Does "parking" accrue IP rights ?.

[domaingenius]

I have often thought that the way to go is to accrue IP rights and go on the offensive rather than sitting and waiting for trademark holders to take potshots at whatever domain they fancy. I wonder what others think about parking of domains and whether it accrues IP rights, as I contend it does ?. In fact I am presently testing that in an opposition to a trademark application by a large company ,for which the domain has been used for 18 months or so.
IP can be worth more than the domain itself, that is my point.

Any ideas or knowledge of this being pleaded before ?.

DG

[cyberlaw]

What do you mean by "go on the offensive?" You mean by holding the domain name and using it for purposes unrelated to the trademark holder's?

[DNQuest.com]

Traditionally, parking a domain does not accrue rights to teh domain. There are many WIPOs where parking has been known to hurt the domain owner. To create rights, you to to offer bona fide goods/services in relation to teh domain name.

[domaingenius]

What do you mean by "go on the offensive?" You mean by holding the domain name and using it for purposes unrelated to the trademark holder's?

I mean that rather than sit and wait for someone to get a trademark for the same name as my domains as soon as I seen that they have applied then I issue an objection to that application (subject to various parameters)

DG

Traditionally, parking a domain does not accrue rights to teh domain. There are many WIPOs where parking has been known to hurt the domain owner. To create rights, you to to offer bona fide goods/services in relation to teh domain name.

You say "to create rights you have to offer bona fide good/services in relation to the domain name" . That is what I am kinda saying, parking IS a bona fide goods/services as it is offering advertising of various goods and services. Just because it is called "parking" does not IMHO detract from the use being made. I will shortly see whether such parking will ground a claim, but I cannot think that the use of a domain name for holding other peoples adverts does NOT generate some IP rights for you as the owner of the domains, why should it not ?.
Trademark law does NOT say "anyone parking a domain name does not have rights". Also the Trademark Office excludes the TLD from the equation ,so that if you had say "London.com" you have built up rights in "London" as well as London.com

DG

[LizzeyDripping]

Er, right, so are you saying that, say, in the case of london.com, England is going to have to find a new name for their capital city because you bought a domain name?! I think you have misunderstood trade mark/domain name law here!

[DNQuest.com]

That is what I am kinda saying, parking IS a bona fide goods/services as it is offering advertising of various goods and services.

Fine, that is your opinion. But for me, I will go by what has been ruled in the past with parking and TMs from panelists who actually decide WIPO cases.

[Dave Zan]

That is what I am kinda saying, parking IS a bona fide goods/services as it is offering advertising of various goods and services.

Until it eventually shows ads for competing products of a trademark the domain
name happens to match, maybe.

[cyberlaw]

That is what I am kinda saying, parking IS a bona fide goods/services as it is offering advertising of various goods and services.

Well, as others have stated, that is a policy opinion, that, unfortunately for you, is not shared by statutes and trademark law that govern domains.

You did mention making objections to any trademark applications that might be filed contrary to your interests. That is well within your rights, and may be worthwhile if you can state a sound opposition as to certain marks.

Eric
http://www.cyberlawonline.com

[domaingenius]

Well, as others have stated, that is a policy opinion, that, unfortunately for you, is not shared by statutes and trademark law that govern domains.

You did mention making objections to any trademark applications that might be filed contrary to your interests. That is well within your rights, and may be worthwhile if you can state a sound opposition as to certain marks.

Eric
http://www.cyberlawonline.com

Lets say for example someone files an application to register a trademark for a name that is the same as one of your domain names and one of the classes they apply for is "websites" or similar, then surely there would be a legitimate
opposition ?. Similarly there is a trademark class for advertising on websites, and that must surely equate to pay per click adverts as well ?.

DG

[jberryhill]

Well, as others have stated, that is a policy opinion, that, unfortunately for you, is not shared by statutes and trademark law that govern domains.

Bullshit.

