Generic name pig.com not a trademark violation

[advaita]

Just seen this - maybe it's been posted already

On 29th January 2007 the National Arbitration Forum allowed a domainer to keep the domain pig.com, which it decided had not been registered in bad faith.

http://domains.adrforum.com/domains/decisions/843597.htm

Registration and Use in Bad Faith
The Panel finds that Respondent registered the <pig.com> domain name based on the dictionary meaning of the term “pig” and not to take advantage of Complainant’s generic mark. See CNR Music B.V. v. High Performance Networks, Inc., D2005-1116 (WIPO Jan. 23, 2006) (“The registration of the domain name appears to have been aimed at exploiting the ability of the word itself to attract Internet users, and not aimed at taking advantage of the Complainant’s reputation or trademark.”); see also Target Brands, Inc. v. Eastwind Group., FA 267475 (Nat. Arb. Forum Jul. 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).

The Panel finds this element has not been satisfied.

DECISION
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel orders that relief shall be DENIED.

 

[Keynes]

John Berryhill owned that case, and rightfully so.

 

[accent]

Fine. But what about inc.mobi???

No lawyer = lose your name?????

As I heard it the owner of inc.mobi tried to contact a lawyer, but got no response. The fact is that most lawyers have more work than they can handle. If a case does not have big money (for the lawyer) then there is a very good chance that the respondant will be unable to get representation, regardless of the merits of the case.

And the corporation will take the name.

 

[Dave_Z]

Like them or not, rules are there for a reason. One can see them any way they
want, but ignore them at your own peril.

 

[fonzie_007]

Fine. But what about inc.mobi???

No lawyer = lose your name?????

As I heard it the owner of inc.mobi tried to contact a lawyer, but got no response. The fact is that most lawyers have more work than they can handle. If a case does not have big money (for the lawyer) then there is a very good chance that the respondant will be unable to get representation, regardless of the merits of the case.

And the corporation will take the name.

It is true that many lawyers are very busy; however, if you are willing to pay you will always have at least some attorney who will take your case. Even if you can't afford an attorney, there is plenty of research you can do yourself to help equip yourself for arbitration.

 

[IAmAllanShore]

Good read - although the complainant's bully tactics got on my nerve a bit:

According to <pig.com> as of December 12, 2006, the domain name is for sale. Complainant views this as indisputable evidence of bad faith.

Righty-O!

I'd like to see how Adam responds to any other requests (Beyond their $21,000 offer, of course!) after this method...

And FWIW, I'm going to use this opportunity to point out, yet again, why you should get an attorney that practices in domain names rather than your normal lawyer.

The fellow they used:
http://www.pbandg.com/bios/gordon_matthew_w.asp

Is focused on patents - and judging by location and age, is probably a junior guy on "PIG's" patent team (They are in a patent-heavy industry, obviously) and someone (Maybe he) convinced PIG to go the UDRP route because hell, it's more billable hours!

Not saying any of that happened, but yet again his argument reads more like civil procedure than it does UDRP - and JB clocked him a bit on the request for response bit

-Allan

if you are willing to pay you will always have at least some attorney who will take your case.

And in response to the non-quoted portion: A man who chooses represents himself has a fool for a client

 

[texasgamer]

I would have wrote the DECISION:

Complainant having failed to establish all three elements required under the ICANN Policy, the Panel orders that relief shall be DENIED until when pigs fly.

 

[accent]

And in response to the non-quoted portion: A man who chooses represents himself has a fool for a client

DAMNIT! Many of us do not have $5,000+- to throw around. The owner of Pig.com apparently does, so he keeps his name, but whatever he paid his attorney is GONE.

My point remains that the owner of inc.mobi could not even get a response from a lawyer. Why? Probably it was not a big enough $$$$$ name. He had no choice but to represent himself, fool for a client and all, and LESS THAN THREE WEEKS to learn how to do it, in the midst of all the other responsibilities of his life.

And so he had his name removed from him, to the glee of hijackers everywhere. I am sorry, this system is cr@p.

 

[advaita]

Good points accent but at least this case sets a precedent and can be used by anybody finding themselves in a similar situation - so it's good to make it known to as many domainers as possible. I am new to all this and was surprised to see that anybody would dispute that 'pig' was generic but pleased to see they lost.

