, at the best they are going to try to tie you up in red tape for years.

Saying that for people like Toyota to try and sue someone for having buyasecondhandtoyota.co.uk is ridiculous.

Nobody in their right mind would think that after just looking at that domain name would think it was an official site.

Of course how they brand the site and design the site is another part of ingredients that make up a correct TM case ruling.

So common sense seems to have been applied in those court cases.

 

[DarrenTSO]

There was a similar case regarding Lexus wasn't there?

Except the domain owners won.