Domaingenius, your analysis is not only correct, but followed by the United States Patent and Trademark Office in their administration of the Lanham Act:

Word Mark CLUBDICE.COM

Goods and Services IC 035. US 100 101 102. G & S: Advertising and directory services, namely promoting the services of others engaged in providing online gambling services, by providing a directory of gambling service providers, placing advertisements in such directory, and providing such directory via a global computer network. FIRST USE: 20020619. FIRST USE IN COMMERCE: 20020619

Mark Drawing Code (1) TYPED DRAWING
Serial Number 76423350
Filing Date June 20, 2002
Current Filing Basis 1A
Original Filing Basis 1A
Published for Opposition March 11, 2003
Registration Number 2721033
Registration Date June 3, 2003
Owner (REGISTRANT) Name Administration Inc. CORPORATION BR.VIRGIN ISLANDS Box 10518 A.P.O. Grand Cayman CAYMAN ISLANDS
Attorney of Record John B. Berryhill
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE


Word Mark QUICKFARES.COM

Goods and Services IC 035. US 100 101 102. G & S: Advertising and directory services, namely promoting the services of others engaged in providing food and beverages by providing a directory of food and beverage providers, placing advertisements in such directory, and providing such directory via a global computer network. FIRST USE: 20030700. FIRST USE IN COMMERCE: 20030700

Mark Drawing Code (1) TYPED DRAWING
Serial Number 76544407
Filing Date September 2, 2003
Current Filing Basis 1A
Original Filing Basis 1A
Published for Opposition May 18, 2004
Registration Number 2871333
Registration Date August 10, 2004
Owner (REGISTRANT) Name Administration, Inc. CORPORATION CAYMAN ISLANDS Box #10518 A.P.O. Grand Cayman, GC 12345 CAYMAN ISLANDS
Attorney of Record John B. Berryhill, Ph.D., J.D.
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE

Both domain names are used as marks for PPC directory services.

A trademark is any word, symbol, or device (as in insignia, heraldic device) used on or in connection with goods or services in commerce such that it provides a distinctive indicator of the origin or source of said goods or services.

[Brett Lewis]

Have to agree with John.

[cyberlaw]

Bullshit.

John, we've never met, but I guess I'd ask that we keep it professional here.

As to the issue, I think we're talking about two different things. No one disputes that someone can register a trademark as to "advertising and directory services" or similar. I suspect, however, that most of the folks here don't want to register every domain in their portfolio as a trademark.

I understand the OP to be asking in some type of WIPO or similar dispute if he can point to his site on domain X, which provides various advertising services relatd to whatever the trademark's service industry is, and say that that is use in commerce to defend in such actions brought by trademark holders. I understand this because of what he says, above:

parking of domains and whether it accrues IP rights

He says nothing about registering a mark, only parking. So, for that reason, I stand by my answer, and without cursing.

[jberryhill]

Bullshit is a wonderful word. I recently finished reading "On Bullshit" - a treatise published by Princeton Press, which is a great treatment of the subject. I welcome you to DNForum and invite you to call me on mine whenever the occasion arises. If you go back far enough, you might even find the Lewis v. Berryhill cage match. Many a fine bovine turd was polished on both sides of that one.

I understand the OP to be asking in some type of WIPO or similar dispute

Well you said...

not shared by statutes and trademark law that govern domains.

The UDRP is neither a statute, nor a law, but a contract clause. So, if we are talking about statutes and laws, there is support for the proposition that, yes Virginia, parking does constitute a service in commerce.

Then there are sites like, oh one I've heard of is called Google.com. There is practically no content at all on their web page, and when you enter a search on that big entry line, all you get are paid ads and search results with links to other websites.

It's pretty cheesy of someone to take a perfectly good domain name like Google.com, and then just use it to provide links to other websites, I realize, but even that obscure outfit managed to convince quite a few folks that they provide a marketable service of some kind.

Now of course, prevailing in a WIPO dispute doesn't require IP rights at all, so I guess that's why I had a different take on what the OP was asking about.

In the context of the UDRP, the available rights are "legitimate rights and interests" which mean a whole lot of things other than trade or service mark rights.

There is a long line of cases to the effect that providing paid advertising directories constitutes a bona fide use of a domain name, constituting a legitimate right within the relevant part of the UDRP....

http://www.arb-forum.com/domains/decisions/96320.htm

Complainant alleges that Respondent derives revenue from its site when users click on the links. If this allegation were substantiated, it would support a finding of a legitimate right or interest in the domain, not bad faith. The mere fact that Respondent gains income from the domain name is not, in itself, bad faith no more thannor is the fact that not all of Respondent’s domain names resolve to useful or informative websites.


