Generic, but also well established

[Dutch]

Generic, but also well established

I was wondering if anyone can shed some light on the following:

Suppose a company called 'Legal Reports' has registered trademarks both for their company name 'Legal Reports' and for their primary domain name legalreports.org. The company is furthermore widely known in the United States and has a well established presence on the internet. It also owns the domain name legalreports.com which redirects visitors to legalreports.org.

Now someone else comes along, registers the domain legalreports.de and puts it up for sale hoping that someone in Germany will want to purchase the domain for offering online legal advice in Germany. He or she may assume that the term 'legal report' is generic and for that reason is not protected by trademark law.

Is the domain investor in his right to purchase the domain legalreports.de, or is he infringing upon the 'Legal Reports' trademark? Does it matter that the domain has the .de extension? Would .info or .net change things?

Any input on this matter would be much appreciated.

Dutch

 

[Dave_Z]

IMHO, yes.

First, the company Legal Reports has registered trademarks for the words
"legal reports". This would satisfy the UDRP's first condition on determing if the
complainant has a trademark or not.

You're aware of the UDRP, right? I'm assuming only here that you do, so feel
free to say so if you don't.

Second, if the registrant made any commercial indication whatsoever, be it
putting up a "For Sale" site, or even telling people online it's for sale, the L.R.
company can use that as evidence to satisfy the UDRP's second and third
conditions about legit interest and bad faith, respectively.

JBerryhill once posted that how a domain name is "generic" depends on the
intent or purpose the owner has regarding it. Granted, it's not easy doing so.

The legal reports company will most likely want to send a cease and desist
letter telling the owner to turn it over or else. If the owner refuses whether
the owner replies or not, the company can then invoke the UDRP as their next
step.

Once everything's been set (the venue, the panelist/s, etc.), the case begins
and the complaining company must first show proof on all three points. The
owner/respondent of the domain name can choose to reply or not, depends.

Ultimately only the panelist/s assigned to the case will decide based on what
both sides offer to prove their respective points. But based on the details you
gave, the owner will virtually lose, especially if the complaint proves, again,
what the owner intended to do, coupled with the fact that the complainant
has registered trademarks.

Hope this helps. If I'm wrong on any point, anyone, please feel free to correct.

 

[Dutch]

Thanks for your insights, Dave. Much appreciated.

Could you or anyone else provide me with some additional angles or information resources that deal with the question of a trademark's geographical reach? I think I read somewhere that the use of a name/phrase that is registered as a trademark in one country, does not necessarily constitute trademark infringement when its use is limited to another country. What are the circumstances in which a US trademark, such as the one in this example, would cause a .de (Germany) registration to constitute a trademark infringement? Anyone?

And while I'm at it - how about .tv (Tuvalu)? Does trademark jurisprudence say anything about .tv as being different from other country codes because the extension is universally being read as 'television' rather than 'Tuvalu'? Would the geography argument lose its meaning here?

I would be very happy with any input. Thanks for your time.

 

[primacomputer]

Buying a domain name for the sole purpose of speculation is a “legitimate interest”, and has been cited as such in numerous WIPO decisions. It may not be ideal to have this as your only defense, but it has sufficed in may cases.

With a name that generic you can not loose, unless you do something really stupid.

 

[jberryhill]

First, the company Legal Reports has registered trademarks for the words
"legal reports".

On what planet?

 

[Dutch]

'Legal Reports' was a fictitious example, and Dave simply quoted me.

BTW, I would highly appreciate your input

On what planet?

 

[jberryhill]

'Legal Reports' was a fictitious example, and Dave simply quoted me.

Oops, my bad.

Whether or not the trademark is registered in Germany, some of the things you would want to consider include how well known is this company in Germany, does this company do business in Germany, why is the name in English instead of German...

 

[suthra]

Oops, my bad.

Germany, does this company do business in Germany, why is the name in English instead of German...

Excellant point to defeat the case

 

[Dave_Z]

Aargh, I forgot about the geographics factor. Sorry about that.

 

[Dutch]

Buying a domain name for the sole purpose of speculation is a “legitimate interest”, and has been cited as such in numerous WIPO decisions...

That's really interesting. I was not aware of that.

.. does this company do business in Germany...

Thanks, JBerryHill. In this example the trademark holder is a non-profit organization which operates in the US only.

...why is the name in English instead of German

Good point. In my (layman's) perception it looks like this might well be a decisive consideration in this particular case.