Problem with accentuated generics?

[Pete]

What happens when you register the correctly accentuated version of an established generic ascii site?

For example, arrivee.com (arrival in french) has a flight reservation site.
In time, the grammatically correct arrivée.com will most likely get a good part of the "mispelled" ascii traffic.

There is no trademark infrigement, but couldn't it be argued that your new IDN is unduly profitting from the older ascii site's traffic/reputation, as people make a natural switch over time?

This problem only exists in the latin script and I tend to avoid those situations, but I'd like to know people think . There will be a few irate ascii owner when IDN takes off.

[Fka200]

I think they should've been smart and register it themselves. It is a generic domain, and you have no intention of taking their users away from them.

[Explorer]

What happens when you register the correctly accentuated version of an established generic ascii site?

For example, arrivee.com (arrival in french) has a flight reservation site.
In time, the grammatically correct arrivée.com will most likely get a good part of the "mispelled" ascii traffic.

There is no trademark infrigement, but couldn't it be argued that your new IDN is unduly profitting from the older ascii site's traffic/reputation, as people make a natural switch over time?

This problem only exists in the latin script and I tend to avoid those situations, but I'd like to know people think . There will be a few irate ascii owner when IDN takes off.

You mean why there is some website based on ASCII typo based on a generic IDN domain? :-)

[touchring]

What happens when you register the correctly accentuated version of an established generic ascii site?

For example, arrivee.com (arrival in french) has a flight reservation site.
In time, the grammatically correct arrivée.com will most likely get a good part of the "mispelled" ascii traffic.

There is no trademark infrigement, but couldn't it be argued that your new IDN is unduly profitting from the older ascii site's traffic/reputation, as people make a natural switch over time?

This problem only exists in the latin script and I tend to avoid those situations, but I'd like to know people think . There will be a few irate ascii owner when IDN takes off.


Make sure your IDN displays generic information related to the dictionary word.

Does arrival = flight reservation??

I think displaying flight reservation site for arrivée.com might be risky if arrivee.com does flight reservation.

But if your domain is réservation.com, i think you can display hotel, flight, tour reservation and no one can sue you.

[DavyBUK]

It will be interesting to see how the first few WIPO's on this type of situation go to establish some kind of precedent for the decisions....Not that the panellists can be relied upon to follow whichever way of course....

[jose]

You mean why there is some website based on ASCII typo based on a generic IDN domain? :-)

That's exactly what I think!

I have some on that situation and I found out when, out of nowhere, I started to get traffic. LOTs of it. Arrivee is an easy decision, but how about some two words domains? It starts to get tricky. On the ascii websites who started AFTER I registered my IDN, I am ok, but how about all the others?

[Drewbert]

>But if your domain is réservation.com, i think you can display hotel, flight, tour
>reservation and no one can sue you.

You can be sued for anything. Whether they'll suceed is the important part.

[L@@K]

Same here, for me on some french domains

Accent isn't a (trademark) distinctive sign ?

Touchring, with your téléchargement, what do you think ?

[dabsi]

always check under icimarques.com

As orientation: someone had to pay a fine of 15.000 € for méridien.com which is also 'generic'

But they are some grey zones; like bien-être (wellness) which is also a perfume under copyright protection, but we keep as we have an excellent lawyer.

They are a lot of free generic french IDN which still free, but too dangerous to register.

Ciao

[touchring]

always check under icimarques.com

As orientation: someone had to pay a fine of 15.000 € for méridien.com which is also 'generic'

But they are some grey zones; like bien-être (wellness) which is also a perfume under copyright protection, but we keep as we have an excellent lawyer.

They are a lot of free generic french IDN which still free, but too dangerous to register.

Ciao


If you got perfumes on your bien-être site, you are asking for trouble. If you got articles like the following on your site, you're fine:

Le bien-être est un concept qui touche à la santé, au plaisir, à la réalisation de soi, à l'harmonie avec soi et les autres. René Dubos présente la santé comme la convergence des notions d'autonomie et de bien-être. L'utilitarisme définit le bien-être comme la combinaison de plaisirs et de l'absence de peine, et prône la maximisation du bien-être général. L'égoïsme est la maximisation du bien-être personnel.

The good thing about adsense is you can block sites, first thing i block are similar ascii sites in both gtld and ctld.

Parking on other hand is very dangerous.

What you do to the name is more important than the trademark itself. If you got a name like McDonalds, but you incorporate a company that does funeral services, and put up a McDonalds Funeral Homes website, there is nothing the junk food McDonald can do.

[Drewbert]

Dabsi, you need to give more specifics of the case.

http://domaine.blogspot.com/2007/03/revente-de-noms-de-domaine-aux-enchres.html

It appears the person was attempting to sell hotel-meridien.fr, méridien.com, lemeridien.in AND lemeridien.co.in

If it was just méridien.com, and it was going to a PPC page, and there was no attempt to sell, the outcome may have been different.

[Pete]

The méridien.com case actually started as méridien.fr, registered by an IDNer living in France. The .fr extension isn't legislated by the same rules as .com, so a French guy can sue another French guy and get 15k plus all of his other domains, including méridien.com.
Not so with .com, which instituted the wipo/usrp panels in order to avoid the lenghty trials of a few years ago.

