In a three member WIPO decision the 42nd oldest domain name, Octopus.com was lost in a UDRP.
The domain name had a registration date of 1986 but was acquired by the domain holder in 2006.
The Complainant was brought by Octopustravel Group Limited of London.
Here is the relevant parts of the decision
“The Complainant is doing business as a retailer of hotel accommodation and related services throughout the world and has been trading under the name OctopusTravel since 1999.”
“Accommodation booked through the Complainant and its retailers covered more than 700,000 nights in 2010, and the Complainant’s global revenue amounted to $217.9 million in 2010 with marketing expenses in the amount of $4.8 million.”
“The Complainant provides its services on the Internet at “www.octopustravel.com”.
“The Complainant is the registered owner of numerous trademark registrations for “OCTOPUSTRAVEL”, inter alia International Registration No. 823144 OCTOPUSTRAVEL registered on November 24, 2003 (hereinafter referred to as the “OCTOPUSTRAVEL Mark”). The Complainant’s trademark covers services in international classes 39, 41, 42 and 43.”
The disputed domain name was first registered in 1986 and was acquired by the Respondent on June 9, 2006.
The disputed domain name has been used in connection with a website providing information on octopi and travel related advertising.”
“The first point to be dealt with is the identity of the Respondent.”
“The Complainant named a total number of ten Respondents all allegedly being related somehow to the disputed domain name, including Alexander Rosenblatt and Yana Belkova. ”
“According to the information in the concerned registrar’s WhoIs database, the disputed domain name is registered in the name of Mr. Alexander Rosenblatt only. As per the Respondent’s plausible contentions, Alexander Rosenblatt is an alias of Yana Belkova. Therefore, the Panel will treat Yana Belkova aka Alexander Rosenblatt as sole Respondent in this proceeding. The Complainant’s contentions regarding the relations of the other alleged Respondents to the disputed domain name are irrelevant.”
“The disputed domain name consists of the term “octopus”, which is included in the Complainant’s OCTOPUSTRAVEL Mark”
“The fact that the Complainant’s trademark contains an additional element, namely the word “travel”, does not hinder a finding of confusing similarity.”
“”Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent. ”
“Although the disputed domain name consists only of a generic term, the Respondent has not provided any persuasive evidence under paragraph 4(c) of the Policy for the following reasons:”
“The website available at the disputed domain name contains advertising links to the Complainant’s competitors (i.e., bookings.com). ”
“It is well established that there is no bona fide offering of goods and services where the use of the disputed domain name for such offering constitutes a trademark infringement.”
“Furthermore, the Respondent has not shown that she is commonly known by the disputed domain name or is making a legitimate noncommercial or fair use of the domain name.”
“In addition, the Respondent, having once worked for the Complainant, was obviously aware of the Complainant at the time when she purchased the disputed domain name and therefore registered the disputed domain name in bad faith. ”
“The mere registration of a generic word as a domain name will only be sufficient in and of itself to create a legitimate interest if the domain name is registered in good faith ”
“Panels have recognized that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name.”
“Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase).”
“Finally, the Panel is not satisfied that the website at the disputed domain name can seriously be considered as providing bona fide information on octopi; rather, it strikes the Panel as (at least) pretextual The generic use of “octopus” could well be plausible if for example combined with credible other supporting evidence, but even a superficial Google search reveals that the text about the cephalopod species that appears on the Respondent’s website appears wholly copied from other sites.”
“Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.”
“The Panel finds that the Respondent registered the disputed domain name in bad faith.”
“As noted above, the Respondent registered the disputed domain name in 2006, by virtue of an acquisition from a third party. It is well established that a transfer of a domain name to a third party amounts to a new registration under the Policy”
“The Respondent, a former employee of the Complainant, admitted that she was aware of the Complainant at the time when she purchased the disputed domain name.”
“In the absence of the Respondent having established rights or legitimate interests in the disputed domain name, her claims of having no intention to capitalize on likely confusion with the Complainant’s trademark lacks persuasiveness in the circumstances.”
“As to bad faith use, by using the disputed domain name in connection with a website offering advertising from the Complainant’s direct competitors, which constitutes an infringement of the Complainant’s right in its OCTOPUSTRAVEL Mark, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain. Such use and exploitation of trademarks to obtain commercial profit from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy.”
“Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met.”
“The Panel points out that, although the disputed domain name has been first registered back in 1986, the Complainant’s trademark registrations predate the Respondent’s acquisition of the disputed domain name by many years. Furthermore, although the disputed domain name may have a substantial value based on its generic meaning, this for itself is no basis to deny the Complaint. Even if a domain name is generic, there is always the possibility of a trademark infringement and the registrant of such domain name, especially one with such clear prior knowledge of a relevant rights holder’s trademark rights, has to be aware of this.”
So a generic domain gets taken in a UDRP from a trademark on a longer term that incorporates Octopus.
You would have to assume this domain was not a cheap acquisition in 2006 and the loss of the domain is a harsh penalty.
This stuff is total BS. “Octopus” is a generic dictionary word, and there are countless companies using it for branding reasons.
The UDRP process was not designed for this IMO. The recourse should be in actual court where common sense prevails and not in some kangaroo court (UDRP).
The whole process needs to be revamped. Right now it is a cheap lottery ticket to acquire a premium domain.
Brad
I also fail to see how the complainant could prove “No legitimate reason to own the domain”, as this is a generic keyword .COM
I hope a court steps in an blocks this ridiculous decision.
Brad
and of course if the URS gets adopted then the lottery ticket price goes down to $300
If someone owns a generic term, I really fail to understand how “No legitimate reason to own the domain” can be proven.
If you own Apple.net and there are TM related ads on there that is clearly an issue, however the name does also have a legitimate use.
Turning over property because of a questionable use is highly problematic IMO. Many of these uses are best determined by a court, not some panel with the right to seize property with no real due process.
UDRP was designed for obvious TM infringing names, not 25+ year old generic Keyword.com
Brad
Listen up people, whether you like it or not, we are living in a BS world.
Either you BS way thru or just suck it up.
My advice, BS your way thru like everyone in this BS world.
Nothing is common sense anymore.
“In addition, the Respondent, having once worked for the Complainant, was obviously aware of the Complainant at the time when she purchased the disputed domain name and therefore registered the disputed domain name in bad faith. ”
———
Even without the above info I saw this one coming a while back due to how it was being used, looks like a fair call to me 😉
Ex Employee buys the name and tries to capitalise on the traffic intended for Octopus travel….not a chance of winning that one.
respondent was a former employee of complainant.
that says it all.
otherwise there’s no way a domain registered in 1986 should fall to a trademark registered in 1999, assuming the domain registrant is smart.
but here we have someone presumed to be purchasing and using a domain name in a deliberately vengeful way. she knew there was a trademark… she used to work for the company. is that not bad faith? she probably paid a premium for the name precisely because she, as a former employee, knew the value of a certain octopus brand. these are presumptions she failed to rebut.
we’ve seen this type of domain use before between competitors in retail businesses, who know each other personally.
this is why the prposed URS is flawed. respondents need to be able to submit evidence, not just a short blurb. there are often surrounding circumstances that are relevant.
simply submitting evidence of a trademark listing reveals nothing about the respondent. one has to make presumptions to arrive at the conclusion of bad faith. and if there are presumptions then there should be a proper opportunity to rebut them.
Yeah, there’s more to this one than meets the eye.
The arbiters went through the same blah-blah’isms that they usually do, but I’m guessing the keystone of their decision was the smell of bad faith, given the history of the respondent with the complainant. Absent that acquisition, the domain probably wouldn’t have even registered on their radar and it would’ve been business as usual… but they made it too easy to take away.
There are still people out there in the world who don’t understand that you just can’t play the “leverage” game with a TM holder when you own an overlapping generic term… NewportNews.com, now this. We will probably see others try this maneuver, then cry in their soup when the name gets taken away.
“In addition, the Respondent, having once worked for the Complainant, was obviously aware of the Complainant at the time when she purchased the disputed domain name and therefore registered the disputed domain name in bad faith. ”
The problem with this fact is that the entire decision, essentially, hinges on it. Everything else cited is just ancillary.
But now we’re left with a horrible precedent, simply because it seems like the panel wanted to teach this guy a lesson.
Why Octopus for travel? I’m sure he had a bad faith to start with. If I have apple.net, I will probably start selling apple sauce or something related to apples before thinking about selling phones. He took the chance and lost at the end.
