A Few Legal Questions

**fab** · 01-22-2009, 05:38 AM

I have a few legal questions that have been disturbing me, so I hope some lawyers as well as the rest will join in here. Lawyers please try and make an effort to communicate in English, not lawyerese.

1. There are a few ways of going about TM domain issues. The most common one is the UDRP approach, and the other main one is civil legal action. Correct me if I'm wrong.

Assuming that someone (or company) has violated someones TM, why should they lose their domain, if theoretically it would be possible to use it legally in the future?

Here's an example: Someone owns domain Apple.ext, and either parks the domain, using computer ads, or sets up a similar web-site. The TM violator gets sued, pays damages, and declares he will now only use the domain for purposes of setting up a web-site relating to apples. Why is the culprit punished for future deeds, instead of only previous ones.

2. I have tried researching an old TM case, which I've heard about, but can't find it on the web. Any leads would be appreciated.
Case: Coca Cola vrs. Pesi Cola. I will explain why I'm interested later.

Input appreciated!

**Focus** · 01-22-2009, 05:41 AM

I think it's "KEGEL"..not KEGAL

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

All women need to do this...imo

A Few Kegal Questions

:grin:

**KaneCo** · 01-22-2009, 08:42 AM

actually been thinking of this for a while know...just waiting for the right case to fight for this...its good to have a family of lawyers and lots of money.

**jberryhill** · 01-23-2009, 10:02 AM

Assuming that someone (or company) has violated someones TM, why should they lose their domain, if theoretically it would be possible to use it legally in the future?

Why "should" they? Ummm... the answer is that a TM violation does not automatically turn into a domain transfer.

That's one of the points that UDRP panelists regularly forget - in a court proceeding, an injunction can be issued againt certain types of use/content. In a UDRP, the only thing available is transfer of the domain name, so the panelists seem to reflexively order that in situations that would not necessarily result in transfer in a civil case. The effect is an expansion of the TM claimant's rights, in the sense they can obtain broader relief in the UDRP than they can in court.

**fab** · 01-24-2009, 01:16 PM

That's one of the points that UDRP panelists regularly forget - in a court proceeding, an injunction can be issued againt certain types of use/content. In a UDRP, the only thing available is transfer of the domain name, so the panelists seem to reflexively order that in situations that would not necessarily result in transfer in a civil case. The effect is an expansion of the TM claimant's rights, in the sense they can obtain broader relief in the UDRP than they can in court.

In other words, the system's wrong! Let me ask an opposite question. Has their been any cases of TM violation and UDRP did not order transfer of domain.

**jberryhill** · 01-30-2009, 12:55 AM

Originally Posted by fab

In other words, the system's wrong!

No. And one of my rules on forums is don't try to put anything I say into "other words".

The UDRP, by design, is not intended to address any and all sorts of claims that might be made by a trademark owner against a domain registrant. The UDRP addresses a narrow claim of abusive domain registration.

[/quote]
Let me ask an opposite question. Has their been any cases of TM violation and UDRP did not order transfer of domain.[/QUOTE]

Yes.

Incidentally, Coke and Pepsi have sued each other a zillion times for all sorts of claims. You'd have to be a lot more specific than that.

**fab** · 02-01-2009, 04:49 AM

No. And one of my rules on forums is don't try to put anything I say into "other words".

Sorry, I've done it again.

The UDRP, by design, is not intended to address any and all sorts of claims that might be made by a trademark owner against a domain registrant. The UDRP addresses a narrow claim of abusive domain registration.

Yes, but is it correct that they have overstepped their jurisdiction in a large percentage of cases?

Let me ask an opposite question. Has their been any cases of TM violation and UDRP did not order transfer of domain.

Yes.

Thanks for pointing that out. I would appreciate a link, if you could provide one.

Incidentally, Coke and Pepsi have sued each other a zillion times for all sorts of claims. You'd have to be a lot more specific than that.

That's news to me.

I am referring to I would assume the first TradeMark case brought up by CocaCola against pepsi Cola. I can't understand how Pepepsi is allowed to use a "confusingly similar product, with a confusingly similar name.

Two cola softdrinks, both with the name cola!

**jberryhill** · 02-01-2009, 09:45 PM

Two cola softdrinks, both with the name cola!

Ummm.... that would be because "cola" is a generic term for the nut from which the cola flavor is derived.

