Interesting WIPO decision...

[wisconsin]

on a Generic Spanish word "proteccion.com"


http://www.wipo.int/amc/en/domains/decisions/html/2006/d2006-0868.html

 

[Dave_Z]

Can anyone try looking up for any "proteccion" registration at the link below
and knows the lingo:

http://www.sic.gov.co/

I can't seem to find any search function.

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.

More work to do, guys. Work work.

 

[labrocca]

Very weird read. Seems the big negative was that he parked the domain and they claimed that was bad-faith. Also I don't understand how they compare Apple to Protection. It was being used in the generic sense which imho the Columbian company couldn't pass a legal TM to it. It's too descriptive to the usage.

He has this domain 8 years and lost it in one wipo sweep. I really don't agree with this ruling. It's actually a pretty short read in comparison to many other WIPO decisions.


I find this the most interesting paragraph:

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).

 

[DNQuest.com]

While I do not like the decision, I think the respondant shot himself in the foot on this one and get some help with an overreaching on the TM.

But stand back and see what the panelists see:

Parking is not a legitimate way to gain rights to a domain.
While it was parked, it seems the complainant services were being offered.
The respondant using the "I can't control the content" (paraphrased) defense is not a good one. He made the choice to park the page, and with parking the page he has knowledge of how it works. He could have omitted the TM.
The respondant somewhat states it is not his responsibility to serach for TMs, it is by the TOS of the registrar.

I do think there was some overreaching on the word. But in UDRP, you only need establishe if a TM has greater rights to a domain, which they were able to convince the panel. I think the respondant relied too much of the "word is generic" defense. Plus I don't think the respondant did enough to discredit the complainants right to a generic TM and harp on the point that generics words cannot be TMed. Maybe say the word "the" is TMed along with "other elements" but the TM holder cannot TM "the" becuase of it. The respondant needed to be more aggressive in this area.

The bottom line, usage, usage, usage. If there was a site up that did not compete against a TM holder, he could have succeeded.

This is the pitfall of the domain game. It is setup initially for us to lose, it is up to us to protect ourselves.

 

[wisconsin]

The respondent has a greater chance of keeping the domain if challenged in court.

 

[labrocca]

Yeah I agree DNQ. I just think the panelist had it out for the parked domain. Sad that you can get your generic domain ripped from you after 8 years by a weak TM claim simply because of parked keywords. The word "protection" imho is too descriptive and the burden of proof is on the complantaint with regards to showing that when domain was parked it infringed on their mark. They didn't do that it appears.


Bad ruling imho but as DNQ says...it's understandable. Parking is getting the scarlet letter it deserves.

 

[NP41215]

I doubt this is the end of the legal dispute.

There should be more legal developments.

 

[Dave_Z]

I doubt this is the end of the legal dispute.

There should be more legal developments.

There will be more, if not this specific case.

 

[stscac]

Would be interesting if we could get jberryhill to comment

Seems logical to me.

-Steve

 

[Ronald Regging]

Basically it boils down to the fact that the respondent had links to the claimants services on his parking page. If the respondent had been using the domain for anything else in the world, the claimant would have no legal rights. This just goes to show that parking is a dying venture. If you own a TM domain, even if it's generic, and you're not using it for some legitimate purpose that doesn't violate the claimants TM, then you're screwed. Develop your sites or make certain that nothing on your site is even remotely related to a TM holder's business.

 

[keywords2]

make certain that nothing on your site is even remotely related to a TM holder's business.

Sound advice.

However, it's difficult to always know who the potential TM holder could be, particularly when they crawl out from somewhere like Colombia.

How many people would think to/know how to check the Colombian TM registry?......Or the Burkino Faso TM registry?

 

[Keynes]

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.

 

[DNQuest.com]

As I have been saying over and over, we start off at a disadvantage. It is up to the domain holder to make sure they are protected from any tyoe of "bad faith". We all know by now that parking WILL NOT help the domain owner on 2 fronts:

1 - The links could have the TMs products/services listed, or can have the competitors products/services. This would be a finding of bad faith.

2- Parking DOES NOT create rights tot he domain. To create rights, you have to develope the domain.

 

[Ronald Regging]

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.

I agree that there is confusion between domain investors/speculators and squatters, but invariably, if your site benefits in any way (including overlap on PPC) from a company's TM, you are violating their rights. Maybe there should be a process in place where the TM holder is required to inform you of these violations and ask you to remove them before having a right to come after your domain. I'm sure there are legitimate, non bad-faith instances where there is unintentional overlap, and in those cases, especially with generic terms, it seems a bit unfair for domainers.

But this is how WIPO seems to be handling things, so learn or lose...