Now, as far as his very specific question on opposing an application, the OP might want to take a look at the pleadings in, e.g. the oppositions filed against USTM Appl. No. 76/200010

http://ttabvue.uspto.gov/ttabvue/v?q...&pn2=&cop=&cn=

Not sure if that link, or this link:

http://ttabvue.uspto.gov/ttabvue/v?p...&pty=OPP&eno=1

...are the appropriate ones

But... I will be interested to get your take on why you believe the complaint in that matter to be precluded by the trademark statute or, in other words, to have my own bullshit exposed.

He says nothing about registering a mark, only parking. So, for that reason, I stand by my answer, and without cursing.

Well I'm utterly mystified by what distinction you are trying to make there. I'd ask WTF you mean, but I'm not sure if the F is okay by you.

He is asking whether parking accrues IP rights. "Registering a mark" does not, by itself, confer IP rights. In order to register a mark, you have to have a mark - in other words you have to have accrued IP rights in order to get a 1A application registered.

Hence, I pointed out two examples of parking in which, yes, the USPTO had no difficultly recognizing that indeed the activity was the conduct of a service in commerce, and in connection with distinctive names for providing the service. I mean... is there some way to register a mark in connection with an activity which is NOT susceptible to the accrual of IP rights?

Otherwise, I'm not sure I understand what you are saying in reference to our statutes and laws not recognizing advertising (which is what parking is) as a use in commerce susceptible of accruing a TM right - whether registered or common law.

Any ideas or knowledge of this being pleaded before ?.

Reading your question more carefully, I gather:

1. You have domain name XYZ.com. You are using it to provide advertising services.

2. Someone has applied to register XYZ as a mark, and it has reached publication for opposition.

3. You want to oppose their application.

Of course there is a constellation of other specific facts, such as whether your domain name is used as a mark in relation to the advertising you are conducting. There are also questions of whether it makes sense in the context of what they are claiming as their goods or services.

However, an opposition need not be a Battle Royale to the death. Like most legal proceedings, most oppositions settle. An opposition proceeding can be an ideal context in which to secure a non-enforcement agreement, if your underlying concern is that they would otherwise use their trademark registration to come after your domain name.

The basic facts of the opposition I've linked above are:

Applicant is seeking registration of "@POS.COM" as a mark for certain services relating to Point-Of-Sale terminal software.

Opposer(s) own interests in the domain name POS.COM, which is being used as a PPC page to advertise Point-Of-Sale goods and services.

Now, I have no idea why some marketing genius thinks it was a good idea to intend to use "@POS.COM" as a trademark when they don't even own the domain name POS.COM.

But the domain registrants are not going to wait around to find out, so they indeed are opposing registration of the mark, as likely to cause confusion or mistake relative to the source of goods and services which are being provided by means of their domain name.

Now, of course, POS can stand for any number of things, but I don't want to be scolded by Eric again for being naughty.

[companyone]

Then there are sites like, oh one I've heard of is called Google.com. There is practically no content at all on their web page, and when you enter a search on that big entry line, all you get are paid ads and search results with links to other websites.

It's pretty cheesy of someone to take a perfectly good domain name like Google.com, and then just use it to provide links to other websites, I realize, but even that obscure outfit managed to convince quite a few folks that they provide a marketable service of some kind.

Very well said John!

Best,
Dan

[domaingenius]

Bullshit.

Domaingenius, your analysis is not only correct, but followed by the United States Patent and Trademark Office in their administration of the Lanham Act:

Word Mark CLUBDICE.COM

Goods and Services IC 035. US 100 101 102. G & S: Advertising and directory services, namely promoting the services of others engaged in providing online gambling services, by providing a directory of gambling service providers, placing advertisements in such directory, and providing such directory via a global computer network. FIRST USE: 20020619. FIRST USE IN COMMERCE: 20020619

