Auda current proceedings PetInsurance.com.au

[DomainNames]

http://www.auda.org.au/audrp/current-proceedings/ Note that petinsurance.com.au is listed in these proceedings?

12/03/11 LEADR-auDRP03/11 petinsurance.com.au

http://www.dntrade.com.au/petinsurance-com-au-dropping-tomorrow-t2358.html

Hopefully the current registrant owner will not need to waste their valuable time and money defending their rights to keep what seems to be a legitimate current eligibility. They invested $16,223 for it at the netfleet auction .

Will be interesting reading to see the decision later at what rights where claimed and by who against the current owner.

Hope the current owner wins and its a pity you cant claim costs back against the losing complainant in Australia like you can in canada under some circumstances

 

[FirstPageResults]

Not good. Wonder if it is the previous registrant trying to get it back..

 

[Timmy]

Why would these people have originally let it drop? The onus has gotta land somewhere - why should it land on the new owner who caught it fair and square?

Snooze you lose in my opinion.

Tim.

 

[snoopy]

Looks like they are trying to register a mark as well. Too generic to be worthy of protection.

http://pericles.ipaustralia.gov.au/...sp=D&p_detail=DETAILED&p_rec_no=9&p_rec_all=9

 

[DomainNames]

Looks like they are trying to register a mark as well. Too generic to be worthy of protection.

http://pericles.ipaustralia.gov.au/...sp=D&p_detail=DETAILED&p_rec_no=9&p_rec_all=9

I think thats the new owner doing the new trademark application.

 

[snoopy]

I think thats the new owner doing the new trademark application.

Yes I see, sounds an unusual strategy.

 

[DomainNames]

well bothering to apply for a trademark will prove they feel they have legitimate rights and have registered the name in good faith. They would not have needed to do it but as clearly spending $16233 and having an active website would have enabled them to qualify for ownership of the EXPIRED and thus available dropped name.

http://www.auda.org.au/policies/auda-2010-01/

I dont think the new owner has anything to worry about. This will be a clear case for an "intelligent" Panelist to rule on that the complaint is denied and new registrant keeps the name.

The system however needs to stop complaints getting so far in the system where rightful owners have to go to expense and time in defending their rights against wrongful complaints

Once against good luck to the current registrant in defending their rights and ownership

 

[snoopy]

I dont think the new owner has anything to worry about. This will be a clear case for an "intelligent" Panelist to rule on that the complaint is denied and new registrant keeps the name.

Yes I'd imagine it would be an easy win. Just find the approach a bit strange if they are going to argue that the name is generic.

 

[Lemon]

Looks like they are trying to register a mark as well. Too generic to be worthy of protection.

http://pericles.ipaustralia.gov.au/...sp=D&p_detail=DETAILED&p_rec_no=9&p_rec_all=9

Absolute waste of money. There is no way a trademark for the word pet insurance would be accepted. Looks desperate to me and could affect the result of the complaint.

 

[snoopy]

Absolute waste of money. There is no way a trademark for the word pet insurance would be accepted. Looks desperate to me and could affect the result of the complaint.

Not sure, it has been filed by a law firm so maybe there is a particular strategy, something is wrong if a name like this is protectable though.

 

[DomainNames]

well the trademark can get accepted easily actually. If Realestate.com.au can get approved anything can. It depends how its filed and under what categories and limitations.

The lawyers who filled in know their stuff and are members on this forum actually!

 

[johno69]

Absolute waste of money. There is no way a trademark for the word pet insurance would be accepted. Looks desperate to me and could affect the result of the complaint.

If you can trademark the word "Find" in relation to internet & search directories.. I think anything may have a chance.

Find = registered and protected.

 

[Ash]

It's not a trademark application for Pet Insurance - it's an application for petinsurance.com.au. I've worked for companies where they have trademarked very generic sayings but have used something like a graphic to make it unique and been successful, so it's the context of the application.

 

[Lemon]

Find = registered and protected.

Cant FIND this.

Lemon

 

[Lemon]

well the trademark can get accepted easily actually. If Realestate.com.au can get approved anything can. It depends how its filed and under what categories and limitations.

The lawyers who filled in know their stuff and are members on this forum actually!

Firstly there is NO trademark for the WORD realestate.com.au they have trademarked the logo.

Secondly if the lawyers know their stuff they should know the difference when applying for a trademark. I think they have made a boo boo.

Lemon

 

[johno69]

Cant FIND this.

Trade Mark : 1211190

 

[snoopy]

well the trademark can get accepted easily actually. If Realestate.com.au can get approved anything can. It depends how its filed and under what categories and limitations.

The lawyers who filled in know their stuff and are members on this forum actually!

I think it makes more sense if the site is widely known, not that I necessarily agree with them getting a mark but realestate.com.au is stronger case than petinsurance.com.au which isn't in business right now. A trademark is supposed to distinguish goods and services of one trader over another, the purpose of registering a mark isn't for people to try and defend domain name disputes.

On one hand we've got the situation of someone trying to register a mark to protect a domain, but if this was a company registering a mark to try and claim a domain there would be a song and dance about trademark abuse.

If petinsurance.com.au is considered not generic and worthy of legal protection then that is problematic in my view.

Example: if the mark is granted and the owner eventually let this name drop again in say 5 years is it ok to launch a dispute to get it back, given that situation it is a trademarked term and not generic?

 

[Ash]

If petinsurance.com.au is considered not generic and worthy of legal protection then that is problematic in my view.

In my view, petinsurance.com.au is not generic because it can only be registered by one entity at a time.

The term pet insurance however is generic - just because there is a petinsurance.com.au domain does not and should not mean I cannot register another domain that also includes that generic term with some other descriptor.

I'm sure that same logic would apply to realestate.com.au - I believe you would be within your rights to register snoopysrealestate.com.au but if you attempted to pass off your business as realestate.com.au by registering a typo domain for example than that would be a breach of their tm by attempting to leverage their established reputation.

Example: if the mark is granted and the owner eventually let this name drop again in say 5 years is it ok to launch a dispute to get it back, given that situation it is a trademarked term and not generic?

I agree with you - this would be very problematic. I think that a trademark application for a domain name based on a generic term should only be accepted when accompanied by a logo or some other graphic treatment to distinguish it from just being about the generic terminology. The domain itself should not be protected by tm and remain free to be registered by another owner so long as they do not use a similar logo and be seen to be attempting to pass themselves off as the original entity.

 

[Lemon]

In my view, petinsurance.com.au is not generic because it can only be registered by one entity at a time.

Its my understanding that when assessing TMs they ignore the domain suffix and thus would treat the word as generic.

Lemon

 

[Billy01]

UK Law

10 years ago a very very large print publisher tried to trade mark the words "London Property Guide" the title of their biggest selling book by author Seagrave.

They Lost and out of interest the Book no longer survived the digital revolution.

If some one now wants petinsurance.com.au back after it was won at auction (tough titties)