I am no lawyer but if they were selling octopus sushi they would not have lost the name. Having a generic name does not allow you to use it how you please. If you owned apple.com and sold apples you would not lose the name unless they panel considered the public use of the word “apple” to apply to computers which is still unlikely. On the other hand if you sold computers or music through apple.com it is obvious any panel would award the name to Apple computer.
Same situation with Octopus.com. Every generic word has trademarks attached to them. Just make sure you are not infringing on that mark and use of it. After 15 years of owning generic names we have not had this problem but anyone can through a UDRP at you and if you lose you can take it to an American court to overturn it like Barcelona.com did.
In case some of you have not noticed, nowadays the trend seems to be that the Panel looks at the case holistically as a whole.
And they will fit the reasons to the ruling
In this dispute, the Respondent didn’t habe a strong case in relation to plausible deniability
Some day, domainers will learn to play the same game as corporates by registering a TM of the keyword of their (valuable) domains, but in a different class of service from existing TM holders
Having a valid TM is a LEGAL FACT.
In the UDRP it guarantees the respondent passes the “legitimate rights or interests” element of the 3 required elements.
If not, more often than not, the Respondent is depending on the good graces of the Panel based seemingly on which side of the bed than got up from.
Ask FMA/Elequa re: Jackass.com vs Viacom
Hi,
And $%# does this mean:
“The mere registration of a generic word as a domain name will only be sufficient in and of itself to create a legitimate interest if the domain name is registered in good faith ”
____
Talk about ‘legalize’….I bet the lawyer that wrote it cannot even give you the same explanation of its meaning…3 times in a row.
And, I am quite sure….the explanation of the meaning of this has been argued in a 100 different ways to Sunday by different lawyers….depending on what domain name case, and what side they are on.
I cannot “invest” in property or a product by just the mere purchase of it? Its done every day in all sectors of our society…speculation in the value of an asset going up in value is not a ‘good faith’ reason to purchase something?
——
Bad faith & good faith….it almost 95% “BS”
Just like the word “Spam” as it relates to websites ~ Made up by a bunch of “SEO Experts”.
Website content is in the eye of the beholder…you do not like the content of my website…then do read it and do not index in your “SE”…quick fix.
I do understand, that there is a need for company’s to protect ‘blatant’ Trade Marks of their Intellectual property.
I have no problem with that…
BTW:
Are people now being asked by banks, wall-street or mortgage companies…if you bought that house we just had to foreclose on in “bad or good: faith?
Are people asking Goldman Saks and “Moody’s”…
Did you sell that bundle of mortgages in “good or bad” faith? …AFTER “Moody’s, puts a stamp of “AAA” on it.
When it fact,
Anyone, that has ever worked with ‘loan docs” for more than 3 months… would only have to look at 3-4 of the loan docs in any mortgage back “CDO” package of say 500+ loans in any given CDO they were selling…to tell that it was nothing but “DDD” at best! (CRAP)
Most: “FFF” ~ As We ALL painful know now…
“good or bad” faith? Moodys gives them a “AAA” so Goldman and others can sell them…pure and simple.
If they put a legitimate grade on them,…they would of all for the most part be graded a truthful…”DDD”
But, then who is going buy or invest something rated “DDD?
There is your “mortgage crisis’ in a nut shell…
I will leave out “Barney Franks” & Franklin Raines…to spare everyone the pain of reading any more of this part. 😉
____
I guess “MS” has the rights to “windows”, I am sure than can come up with sort of ‘bad faith’ issue…
I guess the famous author: “Dan Brown” has a good “bad faith” UDRP against “ME” as he is quite famous, and I own: danbrown .me
I am sure they can come up with some “bad faith” somewhere…or at the very least, cost me a lot of money defending my property, I bought with my own money.
Peace as always,
Dan
I don’t see anything wrong with the decision. The former employee was clearly targeting his or her former employer with the registration. When you try to skate that close to the thin line, there’s going to be instances where you go just that much too far. So trying to half-assedly say the site was half about octopi is about as persuasive as one would expect i.e. not at all. It sounds fishy because, well, it most likely is. If there’s any “bs” here, it’s in the respondent’s arguments. This doesn’t look to me like legitimate domaining that was unfairly invalidated by a lucky (or unlucky) UDRP panel.
