marty said:
yes i understand that common law applies if a trademark is not registered by a company and that they can still have a apparent 'ownership', of a "name". However what i am asking is - can such a generic name (i.e. "Hotel Martin") be "owned" by any particular company and moreso can a domain with a similar name be "owned" (plus domains are intrinsicly generic by nature as they do not include a defining logo/color/location etc.).
It's one thing for a company to own a trademark for the word/s and a girl or
guy to own a domain name with the trademarked word/s with an extra word,
it's another thing if the latter is using it totally different from what the TM is
registered for.
And to repeat what I said, you'll find such cases in NAF or WIPO. I'm looking
thru WIPO as I recall there's one regarding AOL and a traffic school using AOL
but with other words in its domain name.
Dr. Berryhill noted in another forum that whether a domain name is generic or
not isn't really an issue. Rather, it's how the domain name is being used or
what the intent of the domain name owner is, and being able to prove that
intent.
marty said:
...and which of the many companies would necessarily have the right to this domain? -why should anyone have more right over this set of generic words in the domain, or a trademark for that matter? (i'm assuming this is the reason why the trademark isnt generally registered)
The only one who has a "right" to the domain name is whoever is listed as the
registrant of that domain and is paying for it.
As to which of the two companies, with the same word/s trademarked for
their respective registrations fighting for the same worded domain name, will
get it depends on their ability to fight for their cause and prove their side has
more merit.
The UDRP, as many believe, favors registered trademark holders or those who
successfully prove they have common law trademarks. But it also placed limits
such as proving the domain name owner has a legitimate use and/or isn't using
it in bad faith.
As to the Courts of Law, that depends on what the Law says in that area.
marty said:
Yes i do know the 'UDRP rules', and they (WIPO) have found incorrectly (In My Opinion) in some instances. i.e. barcelona.com case was lost from a rightful owner to an authority in barcelona. IMO This wouldn't have happened in a court of law.
Fortunately barcelona.com had a happy ending...for the owner, that is:
http://www.phillipsnizer.com/library/cases/lib_case321.cfm
marty said:
Discussion (IMO): (ignore this bit if you like
)
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Remember what Trademark Laws are there for: to remove confusion for CUSTOMERS. They are not there primarily for the benefit of businesses.
A Domain does not equal = Trademark/Company, it is a Domain owned by anyone.
The USE of the domain should only be governed by law and that should be limited to normal Trademark law, and that should cover whether customers are easily confused between a website of said trademark and a different website.
The onus of confusion is on the content of a website.
If companies list their Trademark Name and address at the bottom of each page (as they are in fact required to in the EU (under distance selling regulations)) this would stipulate clearly who they are (in the "real world") and would eliminate confusion. If this is then falsefied (amongst other things) then a case can be made.
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That part should already answer your question regarding domain "rights".
dgridley said:
Many overlook the fact that a name does not need to be registered to be protected.. thanks for reminding us about the common law aspect of TM's.
Anytime! :tu:
