Another WIPO win for domainer

[neddy]

This is another good trademark case that was won by the Respondent (domainer).

An online friend highlighted this case on another forum.

http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2011-0721

It shows that just because you have a domain name that may contain a trademarked word or words, you don't automatically lose it if you get challenged.

"A number of UDRP panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant at least in circumstances indicating that the respondent was not aware or reasonably should not have been aware of the complainant’s rights in the mark. ..."

"where a respondent registers a domain name consisting of “dictionary” terms because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest".

"But the domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark".

"The Policy was not intended to permit a party who elects to register or use a common term or terms as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner."

That last bit that I bolded is important though - if you try and pass yourself off as the trademark owner, you are stuffed (and so you should be imho)!

Having highlighted this case, there are many other cases where panelists have gone the other way! It is a moveable feast.

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[DomainNames]

Hope the Australian Panelists read it and learn something

 

[techmo]

That last bit that I bolded is important though - if you try and pass yourself off as the trademark owner, you are stuffed (and so you should be imho)!
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What would be construed as a domainer passing him or herself off as the trademark owner?

 

[techmo]

Bumpity

 

[joe]

What would be construed as a domainer passing him or herself off as the trademark owner?

From wikipedia:

Passing off is a common law tort which can be used to enforce unregistered trademark rights. The tort of passing off protects the goodwill of a trader from a misrepresentation that causes damage to goodwill.

The law of passing off prevents one person from misrepresenting his or her goods or services as being the goods and services of the claimant, and also prevents one person from holding out his or her goods or services as having some association or connection with the plaintiff when this is not true.

http://en.wikipedia.org/wiki/Passing_off

In relation to domaining, say you registered a similar name to an existing trademark or caught one a business let expire, and then you misrepresent yourself as being/having an affiliation with that business, that would be "passing off".

The case against aussiesoapsupply.com.au is a good example of passing off: http://www.auda.org.au/pdf/LEADR-auDRP1022.pdf

In that case, the respondent went right out of their way to piggy back off the brand of the complainant, and knowingly mislead customers who thought they were contacting the complainant's business.

Whereas the case the OP refers to, ticketsnetwork.com.au were not pretending to be the complainant, they were just doing their own thing.