As for trademark, you CAN trademark some generics, but unlike made up words like Google or Ipod, you have to define your area of activity. the Hood brand is a good example.

A word like téléchargement.com (download) is a good example of the worries I have. What else are you going to advertise under such a name besides downloading? No TM infrigement for sure, but I would't be surprised if wipo panellists take into account the precedance of the established telechargement.com (if it exists).

Icann probably thought of grandfathering those types of names to existing ascii owner, but judged it too complex.

[dabsi]

Problem is you need to leave parking and go for projects: it will take years for us to put all the generic IDNs under adsense.....
or do you thing it is worth to change.

Ciao

[tgtbtu2]

always check under icimarques.com

As orientation: someone had to pay a fine of 15.000 € for méridien.com which is also 'generic'

Ciao
I have a hard time to believe it. A link to the story, if you can? Generic is generic. Even trademarks have limitations. You can be sued, of course, but it does not mean that you will automatically lose. If there was a case like that, something else must have been involved.

[Fka200]

Just wondering: What's the best place to trademark a generic?

I assume you can trademark the generic as long as it is with extension. Anyone thinking of TMing one of their websites?

[Pete]

"I have a hard time to believe it. A link to the story, if you can? Generic is generic. Even trademarks have limitations. You can be sued, of course, but it does not mean that you will automatically lose. If there was a case like that, something else must have been involved."

French laws are not the same as North America.
The case details were exposed for one month on SEDO.fr, who was forced to do so and pay 25k I think (they were part of the attempted transactions).

The French even managed to have Google.fr post a similar case result on it google.fr front page for two weeks!!

As for TMing a name or generic with the extension, it is specifically not allowed under US tm rules.

[dabsi]

I have a hard time to believe it. A link to the story, if you can? Generic is generic. Even trademarks have limitations. You can be sued, of course, but it does not mean that you will automatically lose. If there was a case like that, something else must have been involved.

You should read some court decisions in France an will learn that it can be very costly: afp.info (for agence france presse).

In reading the archived files, you would certainly give this business.
Believe it or not

of course if you are outside Europe , no problem.

Nevertheless, we'll keep www.secrétaire.com
DABSI

[touchring]

A word like téléchargement.com (download) is a good example of the worries I have. What else are you going to advertise under such a name besides downloading? No TM infrigement for sure, but I would't be surprised if wipo panellists take into account the precedance of the established telechargement.com (if it exists).


A few issues:

1. The .com regulators actually don't care about the ascii - i've gone through one so i know.

2. What they want to know is whether you are infringing on another trademark (implicit or explicit). This means even if they don't own the ascii domain, if you use their trademark and confusing with their company, you're in trouble.


Some protective measures i use:

1). Do not park!

2). Do not have ads. If you must have ads, use adsense and block similar sites or trademarked site bearing the same name, ctld or gtld. Make sure the ads are only for the generic topic.

e.g. if you own Apple.com, Apple computer ads is not acceptable. Ads on how to grow apples is fine.

3). Register a company bearing the same name, and place the WHOIS under that company.

4). Create a real website - thousands of pages. Write press releases on your website, and get them published on blogs and news sites.

5). Register a trademark in your domain name


I've done 1 to 3, now working on 4, maybe 5 also, later.

[Pete]

A few issues:

1. The .com regulators actually don't care about the ascii - i've gone through one so i know.

2. What they want to know is whether you are infringing on another trademark (implicit or explicit). This means even if they don't own the ascii domain, if you use their trademark and confusing with their company, you're in trouble.


Some protective measures i use:

1). Do not park!

2). Do not have ads. If you must have ads, use adsense and block similar sites or trademarked site bearing the same name, ctld or gtld. Make sure the ads are only for the generic topic.

e.g. if you own Apple.com, Apple computer ads is not acceptable. Ads on how to grow apples is fine.

3). Register a company bearing the same name, and place the WHOIS under that company.

4). Create a real website - thousands of pages. Write press releases on your website, and get them published on blogs and news sites.

5). Register a trademark in your domain name


I've done 1 to 3, now working on 4, maybe 5 also, later.

Wise advice, althought difficult for domainers with thousands of names.

I just visited your téléchargement.com and the ascii version. You both have real sites dealing with downloading (the ascii even has a blimp with it's name on it!).
Did you get any hassle from them? Are they even aware your site exists?

[tgtbtu2]

You should read some court decisions in France an will learn that it can be very costly: afp.info (for agence france presse).

In reading the archived files, you would certainly give this business.
Believe it or not

of course if you are outside Europe , no problem.

Nevertheless, we'll keep www.secrétaire.com
DABSI
Yes, US laws are quite different, true. This would never fly in US.
Besides, WIPO decisions are not final. You must be prepared to go to court, stay WIPO decision and fight it in a local court. That's what I'd do in US. Generics are not protectable in US and even trademarks are only for a certain class of goods (and US courts have reversed the lower courts decisions granting the transfer as well on the grounds that foreign trademarks are not protectable in US if they are not registered in US as well). Given that US (and EU) laws are "common law", it's important to research legal cases. You need to be prepared to fight in court if you think you are within your right. One thing for sure- stay away from famous trademarks-it's a waste of money.
Agree with the need to develop a site, though...

[touchring]

Wise advice, althought difficult for domainers with thousands of names.


Just pull them off from parking. Show a wikipedia page of that generic instead.

[L@@K]

For info, Sedo paid 95.000€, not 25.000€ for méridien...
and ex-owner 15.000€ if I remember well.
And this is a true story

Best french case for me is sociétés.com, owned by Dabsi and societes.com which is the place where you check for french trademark ! :o

So, I think Dabsi is very interested by these pbm.
Have you got some news frolm them or others.
Can you be more explicit about french lawyers, etc...

I thought trademark the Punycode version (xn--) ...

Regards

[Pete]

Just pull them off from parking. Show a wikipedia page of that generic instead.

Wipo panelists usually contend that parking generic word domains and living off the ppc or putting them up for resale is an acceptable business model, and does not constitute cybersquatting.

But if you do like you suggest and park a lot of your generic idns with no ads and no sign of resale, couldn't it be interpreted as showing you are afraid the venture is probably objectionable?

Personally, I'd like to see a few cases go to arbitration and see the results.
Maybe if enough of us get S&D letters with these types of situations we could create some kind of informal lobby to push for acceptance. I know domaining isn't a team sport, but I have a feeling some of the new rules with get written in the coming months.

[touchring]

Wipo panelists usually contend that parking generic word domains and living off the ppc or putting them up for resale is an acceptable business model, and does not constitute cybersquatting.


If you got a 10k lawyer to argue for you, anything is possible. Rick even got away with that elepahant.com where he displayed ads related to elepahant insurance. I don't believe i can pass thry this.

For us, we better go by Google moto - Do no evil.

Remove parking, and you improve your rights by a factor of 2.

Create a real website and company behind that website, even if the complainant is prepared to spend 1000k to get back his name, it will be futile.

[tgtbtu2]

Wipo panelists usually contend that parking generic word domains and living off the ppc or putting them up for resale is an acceptable business model, and does not constitute cybersquatting.

But if you do like you suggest and park a lot of your generic idns with no ads and no sign of resale, couldn't it be interpreted as showing you are afraid the venture is probably objectionable?

Personally, I'd like to see a few cases go to arbitration and see the results.
Maybe if enough of us get S&D letters with these types of situations we could create some kind of informal lobby to push for acceptance. I know domaining isn't a team sport, but I have a feeling some of the new rules with get written in the coming months.

I can help with generics and trademark concerns in US- I have been researching this for a few years and been through one litigation-which I won. PM me, if you have a specific concern.

If you got a 10k lawyer to argue for you, anything is possible. Rick even got away with that elepahant.com where he displayed ads related to elepahant insurance. I don't believe i can pass thry this.

For us, we better go by Google moto - Do no evil.

Parking itself shows ill intent (unless you got a 10k lawyer to argue that it is not).
In my case, I was representing myself, so my expences run into few hundreds and claimants into 60-70 thousands in the period of almost a year and a half. I won but that was difficult, though, I must admit, it required a lot of research and knowledge and going to court- but it will be easier next time if it comes.

[touchring]

I've been doing research in this area, here's some articles i found:

http://www.depiction.net/articles/protectingdomainnames.php

I think the Ad screen capture idea is quite good. Best, do it on printads. :)

[Pete]

If you got a 10k lawyer to argue for you, anything is possible. Rick even got away with that elepahant.com where he displayed ads related to elepahant insurance. I don't believe i can pass thry this.

For us, we better go by Google moto - Do no evil.

Remove parking, and you improve your rights by a factor of 2.

Create a real website and company behind that website, even if the complainant is prepared to spend 1000k to get back his name, it will be futile.

I agree with you about creating a real website on choice words. But then why do domainers purchase hundred or thousands of names that they can't possibly build, and only hope to resell of use ppc?

Most of the accentuated latins I have have ascii equivalent with parked pages, and I've done this on purpose to avoid trouble in the absense of clear cut precedents, but I'm not ready to state that registering an IDN with a corresponding ascii site is a sin per se.
All those generics with e- or i- in front of them are not that different than the same generic with an accent on top instead.

The web is changing.

[tgtbtu2]

The problem(kind of catch-22) with register "intend to use" is that:
from USPTO ste:
"Before the USPTO will register a mark that is based upon a bona fide intention to use the mark in commerce, the owner must:

use the mark in commerce; and
file an Allegation of Use. "

Now, if you are using in commerce, it may be easier to sue you because US law define use as "use in commerce", according to Latham Act.
So, this is not a cut and dry case.

""Now, if you are using in commerce, it may be easier to sue you because US law define use as "use in commerce", according to Latham Act.
So, this is not a cut and dry case.""
By suing you, I of course don't imply that the suit will have any merit-It could be likely just totally frivolous and just an opportunity to bully you .

[Explorer]

I agree with you about creating a real website on choice words. But then why do domainers purchase hundred or thousands of names that they can't possibly build, and only hope to resell of use ppc?

Most of the accentuated latins I have have ascii equivalent with parked pages, and I've done this on purpose to avoid trouble in the absense of clear cut precedents, but I'm not ready to state that registering an IDN with a corresponding ascii site is a sin per se.
All those generics with e- or i- in front of them are not that different than the same generic with an accent on top instead.

The web is changing.

If you got a generic latin IDN word and you have/intend to build a website around it, your WIPO hijacking risk is minimal. Or you could demonstrate that your business is buying/registering generic IDN domains and monetizing them through parking, without singling out any one of them.

Don't let legal uncertainty today scare you away from benefiting tomorrow. You don't want to be thinking in 5 years "I could have regged that generic IDN back then, but was afraid of the WIPO".

[dabsi]

Thanks all for your advise,

last question: any idea how to put 100 premium IDN on projetcs; any templates available; any tricky but legal IDN SEO conform metatags?

Thanks

Dabsi

[touchring]

wasn't there an embarkment or embark.com? whatever it is called. why such a difficult name?

[Rubber Duck]

All those generics with e- or i- in front of them are not that different than the same generic with an accent on top instead.

The web is changing.

Absolutely wrong. I only know of one establishment ASCII who lives under the complete delusion that put e or i in front a generic term does anything other than create a non-generic brandable. If it is not in the dictionary then the chances are it not generic. Even combos of generics are not likely to be considered generic unlike they go together like Peaches and Cream.

Accented dictionary words are generic. Non-accented words can only be truly generic if that is how they appear in the dictionary.

Actually trademark registration in the West has in itself very little weight, it just reduces the onus of proof.

If you put in a World Wide registration but cannot in court demonstrate to their satisfaction that you have ever traded or used the mark, then the registration might be worthless. If on the other hand somebody else has been using that Mark for generations but never registered it, that does not diminish their rights provided they can show the necessary documented evidence to substantiate their claim.

The time and money that some of you seem to investing in protecting trademarks at this point seems ludicrous to me. You would be better off investing that money in more IDN and spreading your risk further.

Edwin had a challenge the other day that was unjustified but he gave in to pressure. Why? Well mainly because he has a couple of thousand other domains in the vaults. I am guessing that if that was his only valuable asset, he would not have been inclined to give up so easily.


The problem(kind of catch-22) with register "intend to use" is that:
from USPTO ste:
"Before the USPTO will register a mark that is based upon a bona fide intention to use the mark in commerce, the owner must:

use the mark in commerce; and
file an Allegation of Use. "

Now, if you are using in commerce, it may be easier to sue you because US law define use as "use in commerce", according to Latham Act.
So, this is not a cut and dry case.

""Now, if you are using in commerce, it may be easier to sue you because US law define use as "use in commerce", according to Latham Act.
So, this is not a cut and dry case.""
By suing you, I of course don't imply that the suit will have any merit-It could be likely just totally frivolous and just an opportunity to bully you .

[touchring]

The best defense is to develop every generic domain, pull them from parking, and ensuring the content is 100% generic.

If you use Adsense, block the ascii - this also applies for some japanese names - case when the ascii guy likes the kanji and puts it up as a symbol on the homepage, declares as his commerce in use trademark.

[Rubber Duck]

Or you could just build castles in the sky.

My advice is to focus on the legal situation.

First ensure you know where your legal jurisdiction is. Basically, the US is likely to be a lot better from the domainer's perspective than most places. If you have dot coms registered in the USA, generally things are going to be a lot more straight forward.

In the US, you cannot Trademark a generic dot com. I cannot therefore see how simply parking a generic dot com domain can break Trademark Rules. The legal position on how the US recognises terms from other scripts is uncertain, but I would be very surprised if they were able to treat them differently from Trademarks as English text.

Look at three Wipo Criteria. Those trying to take your domain have to satisfy all three. These are:

i) the domain name is identical to the trademark or service mark for which the claimant holds rights, or is similar enough to create confusion;

ii) the defendant has no rights or legitimate interest regarding the domain name (for example a legitimate offer of services or products under the same name);

iii) the domain name has been registered or used in bad faith.

More info here:

http://www.sosdomaines.com/index.php?service_id=11

If you are still confused get yourself booked in here:

http://www.wipo.int/amc/en/events/workshops/2007/domainname/index.html

The best defense is to develop every generic domain, pull them from parking, and ensuring the content is 100% generic.

If you use Adsense, block the ascii - this also applies for some japanese names - case when the ascii guy likes the kanji and puts it up as a symbol on the homepage, declares as his commerce in use trademark.

[tgtbtu2]

[QUOTE=Rubber Duck]

Actually trademark registration in the West has in itself very little weight, it just reduces the onus of proof.

If you put in a World Wide registration but cannot in court demonstrate to their satisfaction that you have ever traded or used the mark, then the registration might be worthless. If on the other hand somebody else has been using that Mark for generations but never registered it, that does not diminish their rights provided they can show the necessary documented evidence to substantiate their claim.
QUOTE]
Actually, that's not always correct-trademarks are a very complex area of Law and one certainly needs it to do business. As to "using for generation.....etc" as implied protection I am sure you've heard the sad story of "Yellow Pages" in US.

