Registrar Vs. Registrar UDRP

[Dave_Z]

You read it right: it's a UDRP involving 2 registrars. Decision was just released:

http://domains.adrforum.com/domains/decisions/1126697.htm

Enjoy. (and yet another feather to John B's cap...)

 

[Jackie]

Isn't it pretty ridiculous for Register.com to have a registered trademark for "Register" with the usage being

Computer network address management services, namely providing services enabling entities to reserve and secure computer network addresses and to access, add, modify, or delete information relating to their computer network addresses; computer services, namely providing search engines for obtaining data on a global computer network; hosting the web sites of others on a computer server for a global computer network.

It seems like a generic use of the term to me (all domain registrars use the term "register domains") and I feel it's sort of like somebody owning a trademark for "apple" to sell apples (the fruit). Anybody care to comment or explain?

 

[flamewalker]

TM overreaching... plain and simple. Not to mention a mind-numbingly stupid tm to be granted in the first place imho... so generic and descriptive its not even funny.

 

[labrocca]

Another victory for the beloved Mr. Berryhill. It's amazing how he picks his fights so dang well.

 

[Name Trader]

It just goes to demonstrate how valuable it is to have a lawyer well versed in Domains and Trademarks in UDRP cases.

 

[Dave_Z]

It seems like a generic use of the term to me (all domain registrars use the term "register domains") and I feel it's sort of like somebody owning a trademark for "apple" to sell apples (the fruit). Anybody care to comment or explain?

Unfortunately it might take a court decision to deem the word register to be
descriptive for domain registration. Gotta love the language in Register.com's
USPTO registration, though.

One other thing that interested me in that UDRP is it involved both attorneys
well-versed in this thing, both of which I'm sure gave their all. But in the end,
there can only be one. :D

 

[Name Trader]

I think the complainant was always going to be on the losing end of that argument. But it took JB's expertise in opening up the weaknesses in their case, imho. A lesser mortal might not have been able to do that. The complaint was lost in the counter responses, imho.

 

[Ronald Regging]

Lets not forget that Brett Lewis is a very competent domain lawyer and is listed in the Recommended Lawyers for Domain Name Issues thread. This list was provided by JB, so I think it's safe to say that anyone on the list is not unfamiliar with domain disputes. Also you have to consider the parties involved. Both are registrars, they know the deal as far as disputes go and neither one of them would hire a lawyer that didn't specialize in these types of cases. Otherwise, they'd be asking to lose...

I'm sure both did their best and in the end it just came down to the facts. I believe a key piece of the victory was merely in the fact that technically the complainant hadn't legally existed before 1999. Which is to say that if you plan to start a business you better register said business. And if you purchase a business or somehow transition one business into another, you better make sure you are preserving any TMs that are held.

One thing I found interesting was that the complainant opted for a three member panel... I thought that typically complainants would prefer a single member panel. Maybe not.

 

[jberryhill]

both of which I'm sure gave their all.

...and then some. This was Domain Attorney Cage Match II - Beyond the Thunderdome. No stone was left unturned on either side. Brett is extremely capable and did a very good job. The outcome of these things is up to the panel.

One thing I found interesting was that the complainant opted for a three member panel.

The decision fumbles a few of the facts here and there. They had more than 200 pages of material to work with, so that's not unusual.

 

[Name Trader]

Don't get me wrong. I wasn't saying that Brett wasn't capable. I was observing that JB had the knowledge to find the holes in the complainant's case. You wouldn't have wanted a lawyer not experienced in domains and trademarks as the respondent's lawyer in this case (or defending yourself).

 

[jberryhill]

Ah, I see. Yes, that was the problem with some of the earlier cases that Register.com had brought - none of the respondents seem to have noticed that since the TM was registered on a 2(f) basis, that Register.com is bound by the statements it made relative to the date at which it claims to have acquired distinctiveness.

Same thing happened in the two "cheaphotels" cases at NAF. The first guy didn't realize that the 2(f) registration itself sets a date before which the Complainant cannot argue distinctiveness.

What's odd is that in the supplement to the case, the complainant included as an exhibit, a posting of mine from a domain forum in which I was making this precise point.

 

[Dave_Z]

What's odd is that in the supplement to the case, the complainant included as an exhibit, a posting of mine from a domain forum in which I was making this precise point.

At least you know what to expect, unless you have anyway. :D

 

[AdoptableDomains]

Unfortunately it might take a court decision to deem the word register to be
descriptive for domain registration. Gotta love the language in Register.com's
USPTO registration, though.

If you really read it, it appears they aren't really claiming distinctiveness for domain registration, but for web hosting. I'm guessing they knew that was a losing battle given it' a generic word for registration.

Actually, as for the common law usage, I wouldn't even clearly recognize them as "Register" in conversation, but only as "Register Dot Com". You rarely see or hear the name without the "dot com" suffix. Godaddy, Enom, Dotster, and others seem distinctive enough without adding "dot com", but since it's so generic you almost always have to add "dot com" to "Register" to know exactly who you are referring to.

I'm a little surprised a reverse domain name hijacking claim wasn't asked for in this case. Even if unsuccessful, it's kind of a "scarlet letter" accusation on the losing claimant in future database searches. It might also make them play a little defense as well as offense. I think there's a fair chance it may have been awarded here.