There is growing controversy over DRS decisions, especially ones where rights to "generic" names are concerned.
The first hurdle for a claimant to over come is to establish some rights over a name. At the lowest level (more of a chalk mark on the track than a hurdle) any established use of the name by a business or organisation, however small, would be enough.
The second test requires evidence that the domain has been registered or used to the detriment of the claimant’s interests or that the Registrant is engaged in a pattern of abusive registrations.
It might be argued by a future claimant that even a Trademark obtained by a Registrant (after the registration) is primarily a measure of protection against DRS, if the Registrant could other wise not clear the first hurdle. A UK TM only secures rights to the use of a name covering clearly defined goods or services, and most names are covered by many TM’s held by different parties.
In these circumstances I wonder if a Registrant and holder of a corresponding TM might lose a DRS case, if the claimant (probably another TM holder) could successfully argue that the registration was abusive prior to granting of the Registrant’s TM.
The first hurdle for a claimant to over come is to establish some rights over a name. At the lowest level (more of a chalk mark on the track than a hurdle) any established use of the name by a business or organisation, however small, would be enough.
The second test requires evidence that the domain has been registered or used to the detriment of the claimant’s interests or that the Registrant is engaged in a pattern of abusive registrations.
It might be argued by a future claimant that even a Trademark obtained by a Registrant (after the registration) is primarily a measure of protection against DRS, if the Registrant could other wise not clear the first hurdle. A UK TM only secures rights to the use of a name covering clearly defined goods or services, and most names are covered by many TM’s held by different parties.
In these circumstances I wonder if a Registrant and holder of a corresponding TM might lose a DRS case, if the claimant (probably another TM holder) could successfully argue that the registration was abusive prior to granting of the Registrant’s TM.
