There has been a lot of discussion going on in the domainer community regarding whether a domain can violate a trademark including the extension or the right of the dot.
Recently this issue was brought up in relation to the auction for E.CO.
The domain is question Guestlist.me and the trademark in question is “Guestlist me”
The domain was not parked, matter of fact it was not in use.
The panel said:
“””Generally the top level directory indicator, such as “.com”, may be disregarded in the determination of confusing similarity, but there can be circumstances in which it should not be disregarded. See, e.g., project.me GmbH v. Alan Lin, WIPO Case No. DME2009-0008. Paragraph 4(a)(i) of the Policy requires only that the “…domain name is identical or confusingly similar to a trademark…”
“The entire disputed domain name, including the Montenegro ccTLD “.me”, is to all intents and purposes identical to the Complainant’s trademark GUESTLIST ME””
“”The disputed domain name does not appear to have been put to any actual use on the Internet as a website or email address. It has long been established that generally the non-use of a domain name for Internet purposes does not preclude a finding of bad faith use”
Of course as we know WIPO decision tend to be all over the place but its still one of the few decision that has dealt with this issue and therefore should be reviewed by anyone with these type of domains.
Now this will open a whole new can of worms. How many accidental TM’s are/have/will be regged, with no ill intent other than – ‘I’ll build that site out, when I get finished with my others’. And this could entail ‘any’ extension. So, according to this ‘logic’, I guess if someone owned say ‘Broad.com’ (or similiar), and it was parked or not, than their (WIPO) rational of – “is to all intents and purposes identical to the Complainant’s trademark”, could justify a TM owner’s claim to it!??!
Yikes..
Hello Mike – I can’t recall the exact domain “hack” that opened the can of worms as far as TM’s are concerned, but it was another one (not Guestlist.me)
Regardless, in the case of e.co the obvious question I had was whether it’d be prudent for all “eco” trademark holders – and there are many – to be invited in a private auction or at least, to be notified to participate in the auction.
In my opinion, whoever buys e.co should already hold an “eco” related tm already in order to avoid surprises – and a loss of investment.
I wrote about the Lin case a few months ago and feared that it might get picked up by other panelists. Trademark lawyers have to now look to the right of the dot when conducting trademark clearances and domainers who are not hacks please be careful out there. If you are going to purchase a domain name for big bucks it’s worth it to spend a little money to have a trademark lawyer conduct a comprehensive trademark search which looks at international databases before suffering the consequences.
I just noticed that ‘project.me’ was the case study and it’s been mentioned by Mike.
So yes, domain hacks are potential tm bombs: some examples would be, i.bm, in.tel, etc.
The question is how would this be expanded to apply to older TLDs such as com/net/org for example if I have a tm for “inter Net” would I be getting “inter.net” on top of the more obvious “internet.com” ?
Acro
The Project.me case however was won by the domain holder.
http://www.thedomains.com/2009/11/13/attempted-domain-theft-by-trademark-fails-in-wipo-project-me/
Yes, Lin is the most recent case, Acro. There was one other decision where a single panelist did the same thing with looking to the right of the dot but that was years ago. I would think that where there are creative lawyers there are ways to go after domainers with .coms and .nets. Certainly, .info and .us could also be targets.
Isn’t “eco” generic? It’s short or an anachronym for economy or ecology. If it were a dot “bay” extension, it would smack of infringement, because eBay is unique, not generic. Amazon is generic, so lots of companies use “Amazon” in the name. There is only one Amazon.com, tho. Also, there is really only one GoDaddy. Noone may register that name, and Go Daddy is fierce about keeping it exclusive, tho, technically, “go daddy” may not be a trademark-able expression . . .
What about my diet site, LoseWith dot me? It’s going to be trademark . . . The fools who own LoseWithMe dot com better stay away . . .
If there is any consistence in WIPO’s decisions, this domain will stay with the current owner. http://name.ly/!b$ML
Just read the case. In this particular case it was not about the domain name, but very bad faith of an employee.
When will the stealing domains industry leave the domain industry alone?!
TM lawyers are just gayfish. They need to stop eating all the fishsticks. I mean we are obviously the hottest industry, they all want a piece of my cod.
Folks, at its most fundamental level, trademark law is not really that complicated. It is not a set of mechanical rules about letters and dots – it is simply about consumer perception.
If “broad.com” were being used for, say, a pornographic website based on the use of that odious term “broad” as a reference to women, that would be one set of facts.
If “broad.com” were being used for a website selling ripoffs or competitive goods to those sold by Broadcom, that would be another set of facts.
Is it really that hard to understand that those two sets of facts would generate different results? Really?
This type of “dot spanning” approach goes a much longer way back than this decision, or even a decision a few months ago. The tenth UDRP case ever filed was a claim brought by an outfit called Sixnet against a pair of domains which included “six.net”. That was ten years ago, people.
In the situation involving “e.co”, it would be one set of facts if the domain name were used in connection with the common understanding of the prefix “eco”. see, e.g., Prisma Presse v. Bill Connelly, WIPO Case No. DBIZ2002-00175 (“geo.biz” for use by geologist found to be generic use against claim of GEO magazine publisher).
It would be quite another set of facts if the domain name were used in connection with a website ripping off E! Networks entertainment news programming, or a fraudulent “homepage” of author Umberto Eco.
A trademark right resides in the mental association that consumers make between the mark and a set of goods and services. An exception to that principle concerns “famous marks”. For example, if you are selling “Coca-Cola” cigarettes, you are not going to last long, even though Coca-Cola does not sell cigarettes. The letter “E” is not exclusively and famously associated with any one entity, nor is the prefix “eco”.
I will leave one as an exercise for the readers….
Let’s take “I love” in Spanish. The verb is “amar” and the first person present tense conjugation is “amo”.
Now, in the United States, “Amoco” is a well-known chain of gasoline retailers.
So, if someone registered the domain name “Amo.co”, do you think the results would be different for use of that domain name for:
(a) a website about love
or
(b) a website about gasoline
This is not rocket science, folks.
John B has spoken!