 

[accent]

You know, I may be the only one on this or "the other" forum that knows what a "pig" is. I saw a article in Businessweek (or similar) a few years ago - kinda a "aren't they clever" piece. No heavy handed-ness here, oh no. Nice warm fuzzy company.

The company owner saw workers dumping kitty litter on oil spots that leaked from equiptment as he visited factories. Thought that was pretty messy, so he stuck ground up corn cobs in an old sock, and in a stroke of marketing genus (so says BW) called it pig. The article quoted the owner admitting that he got most of his sales because bored supply people thought it was cool to order something called pig.

So now you know. Make your own pigs.

Or better not. Maybe he own the rights to corn cobs.

 

[Aggro]

The timing is appropiate....in the chinese 'year of the pig'

 

[Jeffrey]

What if the owner of the domain is in Sahara desert and the bully who wants to steal the domain is in America?

 

[accent]

What if the owner of the domain is in Sahara desert and the bully who wants to steal the domain is in America?

Exactly. The owner probably loses.

If the owner does not respond within the three weeks the panel (of one) considers all reasonable allegations of the complaint to be proven and if they meet the three criteria (of course they do) he orders the name transfered. If the owner is not represented by an attorney the panel (I think most of them are lawyers or judges) considers him a fool, ignores his evidence and counterpoints because they are not in the proper form (even if they are) and orders the name transfered.

Lawyers, although there certainly are good honest ones, are members of a high priesthood that jealously guards their turf. If any Joe could come along and win law cases by hanging out in the library for a few hours then the legal profession could not charge hundreds of dollars per hour for their time, now could they?

Pig.biz did not have a happy ending. The owner did not respond (who knows why?) and the name was transfered to Big Pig. see:
http://domains.adrforum.com/domains/decisions/110849.htm

I wonder if kangaroo.com is taken.

 

[gazzip]

There's another article about it here - http://news.com.com/2010-1030_3-6160795.html

Nice to see they count PPC as being a legitimate use

"However, the panel did not find that the domain name was registered to take advantage of New Pig's mark. Instead, it was used to display pay-per-click links related to the generic term "pig." The panel found that Pig.com was registered in good faith based on the dictionary meaning of the word "pig."


.

 

[IAmAllanShore]

Nice to see they count PPC as being a legitimate use
.

Not "legitimate use" carte-blanche, but rather that it wasn't necessarily "bad faith" - and only in this circumstance, as the word is so incredibly generic.

Check nissan.com , for example. (Not parked, but an old stand-by for domain name horror-stories)

And I did get a kick out of the comment on the article : wipo.org.uk <-- For a good read; it sort of misses the point and only focuses on the first 2 prongs of the UDRP - but it is the third prong, I feel, that is most abused by panelists.

-Allan

 

[Kate]

...
Check nissan.com , for example. (Not parked, but an old stand-by for domain name horror-stories)

Well at least Nissan Motor own Z.COM

 

[gazzip]

Check nissan.com , for example. (Not parked, but an old stand-by for domain name horror-stories)

Damn Thats pretty s****Y - poor guy, I would imagine that kind of pressure would wear you down after a while....and your bank account !

Should'nt be allowed, I can't imagine why they should win it due to it being his surname and the fact he had it before they named their company Nissan ! if he has never tried to profit from their brand then I would have thought they did'nt have a leg to stand on, it is pretty rediculous, they're probably out to financially ruin him.....Barstewards !!

Corporate Bullies - shame on you ! :p

ps - Your cars are s**t too !

.

 

[domainsusi]

This is ridiculous.

How can it be allowed for anyone to claim trademark rights to a valid english noun?

Furthermore, I bet the (lucky) guys who own Pig.info or Pig.net have not had their ownership challenged.

 

[IAmAllanShore]

How can it be allowed for anyone to claim trademark rights to a valid english noun?

That's a joke, right?

Read, then reevaluate : http://www.uspto.gov

-Allan

 

[Dave_Z]

How can it be allowed for anyone to claim trademark rights to a valid english noun?

I can claim you're not domainsusi. Is there anything not allowing me to do that?

FYI, any word can be trademarked in the US. Demonstrating it is another thing.