What link do we have between TM OctopusTravel and Octopus? Does TM holder has the rights for O.com;Oc.com;Oct.com….? No. Doesn’t.
If TM owner “SexSomething” can take sex.com in this way?
I’m sure that there were some direct facts/evidences about using generic domain in bad faith.
Michael
So lets say I owned travel.com and had it parked and the results were for, well travel stuff, hotel, flights etc and along comes travelocity and says hey we have a TM on travelocity and your domain Travel.com incorporate our mark and you have a parked page that has results going us or say expedia.com one of our competitors then we should get the domain travel.com.
Now if say I used to work at travelocity and then went out and bought travel.com having seen how well travelocity does, then we have the identical situation we have here and my domain name travel.com domain goes travelocity in a UDRP
So when you faced with an inherently unfair system lets blame the system.
Don’t hate the player, hate the game
This is exactly like if the owner of the domain Name (www.DomainName.com ) Get the domain name (www.Domain.com ) it is mindboggling to say the least.
Michael, you are a lawyer, I am not but I believe the name was lost mainly because they were profiting from a name with a trademark that was being used in a way other then the dictionary definition of the generic word. I don’t believe the new owner had first rights use either.
We own Traveler.com and you would think we have a problem with either Conde Nast Traveler or National Geographic Traveler. They could “not” get their mark unless they included: Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE “TRAVELER” APART FROM THE MARK AS SHOWN.
Each has a magazine that clearly is titled Traveler. We also own Igloo.com. As long as we don’t sell coolers we are pretty much in the clear. We simply show that we are selling travel related winter season reservations on a mini-site. We’ve been advertising this way globally for over 10 years and there is also a statute of limitations that I believe gives us some leverage. We also make sure if we ever park a generic name there are restrictions on what the parking company can advertise. It would be a simple way to lose a great name. We also have public whois on our entire portfolio and develop a concept on our biggest names. This is our protection with lawyers on standby.
I think the new owners opened themselves up by straying from the generic definition. I hope they didn’t pay much for it. I don’t think they would have sold much octopus.
I agree with Michael (Castello) in that the travel ads on Octopus.com did indeed bring about questionable use of the name. I don’t think it’s a slam dunk case by any means, but if they bought it in 2006 well after the complainant’s trademark, they’re fairly well known, and the respondent has had travel ads up on it for little other reason than that’s probably what he found out people were looking for, then there’s the risk it can be seen as bad faith usage with respect to the complainant’s mark.
It would be nice if there was middle ground though…i.e. if they could instead force the respondent to remove any travel ads from the site or face seizure of the domain. It seems like an awful steep penalty when it may have been a case that he found out the traffic to it was looking for travel and went in that direction with the ads.
BS- that was deep. I think you could sell that as a form answer to any question.
@”MHB”
I am with you….
“Don’t hate the player, hate the game”
But,
In some cases you have to ‘hate the player’ ~ and in some, you just have to ‘hate the game’
And is others, you just might find the need to hate both! 😉
I really, do not like using the word ‘hate’… the only thing I really ‘hate’ in this world are:
Loud, annoying black crows ~ ‘waiting any any type of line’ and making real dumb decisions that at worse I have a 50-50 chance of being right, if I would just ‘flip a coin’…but somehow I am on the wrong side of the 50-50 decision… 10% of the time…. making my own decision… LOL
Better get the “coin out” and start flipping it 🙂
Have a great time in “Singapore”…
I thought you were off to “Barcelona”… I had misunderstood in another thread.
Lets hope no one gets sick from the ‘e-coli’ outbreak that just started in Spain…
Or domainners, are going have to start wearing the “white mask’s” to every domain conference now….They can just put their ‘name tags’ right on them…instead of their shirts.
I know, people got really sick a the Playboy Mansion…I am not making light of the people that got sick, as I know it was very bad for a lot of people & I would not wish that on anyone.
I was just trying to point out a little…I guess “irony” or bad timing….. that this is happening now in Spain.
Best to all!
Dan
good to see people referring to trademark classes.
string matching as a system of detecting infringement is never going to work. and that’s what’s being proposed in the URS. a partial or full match tells us nothing about what a user (a potential consumer) encounters if they type a certain domain name.
how can we make determinations on infringment and revoke domain registrations without looking at the websites these domain names point to? of course it matters what the registrant is doing with the domain. one doesn’t need to be a lawyer to ask: is there potential for consumer confusion? and if so, how is that being dealt with? what is the domain registrant doing?
that’s how we tell the difference between “good faith” and “bad faith”.
there is fair competition and then there is “unfair competition”. there is also non-competition. fish markets v travel agencies. local businesses in one country v local businesses in another.
there are many goods and services one could safely sell under the name octopus, besides octopus. and it’s probably not a famous mark.
there is ample room to operate!
but unfortunately domain names are not “shared” among different businesses the way the same word or phrase can be shared by different businesses as a trademark representing distinct classes of goods or services.
imagine if the user (consumer) was redirected to a different page based on their geolocation and some identifier that indicated what type of goods or services they were seeking?
a trademark registrant’s allegation of consumer confusion might be less speculative. potentially there could be some evidence we could examine.
Proper trademark enforcement would simply order the domain holder to stop using the domain in an infringing manner and award demonstrable damages plus costs of enforcement. There is no legitimate reason why OctopusTravel should have a right to the domain Octopus.com, the value of which is probably far higher than any damages they suffered.
The whole UDRP process is biased towards trademark holders and infringes on the rights of property owners.
I still feel there is some kind a very strong anti-trust argument here:
Suppose I hate Octopus Travel because they screwed me on some travel plans and I am not very Internet savvy so I just type in octopus followed by the brand of the Internet (.com) into the command line of my browser – and I end up with a business that offers comparable products and services – but might treat me better
If I am not able to do that – then the consumer is not protected and is getting railroaded against his will.
I feel the anti-trust argument will prevail in the end
@Adam,
You hit it hard on the head – Slam Dunk
Jon Schultz’ comment above gets to the heart of the problem with many UDRP decisions. When the only tool you have is a hammer, you tend to treat everything as a nail. Since there is no way to actually issue or enforce an injunction as to use of a domain name, then the UDRP puts pressure on the panelist to order transfer of a domain name, even when the problem is not the domain name but the way it is used.
As others have noted, the key line in the decision is:
““The Respondent, a former employee of the Complainant”
And so figuring there was some kind of shenanigans going on as a result of that relationship, the panelist figured the domain name was probably selected by the registrant on the basis of the prior employment.
Obviously this is all quasi-civil (whatever ‘authority’ UDRP has) and I’m just a dumb computer guy, not an attorney, but I do know that criminal forfeiture is very broad brush in taking pretty much anything used in furtherance of an offense.
If you sell drugs from your house, they will often times forfeit that house, even if there’s no evidence to demonstrate it was purchased with outright illicit (or commingled) funds.
So, lets say this (Octopus.com) does go to court: how much ideological fine-tooth-combing is expected in a civil action, when the basis for the entire complaint is deliberate misuse of the domain? The courts have ruled that domains are property and subject to conversion; if you’re intentionally using it to infringe on a mark, I’m struggling to see where “knock it off” is a more equitable solution, compared to taking it away and giving it to the impacted party.
This one might strike our ‘domainer nerve’ since Octopus.com is such an amazing domain name- no one would’ve cared two shits if it were octopus-travel.info in question- but if you hold up a bank with a finely engraved, gold embossed pistol that once belonged to the King of Siam, it’s still treated as an implement of a crime, no different than if you had used a $99 Saturday Night Special.
LS, you mention this is quasi-civil, then go on to point to procedures and remedies in criminal cases. Not a lawyer either, but the standards for coming to a decision are very different in criminal and civil cases. In other words, “a preponderance of evidence” would not be enough to “convict” the presumed infringer — the standard would be “clear and convincing evidence” or “beyond a reasonable doubt.” Entirely possible with such standards that no violation in this case could be proven. There needs to be some consistency, and as Jon points out, this is a case where the punishment does not fit the crime. Clearly, this is a major problem with the entire UDRP system, which at times can be very unfair and is certainly almost always stacked against the “little guy.”
Octopus.com was listed on Flippa.com 3 months ago so my guess they tried to get rid of it asap. Flippa ofcourse locked the listing because of the UDRP issue.
https://flippa.com/121800-octopus-com-registered-since-1986
BAD FAITH USE
A. former employee
B. had ADS on site of competitor
Case closed
BAD FAITH USE
When you own a generic, you better now have ads coming in you do no control. So proper development would have kept that name in the registrants portfolio. However, a serious ‘conflict’ exists, in that the post TM owner did in fact work for the TM owner, so the new registrant acquired the name post TM and BAD FAITH applies.