Mark Drawing Code (1) TYPED DRAWING
Serial Number 76423350
Filing Date June 20, 2002
Current Filing Basis 1A
Original Filing Basis 1A
Published for Opposition March 11, 2003
Registration Number 2721033
Registration Date June 3, 2003
Owner (REGISTRANT) Name Administration Inc. CORPORATION BR.VIRGIN ISLANDS Box 10518 A.P.O. Grand Cayman CAYMAN ISLANDS
Attorney of Record John B. Berryhill
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE


Word Mark QUICKFARES.COM

Goods and Services IC 035. US 100 101 102. G & S: Advertising and directory services, namely promoting the services of others engaged in providing food and beverages by providing a directory of food and beverage providers, placing advertisements in such directory, and providing such directory via a global computer network. FIRST USE: 20030700. FIRST USE IN COMMERCE: 20030700

Mark Drawing Code (1) TYPED DRAWING
Serial Number 76544407
Filing Date September 2, 2003
Current Filing Basis 1A
Original Filing Basis 1A
Published for Opposition May 18, 2004
Registration Number 2871333
Registration Date August 10, 2004
Owner (REGISTRANT) Name Administration, Inc. CORPORATION CAYMAN ISLANDS Box #10518 A.P.O. Grand Cayman, GC 12345 CAYMAN ISLANDS
Attorney of Record John B. Berryhill, Ph.D., J.D.
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE

Both domain names are used as marks for PPC directory services.

A trademark is any word, symbol, or device (as in insignia, heraldic device) used on or in connection with goods or services in commerce such that it provides a distinctive indicator of the origin or source of said goods or services.

Thanks for that John. Well will be interesting to see how the UK Registrar views it as I have just lodged the opposition with them. Cant say the name yet but maybe can afterwards .It is a name that is well known to all in USA and UK.

DG

Reading your question more carefully, I gather:

1. You have domain name XYZ.com. You are using it to provide advertising services.

2. Someone has applied to register XYZ as a mark, and it has reached publication for opposition.

3. You want to oppose their application.

Of course there is a constellation of other specific facts, such as whether your domain name is used as a mark in relation to the advertising you are conducting. There are also questions of whether it makes sense in the context of what they are claiming as their goods or services.

However, an opposition need not be a Battle Royale to the death. Like most legal proceedings, most oppositions settle. An opposition proceeding can be an ideal context in which to secure a non-enforcement agreement, if your underlying concern is that they would otherwise use their trademark registration to come after your domain name.

The basic facts of the opposition I've linked above are:

Applicant is seeking registration of "@POS.COM" as a mark for certain services relating to Point-Of-Sale terminal software.

Opposer(s) own interests in the domain name POS.COM, which is being used as a PPC page to advertise Point-Of-Sale goods and services.

Now, I have no idea why some marketing genius thinks it was a good idea to intend to use "@POS.COM" as a trademark when they don't even own the domain name POS.COM.

But the domain registrants are not going to wait around to find out, so they indeed are opposing registration of the mark, as likely to cause confusion or mistake relative to the source of goods and services which are being provided by means of their domain name.

Now, of course, POS can stand for any number of things, but I don't want to be scolded by Eric again for being naughty.

When I started this thread I wanted to (1) point out and also start a discussion about the value that IP can have over and above the pure domain name. Let me give a very good example, or two. Take "zune.com" whihc some luck sod registered before MS decided to take the .net and launch their product. The IP rights that zune.com MAY have far exceed the value of the simple domain name and give the owner a lot of leverage to sell both IP and domain at same time. Another is Iphone.co.uk for same reasons. (2) See whether I could glean any info to help my opposition to a trademark application that has been made by a very large company .The domain was being used ,at NameDrive, for a year or more before the applied for a
trademark in field of internet,websites and other classes. I have only opposed those classes that would clash with my website useage. I have tried "Without Prejudice Save as to Costs" letters but to no avail as yet but am appointing Counsel soon so that may get things resolved.

I just thought generally that most domain owners do not seem to go on the offensive in regards to accruing ,using and selling IP rights and that is potentially a more valuable asset that the mere domain itself, or at the least
can add to it.

DG

[jberryhill]

how the UK Registrar views it

...which is the other hazard of categorical statements on forums...

[domaingenius]

...which is the other hazard of categorical statements on forums...

Yes agreed, which is why I havent identified myself or the domain name in question. Anyway lets see.

DG