For that matter, "coca" is the generic name for a plant from which a flavor enhancing component of Coca-Cola is derived. Coca-Cola is, in fact, a good example of an initially descriptive term which long ago acquired distinctiveness.

While Coca-Cola no longer uses the full coca leaf extract, they still use a component derived from it.

As for your invitation to provide a free legal research project, I decline. You might want to check out some of the cases cited here:

Guildline Instruments Limited v. Anthony Anderson
Case No. D2006-0157
http://www.wipo.int/amc/en/domains/d...2006-0157.html

However, the third requirement of the Policy is that the Domain Name has
been registered and is being used in bad faith. It is evident from the terms of the Policy and confirmed in many decisions under it that these are cumulative conditions: see e.g. World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001, Telstra Computers Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

A long line of decisions has held that the first of these conditions requires
that the original registration, or possibly a subsequent acquisition, of the
Domain Name was in bad faith, and that the maintenance or renewal in
bad faith of a registration originally made in good faith does not suffice:
see Telaxis Communications Corp. v. William E. Minkle, WIPO Case No.
D2000-0005, Teradyne Inc v. 4tel Technology, WIPO Case No. D2000-0026,
Smart Design LLC v. Carolyn Hughes, WIPO Case No. D2000-0993, e-
Duction, Inc. v. John Zuccarini, d/b/a The Cupcake Party & Cupcake Movies,
WIPO Case No. D2000-1369, Weatherall Green & Smith v. Everymedia.com,
WIPO Case No. D2000-1528, Village Resorts Ltd v. Steven Lieberman, WIPO
Case No. D2001-0814, Substance Abuse Management, Inc. v. Screen Actors
Modesl International, Inc., WIPO Case No. D2001-0782, Gamer.tv Limited v.
Bestinfo, WIPO Case No. D2004-0320, PAA Laboratories GmbH v. Printing
Arts America, WIPO Case No. D2004-0338, Green Tyre Company Plc. v.
Shannon Group, WIPO Case No. D2005-0877.

In The E.W. Scripps Company v. Sinologic Industries, WIPO Case No.
D2003-0447, the panel expressed the view that “registered in bad faith” could cover maintaining a domain name on the register in bad faith, but found that the original registration had in any event been in bad faith. In WIPO Case No. D2004-0338, cited above, the panel considered that “Absent the consistency of approach which has found favour with numerous earlier panels, this Panel would have seen no good reason for a renewal not to be considered as equivalent to ‘registration’”.

Having reviewed the cases, the Panel considers that the consensus view,
that the original registration or subsequent acquisition must have been in
bad faith, should be followed in the interest of clarity and certainty.

...but if you are looking for a case where Coca-Cola sued Pepsi for use of the word "cola", that's not something you are going to find, since there have long been many cola drinks which have used the word "cola" in their name.

**Gerry** · 02-01-2009, 09:55 PM

Originally Posted by jberryhill

Incidentally, Coke and Pepsi have sued each other a zillion times for all sorts of claims. You'd have to be a lot more specific than that.

By my count, it is a KAzillion times.

**Banned: dn-101** · 02-01-2009, 10:08 PM

fab,
John B is entitled to his opinions. But there are thousands of lawyers. Some good, some bad, and some just happen to be here.
Some charge $500 an hour, and some charge $50 an hour, and some can do it pro bono - that's FREE!
Oh yes, you should also run the xenophobia test. Chances are our friend here won't pass the smell test.

**fab** · 02-02-2009, 02:59 AM

As for your invitation to provide a free legal research project, I decline. You might want to check out some of the cases cited here:

Thank you for the reply. The info and links are definitely appreciated. I in no way intended for you providing a research project. The questions were out of pure curiosity, at least for the present. Your contributions to this forum are definitely appreciated by me and others members of the forum, and you are free to respond or not respond based solely upon your discretion.

fab,
John B is entitled to his opinions.

What in the world made you think I disagree?

But there are thousands of lawyers. Some good, some bad, and some just happen to be here.
Some charge $500 an hour, and some charge $50 an hour, and some can do it pro bono - that's FREE!

So!

Oh yes, you should also run the xenophobia test. Chances are our friend here won't pass the smell test.

Try keeping your comments to yourself. This is a public forum. I go out of my way trying not to insult anyone here, and respecting anyone and everyones opinions here, which unfortunately is not applied by many others.