[Rubber Duck]

What I do know is that if a Trademark can be shown to be Generised after it is registered, then it becomes legally worthless. That is one of the reasons that they are so fiercely defended. If you Trademark becomes such a common word that it ends up in the dictionary you have a real problem. If the word started off in the dictionary then your Trademark is a complete joke, except where it is used in a completely arbitrary way, like Apple. However, even then generic domains cannot simply be claimed because you have a Trademark.

There are two separate things going on here. Once is rights over the domains, the other is rights over the trademarks. The first is settled under UDRP, where the name can be transferred but no damages claimed. The second is civil court proceedings, which carry more weight and for which substantial damages can be awarded.


[QUOTE=Rubber Duck]

Actually trademark registration in the West has in itself very little weight, it just reduces the onus of proof.

If you put in a World Wide registration but cannot in court demonstrate to their satisfaction that you have ever traded or used the mark, then the registration might be worthless. If on the other hand somebody else has been using that Mark for generations but never registered it, that does not diminish their rights provided they can show the necessary documented evidence to substantiate their claim.
QUOTE]
Actually, that's not always correct-trademarks are a very complex area of Law. As to "using for generation.....etc" may be out of curiosity you could read about "Yellow Pages" in US.

[brianluedke]

I have applied for a U.S. trademark for Sénégal.com

Just wondering: What's the best place to trademark a generic?

I assume you can trademark the generic as long as it is with extension. Anyone thinking of TMing one of their websites?

[Rubber Duck]

I have applied for a U.S. trademark for Sénégal.com

Well then you have wasted your money because the answer to FKA200's earlier question is NO.


http://www.sosdomaines.com/index.php?service_id=11

V. Generic Refusals

If a mark is composed of a generic term(s) for applicant’s goods or services and a TLD, the examining attorney must refuse registration on the ground that the mark is generic and the TLD has no trademark significance. See TMEP §1209.01(b)(12) regarding marks comprised in part of "1-800" or other telephone numbers. Marks comprised of generic terms combined with TLDs are not eligible for registration on the Supplemental Register, or on the Principal Register under Trademark Act §2(f), 15 U.S.C. §1052(f). This applies to trademarks, service marks, collective marks and certification marks.


Example: TURKEY.COM for frozen turkeys is unregistrable on either the
Principal or Supplemental Register.

Example: BANK.COM for banking services is unregistrable on either the
Principal or Supplemental Register.


The examining attorney generally should not issue a refusal in an application for registration on the Principal Register on the ground that a mark is a generic name for the goods or services unless the applicant asserts that the mark has acquired distinctiveness under §2(f) of the Trademark Act, 15 U.S.C. §1052(f). Absent such a claim, the examining attorney should issue a refusal on the ground that the mark is merely descriptive of the goods or services under §2(e)(1), and provide an advisory statement that the matter sought to be registered appears to be a generic name for the goods or services. TMEP §1209.02.

[brianluedke]

Maybe you're right. We'll see in the coming months.

Well then you have wasted your money because the answer to FKA200's earlier question is NO.


http://www.sosdomaines.com/index.php?service_id=11

V. Generic Refusals

If a mark is composed of a generic term(s) for applicant’s goods or services and a TLD, the examining attorney must refuse registration on the ground that the mark is generic and the TLD has no trademark significance. See TMEP §1209.01(b)(12) regarding marks comprised in part of "1-800" or other telephone numbers. Marks comprised of generic terms combined with TLDs are not eligible for registration on the Supplemental Register, or on the Principal Register under Trademark Act §2(f), 15 U.S.C. §1052(f). This applies to trademarks, service marks, collective marks and certification marks.


Example: TURKEY.COM for frozen turkeys is unregistrable on either the
Principal or Supplemental Register.

Example: BANK.COM for banking services is unregistrable on either the
Principal or Supplemental Register.


The examining attorney generally should not issue a refusal in an application for registration on the Principal Register on the ground that a mark is a generic name for the goods or services unless the applicant asserts that the mark has acquired distinctiveness under §2(f) of the Trademark Act, 15 U.S.C. §1052(f). Absent such a claim, the examining attorney should issue a refusal on the ground that the mark is merely descriptive of the goods or services under §2(e)(1), and provide an advisory statement that the matter sought to be registered appears to be a generic name for the goods or services. TMEP §1209.02.

In any case, the U.S. gov't did accept SouthAfrica.com as a TM, as well as SouthAfrica.net

Well then you have wasted your money because the answer to FKA200's earlier question is NO.


http://www.sosdomaines.com/index.php?service_id=11

V. Generic Refusals

If a mark is composed of a generic term(s) for applicant’s goods or services and a TLD, the examining attorney must refuse registration on the ground that the mark is generic and the TLD has no trademark significance. See TMEP §1209.01(b)(12) regarding marks comprised in part of "1-800" or other telephone numbers. Marks comprised of generic terms combined with TLDs are not eligible for registration on the Supplemental Register, or on the Principal Register under Trademark Act §2(f), 15 U.S.C. §1052(f). This applies to trademarks, service marks, collective marks and certification marks.


Example: TURKEY.COM for frozen turkeys is unregistrable on either the
Principal or Supplemental Register.

