- Impact
- 6
on a Generic Spanish word "proteccion.com"
http://www.wipo.int/amc/en/domains/decisions/html/2006/d2006-0868.html
http://www.wipo.int/amc/en/domains/decisions/html/2006/d2006-0868.html
In addition, there is evidence that words such as “Colombia” and “pension” appeared at one point in time on the site to which the disputed domain name resolves, thus creating confusion with the Complainant’s business. There is a factual dispute as to the origins of those words, the Respondent suggesting (and trying to demonstrate by giving the Panel online access to a computer log), that the Complainant’s computer network was used, deliberately or not, to upload those terms to the Respondent’s site. The Panel is unable to make a factual determination as to the origin of the words in question, but the bare fact of their presence remains. The presence of those words on the site likely increased the traffic on the Respondent’s site and led to commercial gains.
The Panel’s findings do not impose a duty on the registrant to check every national trademark register. A finding of actual (or, in some circumstances, in the case of a US registrant and a US-registered mark, constructive) knowledge of the complainant’s mark is required. The Panel considers it reasonable to impose a basic duty of care in controlling the content of one’s website, especially in the absence of a disclaimer and/or a case where it is clear that postings can be made by anyone and are not the website operator’s responsibility (such as unmanaged listsservers). In this case, the Panel finds the words on the Respondent’s site did create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product.
The Respondent admits that he regularly registers and offers domain names for sale. From the documents submitted, it appears those domain names are composed of common words. The Respondent argues that it does not have the burden of checking whether any such word may infringe a trademark (assuming that the Respondent, as he asserts here, had no previous actual knowledge of the mark). In fact, one could reasonably conclude that the Respondent hopes to sell domain names, inter alia, to owners of marks that include or correspond to the words common or otherwise contained in the domain names it registers. Can a respondent in those cases, simply rely on a defense which consists of saying, essentially, the domain name consists of a common word and I have no duty to check? On the first part, the answer is clearly no, as demonstrated by the examples mentioned above. Common words can and are used as trademarks, and that is permitted provided the words are not generic (in relation to the goods and services in question) or clearly descriptive (ORANGE works as a mark for communication services and equipment, not for oranges).
NP41215 said:I doubt this is the end of the legal dispute.
There should be more legal developments.
Sound advice.slipxaway said:make certain that nothing on your site is even remotely related to a TM holder's business.
rocketfly said:I find this decision to be troubling: even if you have a developed, legitimate site that has PPC feeds, ineviatably there might be some overlap with a wordmark holder. By my reading, the strong undercurrent against squatting is leading to a confusion between domain investors/speculators and squatters -- it is possible to be in the former camp without being in the latter. There is a dangerous precipice in grouping the two together, a priori.