"passing off" - uk ror shenanigans

[dee]

So... there's been a bit of back and forth about the current state of ROR uk drops and the possibility of losing domains to DRS under passing off etc

I wondered what the likelihood was of say (as has been discussed already elsewhere) some domain uk actually losing the domain to some domain com if they develop it as its 'passing off' ?

Surely if any domain is a generic a term the com could decide to stop the uk on that basis, would the first one to any generic not just get to have the monopoly on that word ?

 

[Reddy]

Hi,

I would appreciate if you would not discuss my specific domain. The sales thread for it has turned into a bit of a farce with people discussing values and giving opinions even though it is not permitted in sales threads.

On to your question, I cannot see how a .com could claim passing off against another extension (.UK or otherwise) where the domain stem is generic and descriptive. This includes towns and cities.

Would you say that for instance a .com such as finance, loans etc could claim passing off against all other extensions of these words?

If what you are saying held true then every generic, descriptive .com could claim passing off against that term in every other extension. It doesn't and wouldn't happen.

 

[newguy]

I do think that a domain of a place name, for instance, can very reasonably be expected to have information about that place. I don't personally think there is any case to be answered in situations like that.

 

[dig bick]

Here's something that you might find interesting -

https://www.pinsentmasons.com/out-law/news/baa-loses-battle-for-gatwickcom

Was sure the case but was based on a .co.uk but after searching Nominet's DRS decision I finally found this.

 

[dee]

Hi,

I would appreciate if you would not discuss my specific domain. The sales thread for it has turned into a bit of a farce with people discussing values and giving opinions even though it is not permitted in sales threads.

On to your question, I cannot see how a .com could claim passing off against another extension (.UK or otherwise) where the domain stem is generic and descriptive. This includes towns and cities.

Would you say that for instance a .com such as finance, loans etc could claim passing off against all other extensions of these words?

If what you are saying held true then every generic, descriptive .com could claim passing off against that term in every other extension. It doesn't and wouldn't happen.

You're right. Bad form on my side. I apologise and have edited the post. Sorry.

And that's exactly what I was saying. Surely just because a site of any extension develops first they can't claim passing off by everyone else. Looks like @dig bick has just supported this also.

Just thought it was mad that people were saying it could happen

 

[Reddy]

You're right. Bad form on my side. I apologise and have edited the post. Sorry.

And that's exactly what I was saying. Surely just because a site of any extension develops first they can't claim passing off by everyone else. Looks like @dig bick has just supported this also.

Just thought it was mad that people were saying it could happen

Thanks dee

 

[jmcc]

City and town domain names might be be a bit more complex in some jurisdictions as the city or town council may have rights. Not sure about the UK but with .IE ccTLD, the registry had to reserve city and town names initially. The only one that had arguable rights was Waterford Crystal and it got the .IE. There was also a case about france.com where the government of France decided to go after france.com and succeeded. The registrant, I think, took a court case over the decision.

There were also ADRs with the .EU where various university names (Oxford, I think) were registered because of a flawed rights process with iffy Benelux deposit trademarks. They are trademarks that have not been published for opposition like a normal trademark.

Passing off, from what I remember, involves trying to misrepresent a business as being another. The .UK ccTLD has subdomains that make the whole thing more complex in that it might be possible to have examplecity.co.uk and examplecity.ac.uk existing in the zonefile. The passing off argument might arise, (non-lawyer viewpoint), if examplecity.co.uk tried to claim or market itself as being examplecity.ac.uk while having no connection.

The .com/.uk situation might be even more complex because of the rights issue in passing off. With the new gTLDs, the city registries had to get permission from the cities before applying to run the gTLD. This link seems to be a good explanation of some of the ideas of passing off: https://www.inbrief.co.uk/intellectual-property/passing-off/

Regards...jmcc