Example: BANK.COM for banking services is unregistrable on either the
Principal or Supplemental Register.


The examining attorney generally should not issue a refusal in an application for registration on the Principal Register on the ground that a mark is a generic name for the goods or services unless the applicant asserts that the mark has acquired distinctiveness under §2(f) of the Trademark Act, 15 U.S.C. §1052(f). Absent such a claim, the examining attorney should issue a refusal on the ground that the mark is merely descriptive of the goods or services under §2(e)(1), and provide an advisory statement that the matter sought to be registered appears to be a generic name for the goods or services. TMEP §1209.02.

[Rubber Duck]

Maybe I will be unless the US authorities, decide to make a specific exception for such a renown domain speculator despite it being in clear breach of their own written guidelines. Of course there is also the possibility that some interested third parties might object. Can anyone think of anyone that might not be too happy about this?

Please all of you. Find out how to use Google. Do some basic research. And for goodness sake stop giving advice until you have the foggiest idea what you are talking about.

Further information specific to Geographic:


VI. Marks Containing Geographical Matter

The examining attorney should examine marks containing geographic matter in the same manner that any mark containing geographic matter is examined. See generally TMEP §§1210.05 and 1210.06. Depending on the manner in which it is used on or in connection with the goods or services, a proposed domain name mark containing a geographic term may be primarily geographically descriptive under §2(e)(2) of the Trademark Act, 15 U.S.C. §1052(e)(2), or primarily geographically deceptively misdescriptive under §2(e)(3) of the Trademark Act, 15 U.S.C. §1052(e)(3), and/or merely descriptive or deceptively misdescriptive under §2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1).

Geographic matter may be merely descriptive of services provided on the Internet

When a geographic term is used as a mark for services that are provided on the Internet, sometimes the geographic term describes the subject of the service rather than the geographic origin of the service. Usually this occurs when the mark is composed of a geographic term that describes the subject matter of information services (e.g., NEW ORLEANS.COM for "providing vacation planning information about New Orleans, Louisiana by means of the global computer network"). In these cases, the examining attorney should refuse registration under Trademark Act §2(e)(1) because the mark is merely descriptive of the services.

[tgtbtu2]

Look at three Wipo Criteria. Those trying to take your domain have to satisfy all three. These are:

i) the domain name is identical to the trademark or service mark for which the claimant holds rights, or is similar enough to create confusion;

ii) the defendant has no rights or legitimate interest regarding the domain name (for example a legitimate offer of services or products under the same name);

iii) the domain name has been registered or used in bad faith.
]

WIPO arbitrators have been extremely liberal in applying these rules. The DDR system have been criticized a lot for a reason. In many instances they have "ruled" that mere registration is "use". Recall barcelona.com case? They appear to be thinking they can read minds and more often than decency permits, they appear to be engaged and not impartial. I have more trust in US legal system.
So, my advice-when in doubt, don't just sing "God save The Queen" and hope for the best. Be prepared, don't park and work on developing your domain.

[Rubber Duck]

WIPO arbitrators have been extremely liberal in applying these rules. The DDR system have been criticized a lot for a reason. In many instances they have "ruled" that mere registration is "use". Recall barcelona.com case? They appear to be thinking they can read minds and more often than decency permits, they appear to be engaged and not impartial. I have more trust in US legal system.
So, my advice-when in doubt, don't just sing "God save The Queen" and hope for the best. Be prepared, don't park and work on developing your domain.

If the domain name is truly generic then registering in bad faith is impossible to prove, so every case should fall apart.

If a Wipo decision goes against the plaintive then they can be done for reverse hijacking, which can be quite lucrative for the defendant.

You always have recourse to the civil courts.

These are th

These are penalties that may be imposed in the Civil Courts in the US:

Question: What civil and criminal liabilities may be imposed for trademark infringement?

Answer: Under federal law (Lanham Act Section 32), an infringer shall be liable in a civil action by the registrant for certain remedies provided in the Act.

One such remedy is an injunction, where a court orders a person who was found to violate the Act to stop its infringing activities.

A trademark owner/registrant may also be able to obtain lost profits or damages against a defendant in a civil action only if the acts were committed with knowledge that such imitation was intended to be used to cause confusion, mistake, or to deceive. The trademark owner can recover (1) the domain holder's profits from use of the mark, (2) the trademark owner's damages resulting from harm to the value of mark, and (3) court costs as "actual damages." In determining the award to be paid, the court can choose to award up to three times the amount of actual damages. Instead of having to prove the amount of "actual" damages suffered as above, the mark owner can instead request payment of "statutory damages" from $1000 and $100,000 per domain name.

Attorney fees may be awarded in exceptional circumstances, such as when there was a willful and malicious violation.

The court can order the cancellation or transfer of a domain registration.