Good ruling actually, since this establishes a competitor of a company from taking control of something you create by acquiring a root keyword that is generic.
Opens up a whole new area of domain litigation.
Since lawyers are some of our clients, good to see lawyers making more money off of domains.
LOL
u better NOT have ads you do NOT control
seems my T key is sticky today
Years ago when I also thought I was smarter than the legal system some guy called me who was a former employee of Ancestral Quest – and they forgot to renew AncestralQuest.com so he left the company registered it in his own name and ran a comopeting website there – does not look as if it is live anymore.
Case was moved from Utah to Federal Court in Denver – the jury sided with the guy $250K in legal fees later. Maybe some attorney on this thread can find the case
Whether actual “bad faith use” or not, the punishment does not fit the crime. The legal remedy against bad faith use could be an injunction against such use. If after a cure period, the trademark infringement hadn’t been remedied, then the URL could be turned off. However, as with a home foreclosure, the domain should be auctioned off with the surplus proceeds being turned over to the previous owner. Clearly, any such sale would presuppose a legitimate use, so particularly for domain names with well-known marks, this could limit the potential buyers or value. Potential buyers could include other companies with registerred trademarks or interests in the domain name, including in categories other than the URDP complainant or a purchaser for non-commercial use, perhaps, for commentary, blog, gripe site, etc.
When it comes to an instance like Octopus.com, where the name itself is not infringing, but the use is (if one agrees with the WIPO decision), there is obviously much more latitude to create a website which in no way infringes on the complainant’s mark. I believe octopus.com was at some point used for a search engine and there are many legitimate uses one could imagine for this excellent domain name.
Confiscating the domain name should not happen until there has been a request to cure and after a reasonable time period to do so. Turning over the domain name to the complainant is neither fair nor logical. In fact, before the URDP process, there should be a step of mandatory arbitration when the domain owner has a chance to address a complainant’s concerns, and the results of this arbitration could then become a part of the URDP. So, for example, after a complaint, if a domain owner agreed to change use so that any purported trademark infringement would cease, and a complainant refused to settle, the URDP panel could take this into account in rendering their decision. Unwillingness to settle on the part of a complainant could be considered in determining whether the complainant was engaging in reverse name hijacking or simply being unreasonable.
Such a procedure would help create a dispute resolution system which is both fairer and more logical.
Wayne, my post was pretty clear and not that hard to follow along with.
Drifting off onto a polemic about the difference between a civil and criminal case isn’t relevant to what I said, seeing as I was pretty clear to make that distinction myself.
You’re basically saying that if someone employs a really, really good domain to deliberately infringe on a trademark, it’s ‘unfair’ to apply the standard remedy employed by WIPO and the courts alike-that remedy being conversion- because the domain has generic properties and might have value in other uses? You’re certainly entitled to have that as an opinion, but it’s a self-serving one and I doubt you’d find many people to agree with you, who aren’t domain name speculators.
I’m not a lawyer, but I’ve certainly paid enough of them and one doesn’t need to be a lawyer to understand the principles behind converting ownership of a domain- from infringer to infringed- when a very deliberate TM maneuver is in question.
The lesson here is that it’s probably a very bad idea to buy expensive domain names and use them to tickle the interests of an overlapping mark holder. The hail mary of “OK, well, Judge, if you just overlook it this one time, I’ll stop and use it for something else…” doesn’t appear to have much traction.
Some day soon, in a case like much this, an attorney representing a mark holder will get a brain and start pursing damages calculated in terms of lost client value, rather than “click value” or “advertising costs”. When that happens, you will see mark infringers getting their faces ripped off in civil suits, even after the name has been converted.
@ LS Morgan
“Some day soon, in a case like much this, an attorney representing a mark holder will get a brain and start pursing damages calculated in terms of lost client value, rather than “click value” or “advertising costs”. When that happens, you will see mark infringers getting their faces ripped off in civil suits, even after the name has been converted.”
