WIPO - Generic names in peril as lawyers get aggressive

[mole]

I was moling around some WIPO cases and came across this one from Sep 2005 - bocaresorts.com lost to the lawyers?

This decision surprised me a little, I thought there may have been a case for the registrant/defendent. What it does suggest and set as a precedent is that even generic descriptors of generic subjects may be taken away from you

http://arbiter.wipo.int/domains/decisions/html/2005/d2005-0681.html

 

[gamehouse]

B. Respondent

Respondent argues that <bocaresorts.com> is a descriptive term and that Complainant has not proven trademark or service mark rights sufficient to preclude its use. Respondent contends there is no likelihood of confusion between <bocaresorts.com> and Complainant’s name and marks and that Complainant has not discharged its burden of proving identity or confusing similarity. Respondent further contends that it has legitimate rights and interests in <bocaresorts.com> because it is preparing a website for advertising services relating to coastal leisure. Finally, Respondent states that it did not register <bocaresorts.com> in bad faith because it believed the domain name to be descriptive of resorts in a resort city and that it had no predatory intent in registering the domain name.

What does surprise you? The respondent says that there is no confusion between bocaresorts.com (regged in 2002) and bocaresort.com (regged in 1995 and used a lot)

Does it make sense to you?

Perfectly alright with me.

 

[Dave_Z]

That and the decision for blacksingle.com give me the impression that even if
you've got a seemingly generic name, using them in a similar or related manner
to what the complaining party is doing can be used against you as well.

It's honestly all right with me as well as long as the "standards" are still met.
But the blacksingle.com decision was still questionable if you read it entirely.

 

[mole]

What does surprise you? The respondent says that there is no confusion between bocaresorts.com (regged in 2002) and bocaresort.com (regged in 1995 and used a lot)

So what took them 3 years to WIPO the domain? Is protecting first right of use and expanding IP influence on the web a growing objective as the Internet goes more mainstream?

 

[spikedo]

Better question, why did it take 3 years for the person who regged bocaresorts.com to realize that he needed a put up a website?