In the case of a willful violation of Lanham Act section 43, a court may order that all labels, signs, prints, packages, wrappers, receptacles, and advertisements in the possession of a defendant bearing the registered trademark shall be delivered up and destroyed.

http://www.chillingeffects.org/documenting/notice.cgi?NoticeID=127&print=yes#FAQID11846

[tgtbtu2]

A trademark owner/registrant may also be able to obtain lost profits or damages against a defendant in a civil action only if the acts were committed with knowledge that such imitation was intended to be used to cause confusion, mistake, or to deceive. The trademark owner can recover (1) the domain holder's profits from use of the mark, (2) the trademark owner's damages resulting from harm to the value of mark, and (3) court costs as "actual damages." In determining the award to be paid, the court can choose to award up to three times the amount of actual damages. Instead of having to prove the amount of "actual" damages suffered as above, the mark owner can instead request payment of "statutory damages" from $1000 and $100,000 per domain name.



http://www.chillingeffects.org/documenting/notice.cgi?NoticeID=127&print=yes#FAQID11846


That's my point- the "use" is defined in Latham act as "use in commerce" if I am reading it right. As to WIPO, they appear to define "use" according to which leg they put first on the floor that very morning.
Had I have time, I'd be interested to do some research on UNDPR cases like Barcelona.com, Crew.com and countless others which seem to be completely lacking any reasonable explanation- meaning the decisions of the particular arbitrators. See, if one is an idiot, simply by the law of probability 50% of his/her decisions would be correct. So, we are not so wary of idiots here but of people with agenda.
This is why civil courts are the way to go. But the best strategy, of course, would be not to have to go to court at all.

[Rubber Duck]

Well actually from what I can see you can do both.

You let them run the gauntlet of UDRP. If they want three experts and you are happy to settle for one, then the full $4K cost is theirs, win or lose. UDRP cannot award costs from what I can see.

You then have the right to throw it straight back into the courts to get the thing blocked, and presumably sue for reverse hijacking. Not clear on the damages you would get for this but I think they must be in line with the Triple and Statutory damages mentioned earlier.


That's my point- the "use" is defined in Latham act as "use in commerce" if I am reading it right. As to WIPO, they appear to define "use" according to which leg they put first on the floor that very morning.
Had I have time, I'd be interested to do some research on UNDPR cases like Barcelona.com, Crew.com and countless others which seem to be completely lacking any reasonable explanation- meaning the decisions of the particular arbitrators. See, if one is an idiot, simply by the law of probability 50% of his/her decisions would be correct. So, we are not so wary of idiots here but of people with agenda.
This is why civil courts are the way to go. But the best strategy, of course, would be not to have to go to court at all.

[touchring]

U guys can debate until the cows come home, but reality is, with a parking page, u're caught red handed.

You're being viewed as a squatter by the panelists, and you have to prove that you are not one.

So you hire a $10k lawyer to proof you are not. You can self console yourself that the $1500 or $2000 you made in parking last year can subsidize part of that expense!

:)

[Rubber Duck]

U guys can debate until the cows come home, but reality is, with a parking page, u're caught red handed.

You're being viewed as a squatter by the panelists, and you have to prove that you are not one.

So you hire a $10k lawyer to proof you are not. You can self console yourself that the $1500 or $2000 you made in parking last year can subsidize part of that expense!

:)

And an Adsense honey pot is going to change everything in their eyes, is it?

You must be cracked in the head if you think that is going to change anything.

[touchring]

And an Adsense honey pot is going to change everything in their eyes, is it?

You must be cracked in the head if you think that is going to change anything.


Which site today doesn't come adsense? Of cos, you must have content, and there are hundred and one ways to generate lots of content. Add in "about us", "our company" - put your 1000 word CV up there, "how to advertise", "our partners", and hey, you got a business on the web.

[Rubber Duck]

Which site today doesn't come adsense?

Not that any of this has anything to do with the criteria. But there is no rational distinction between your mini-sites and a parking page. The content is much the same and so is the purpose. The panellists may be completely stupid, but even they are not likely to be influenced by that one.

Just do us all a favour. Stick up your hand and admit you don't have a clue what you are rambling on about.

[touchring]

Tough to explain, well, unless you're in the web business. Meantime, if you don't know what to do, there's a quick way, just put up a "under construction" banner. Btw, this also applies to japanese and chinese sites with ascii equivalent.

[Rubber Duck]

Tough to explain, well, unless you're in the web business. Meantime, if you don't know what to do, there's a quick way, just put up a "under construction" banner.

You need specialist help, but it is not a webmaster you need to see!

[touchring]

If you got a generic latin IDN word and you have/intend to build a website around it, your WIPO hijacking risk is minimal. Or you could demonstrate that your business is buying/registering generic IDN domains and monetizing them through parking, without singling out any one of them.

Don't let legal uncertainty today scare you away from benefiting tomorrow. You don't want to be thinking in 5 years "I could have regged that generic IDN back then, but was afraid of the WIPO".



I agree with the first - that's the key point the lawyers for most respondents try to establish - even if they were caught red handed parking, they come out with biz plans, evidence of developments and what nots. Some got away with it, some lost, depending on how anti-squatter the panalist is.

The second point, i read about cases from adam and rick (these guys can't hide their domain biz), but they are mostly represented by celebrity lawyers on DNF, so i'm not so sure if that applies to us. And yes, in most cases, they win.