____
Already, under the: ” Lanham Act”….You can be sued in “Federal Court” and if a judgement for a domain Trade Mark Infringement is found against you, you can be fined up to 100K per domain name(s), and 3x the revenue you earned with each domain name(s)
Not only that, they can go after the “previous owner” of the domain, and If a similar….case / judgement can be made against them…they are also subject to the same fines etc…
http://en.wikipedia.org/wiki/Lanham_Act
“MS” has done it many times in the past and continues to do so, just to name one…( they have been doing this since at least 2006)
If I am in anyway NOT correct on any of my facts in this post… Mr. John Berryhill, can correct me 🙂
Best as always,
Dan
trademark attorneys themselves have stated they believe through their experience that their colleagues and clients see the UDRP as a “treasure”.
lawyers representing domainers state the UDRP is heavily skewed toward favouring trademark holders.
what would the objective third party say? much of what happens in these UDRP cases simply would not fly in the courts. trademark holders use the UDRP far more than the courts. maybe lower costs and shorter turnaround are not the reasons?
the people developing these policies at ICANN probably lack even a basic legal understanding of legal remedies. not that they would be expected to have one. but after all this time still no one has put them on the right track, or maybe they have been shown the correct way but just deliberately choose to ignore it. the evidence of that is the proposed URS.
they are being simultaneously advised and lobbied by lawyers with either an interest in the domain registration business or an interest in the trademark industry.
so even if this is a no-brainer from a legal perspective, something like the URS (an even more unreasonable version of the UDRP) can actually be discussed. one can only conclude, even after 20 yrs, there are still no disinterested, reasonable people overseeing these “policy-making” processes. people who have the courage to tell the lawyers to stand down when their principles are being violated. that’s assuming they have any principles to begin with.
if all these UDRP cases on generic names that we discuss went before active judges, would the trademark holders win most of the time? collect all the published decisions on generic domain names and decide for yourself.
LS,
If you made the distinction between civil and criminal cases, please be consistent in application of standards. You use the example of someone who uses a rare, expensive pistol in committing a crime, who then must forfeit the pistol. It’s not an apt analogy. If you’re going to apply such stringent penalties, then at least use the higher standard to prove bad faith or infringement. Or, alternately, reduce the penalty, by allowing the respondent to cure.
As for trademark abuse, as was pointed out, there are remedies for trading upon someone else’s mark. If damages can be proven, then there is also likely liability (however, legitimate non-commercial uses, like a gripe-site, that may damage a mark would obviously not be subject to civil liability).
If you own a piece of real estate and utilize that property in violation of a municipal code, you will be given a chance to correct the violation. Your property will not be seized unless you don’t cure. And even then, you will receive the proceeds from any forced sale (minus costs to remedy the violation). This isn’t a “Hail Mary,” it’s standard procedure for these kinds of violations.
Similarly, someone who owns a clothing store called “Zarah,” once legitimate mark holder Zara forces them to stop trading under the clearly confusing name “Zarah,” does not forfeit the store, merchandise or store equipment. They are forced to correct the infraction and, where applicable, pay damages. This is what would be reasonable in most domain disputes.
In the case of octopus.com, it is clear there are many potential non-infringing uses of the domain. The domain owner should be forced to pay any provable damages, and cure the infraction. Forfeiting the domain to the complainant is excessive.
Well, how exactly can you collect if the registrant is outside the complainant’s state, much more in another part of the globe?
Dave,
Same problem applies to non-domain related infractions. If you own a trademark and someone is trading on your name outside of your own state, how do you enforce? There are ways and procedures. The point is there shouldn’t be one set of rules for the internet and a different set of rules for everything else. In most cases, curing the infraction should be the ultimate goal. I wouldn’t have a problem if repeated infractions led to a domain being taken away, but awarding the domain to the complainant generally doesn’t make much sense, especially for generic domain names.
If someone uses a website to illegally pirate movies, then that individual is subject to both penalties and damages. In certain cases, the service provider may even shut down the website. But domain confiscation isn’t used to remedy the supposed damages. In many cases, simply getting the offender to stop their actions is the main goal of enforcement.
MHB the analogy to travel.com
In that situation you have a generic being used in the class of goods it describes.
Octopus does not equate to travel and as such for the owner to use in in that class is worrysome, and then when u add the ex employee bit this was a slam dunk loser case.
I believe you could own travel.com and compete with travelocity provided you sold travel related services even if you were an ex employee