Trademarks aren't everything

[Name Trader]

Trademarks aren't everything. I just came across this case.. http://www.arb-forum.com/domains/decisions/430650.htm

This looks like a slam dunk case to me. But lest we forget. You need to prove all three legs to win a WIPO case...

1) Identical or confusingly similar
2) No rights or legitimate interests of the respondent
3) bad faith registration

I think this demonstrates clearly you need to use a lawyer well versed in domains and trademarks. I know lawyers don't respond with their tongue in their cheek, but sometimes it must be hard to keep it out I think where the complainant's lawyer fell down was not pointing to other WIPO cases against the respondent (I haven't checked but I'm sure they would have lost more than a few). Showing a pattern of behavior. Kudos to JB.

 

[labrocca]

Good read and not sure how you think that was a slam dunk. Meterman is a generic job term.

 

[WickedChess]

Yah! like labrocca said..Meterman.com is a very generic job term...

Name Admin (NAMedia) got a good lawyer John Berryhill out of PA!

thanks for the post!

 

[Ronald Regging]

I believe the politically correct term is meterperson.com, which is available to register

 

[Dave_Z]

Heh, if John's representing someone for a recent 3-letter dispute, it might be
even more shocking than this. :D

Just an "interesting" side note that the law firm the complainant used in that
UDRP runs their own registrar for some of their clients as well. Not that it will
matter any since this dispute's old and I'm sure they've done well for others
since then.

 

[Carlton]

With every passing year, TM holders and legitimate domain registrants are better clarifying the boundaries. TM's are limited in scope and application. Over-reaching and reverse hijacking will slow down when domain investors figure out they have rights and that TM holders can/do lose based on weak or groundless claims. We all have a vested interest in seeing cybersquatters get spanked. Cybersquatters opened the door to TM abuses, negative public perception, TM holder over-reaching, and gross misuse of UDRP.

I believe the pendulum is beginning to swing back the other way as domain owner rights are successfully defended.

 

[Name Trader]

Actually. I'm critical of the complainants lawyer. I think they probably could have done a better job in proving the no rights or legitimate interests of the respondent (where they failed). JB did a good job here. Imho, that was the difference between the parties and why the trademark owner lost (but could have won).

My point is, a good lawyer versed in domain and trademarks, trumps a trademark (argued poorly).

I prefer MeterMaids. Especially those from the Gold Coast

 

[gazzip]

You need to prove all three legs to win a WIPO case...

1) Identical or confusingly similar
2) No rights or legitimate interests of the respondent
3) bad faith registration
.

I was just reading a case from 2005 of a generic (place) domain taken off someone (in Hawaii) because he has'nt used it in years

"The Panel finds that Respondent has registered the <colchester.com> domain name in bad faith because Respondent has made no use of the domain name since it registered the domain name in 1999"

http://www.arb-forum.com/domains/decisions/588409.htm


...Hmm, so it appears as if its bad faith if you don't use it too !


.

 

[Dave_Z]

And that, unfortunately, places an additional burden on the registrant to try
to reply to any disputes of that nature.