In face of such ambiguity, i'm thinking of doing this:

1). Consider removing the most important names from parking (latins with similar ascii, japanese names where they use the idn symbol on their site, city and country names - in case the govts want them). Setup a temporary adsense minisite if you call it. Then start to find or engage a freelancer to work on a real site - screen capture proofs of such activities - this will show proof of development.

2). Move all "difficult" names (as edwin calls them) to another entity or whois.

3). Move good names out of problematic registrars - enom, godaddy. Anyone can suggest a domainer friendly registrar? How about moving the name to a local (non-American) registrar? Any thoughts on this? Use privacy?

Looking forward to constructive comments.

[brianluedke]

You didn't explain why SouthAfrica.com and SouthAfrica.net are both registered trademarks.

Maybe I will be unless the US authorities, decide to make a specific exception for such a renown domain speculator despite it being in clear breach of their own written guidelines. Of course there is also the possibility that some interested third parties might object. Can anyone think of anyone that might not be too happy about this?

Please all of you. Find out how to use Google. Do some basic research. And for goodness sake stop giving advice until you have the foggiest idea what you are talking about.

Further information specific to Geographic:


VI. Marks Containing Geographical Matter

The examining attorney should examine marks containing geographic matter in the same manner that any mark containing geographic matter is examined. See generally TMEP §§1210.05 and 1210.06. Depending on the manner in which it is used on or in connection with the goods or services, a proposed domain name mark containing a geographic term may be primarily geographically descriptive under §2(e)(2) of the Trademark Act, 15 U.S.C. §1052(e)(2), or primarily geographically deceptively misdescriptive under §2(e)(3) of the Trademark Act, 15 U.S.C. §1052(e)(3), and/or merely descriptive or deceptively misdescriptive under §2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1).

Geographic matter may be merely descriptive of services provided on the Internet

When a geographic term is used as a mark for services that are provided on the Internet, sometimes the geographic term describes the subject of the service rather than the geographic origin of the service. Usually this occurs when the mark is composed of a geographic term that describes the subject matter of information services (e.g., NEW ORLEANS.COM for "providing vacation planning information about New Orleans, Louisiana by means of the global computer network"). In these cases, the examining attorney should refuse registration under Trademark Act §2(e)(1) because the mark is merely descriptive of the services.

barcelona.com has basically been repudiated by subsequent decisions. I haven't seen a case like that since. It was a hell of a scare, though.

WIPO arbitrators have been extremely liberal in applying these rules. The DDR system have been criticized a lot for a reason. In many instances they have "ruled" that mere registration is "use". Recall barcelona.com case? They appear to be thinking they can read minds and more often than decency permits, they appear to be engaged and not impartial. I have more trust in US legal system.
So, my advice-when in doubt, don't just sing "God save The Queen" and hope for the best. Be prepared, don't park and work on developing your domain.

[Rubber Duck]

No idea, but you can effectively trademark anything in an Arbitrary Category, that is one where the name means nothing. This was done extensively for dot EU to get around their ludicrous set of rules. Means jack shit in terms of claims on registered domains. The dot EU thing was about allocation procedures not WIPO dispute procedures. Big difference.

Frankly I am not really bothered about UDRP. They can come after me all they will. The more they do, the more the rest of my names will increase in value, win or lose.

[brianluedke]

Looks like SouthAfrica.com was registered under "business advertising". I admit that there appear to be some countryname.com's that appear to have been rejected.

Word Mark SOUTHAFRICA.COM
Goods and Services IC 035. US 100 101 102. G & S: Business advertising, namely, placing advertisements and promotional displays of another party on a portion of the services provider's Internet web site rented by that other party. FIRST USE: 19961031. FIRST USE IN COMMERCE: 19961031
Mark Drawing Code (1) TYPED DRAWING
Design Search Code
Serial Number 75918378
Filing Date February 11, 2000
Current Filing Basis 1A
Original Filing Basis 1A
Supplemental Register Date October 10, 2001
Registration Number 2568579
Registration Date May 7, 2002
Owner (REGISTRANT) VIRTUAL COUNTRIES, lNC. CORPORATION WASHINGTON 3213 West Wheeler Street, No. 149 SEATTLE WASHINGTON 98199
Attorney of Record David L. Tingey
Type of Mark SERVICE MARK
Register SUPPLEMENTAL
Live/Dead Indicator LIVE

-----------

Here is the info on my registration:

Word Mark SÉNÉGAL.COM XN--SNGAL-BSAB.COM
Goods and Services IC 039. US 100 105. G & S: Providing a website that features information on beach tourism. FIRST USE: 20030731. FIRST USE IN COMMERCE: 20050523
Standard Characters Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK
Design Search Code
Serial Number 77093046
Filing Date January 28, 2007
Current Filing Basis 1A
Original Filing Basis 1A
Owner (APPLICANT) Brian Scott Luedke INDIVIDUAL UNITED STATES Apartment 5 33 Park Street #5 Malden MASSACHUSETTS 02148
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE

[Rubber Duck]

What you have to understand is that Trade Marks in the US do not confer additional legal status, they just remove much of the onus of proof that you require to defend your Trademark. If, however, those being accused of infringement can show that the name has fallen in to commercial disuse, or has been genericized then that registration will have no weight in law. TM registration is not a silver bullet. It is simply a record in a directory.