UK Trademark issue

**domaingenius** · 04-03-2008, 10:10 AM

I objected to a trademark application in respect of several classes related to use of the name on the internet ,as it would clash with my use of a domain for serving up advertisments for a specific type of company/business for which the domain is ideal.

As I expected ,the applicant has now replied to my objection and in short argues that "parking" a domain (i.e. serving up advertisments) is junk and does not allow me to accrue any IP rights at all ,or at least not sufficient to object to their TM application.

So are there any counter arguments that I can use/case law etc ,and any good domain lawyer in the UK ?.

Thanks

DG

**jberryhill** · 04-03-2008, 01:35 PM

http://www.adlexsolicitors.co.uk/

**domaingenius** · 04-03-2008, 01:51 PM

Originally Posted by jberryhill

http://www.adlexsolicitors.co.uk/

Thanks they look good according to their website.

DG

**Dale Hubbard** · 04-03-2008, 01:55 PM

DG, I would suggest that 'parking' as prior use might not be too useful in contesting a UK mark. I think much might depend on your mark classification.

**domaingenius** · 04-03-2008, 03:31 PM

Originally Posted by aZooZa

DG, I would suggest that 'parking' as prior use might not be too useful in contesting a UK mark. I think much might depend on your mark classification.

Yes got to agree with that. What I am averring is 2 things (1) Serving up advertisements on a domain name website is a legitimate and lawful business (2) The domain owner serving up those advertisements DOES accrue IP and common law rights in the trademark classification covered by said useage ,whatever that may be.

Thats all I am saying. What the applicant for the TM is saying is that I am not entitled to any protection and have no IP rights accruing from said use.

DG

**Dale Hubbard** · 04-03-2008, 03:41 PM

Serving ads on/against a granted TM is an absolute infringement. If antagonist has accrued rights then you have no defense with a parking page. Absolutely none.

**domaingenius** · 04-03-2008, 03:50 PM

Originally Posted by aZooZa

Serving ads on/against a granted TM is an absolute infringement. If antagonist has accrued rights then you have no defense with a parking page. Absolutely none.

You are missing the point. I am owner of domain name. I registered it in early 2006. In mid 2007 the other party applied for a trademark of that name but they had not yet used the name . I then objected on basis I had rights in said name.

DG

**Dale Hubbard** · 04-03-2008, 04:14 PM

Domain names rarely hold tenuity to TMs.

**jberryhill** · 04-04-2008, 12:01 AM

(1) Serving up advertisements on a domain name website is a legitimate and lawful business (2) The domain owner serving up those advertisements DOES accrue IP and common law rights in the trademark classification covered by said useage ,whatever that may be.

Why, are you suggesting that "GOOGLE" might indeed have developed a trademark interest by serving up advertisemets on a web page?

What a radical thought.

**domaingenius** · 04-04-2008, 05:51 PM

Originally Posted by jberryhill

Why, are you suggesting that "GOOGLE" might indeed have developed a trademark interest by serving up advertisemets on a web page?

What a radical thought.

Exactly !. I have just been reading through their answer to mt opposition and cutting through all the chaff (crap) what they are saying is that because I had ONE UDRP decision against me a long time ago (5 years) that I am fair game and cannot ever hold any IP rights in anything ever again. Well they can get F'd because I am fighting this. I bought the domain strictly a hunch and had no prior knowledge and I just happened to be right. They did not even think of the name until 9 months after I bought the domain ,and now all they rely on is their use of the name subsequent to knowing about my use of the name.

DG

**dvdrip** · 04-04-2008, 05:56 PM

Fight it till the end. Let us know how this goes and if you need any help.

**domaingenius** · 04-05-2008, 12:30 PM

Originally Posted by dvdrip

Fight it till the end. Let us know how this goes and if you need any help.

Yes I am going to. It is a very large Corporation with offices in US, UK and elsewhere.
Help ?. Yes thanks, if anyone can provide me any parts of any UDRP cases or other case law etc that states along the lines "...serving up advertisments on a domain name is a legitimate business ...." then THAT would definately help.

As I say, their statement is simply ,in my words,that serving up advertisments on a domain name is a scammy type of business that deserves and gives no IP protection.

DG

**denny007** · 04-05-2008, 01:08 PM

Well when they would eventually WIPO you, they would stand no chance as there were not a bad faith registration. But the domain would become unsellable as change of owner is considered according "genius" panelists as fresh registration. The only way to defend this imho would be to change whois to whois protection BEFORE they get TM.

Maybe the owner of .com could ask in objection explicitely written that "TM applicant is beware that applicantsTM.com is registered and this TM can not apply for applicantsTM.com" ?

**jberryhill** · 04-05-2008, 04:27 PM

The only way to defend this imho would be to change whois to whois protection BEFORE they get TM.

There's more than one way around that problem.

**denny007** · 04-05-2008, 10:30 PM

There's more than one way around that problem.

Such as ?

**domaingenius** · 04-06-2008, 07:54 AM

Originally Posted by denny007

Maybe the owner of .com could ask in objection explicitely written that "TM applicant is beware that applicantsTM.com is registered and this TM can not apply for applicantsTM.com" ?

Ah yes I see what you mean. I do not have a trademark, but I do have rights as I have used the name for long time for serving up advertisments.

What I did before I made an official objection was to ask the trademark applicant (the large corporation) to give me a "waiver" that they would not interfere with my use of the domain name. They refused to do so and thus I made the official objection and that is what is proceeding now.

DG

**denny007** · 04-06-2008, 08:05 AM

How did you found out BTW ? I can not imagine big generic portfolio owners watching every month (or whatever the max. allowed response time is) USA and EU TM registry for tens of thusands terms. Not to mention WIPO can hit anyone with some Asian or African TM as well. In this regard I am glad my portfolio is mostly TM typos, decriptive generics or adult.

**domaingenius** · 04-06-2008, 09:55 AM

It was simply that I ,shall I say "expected" that it was a good possibility that they would apply for a TM so I kept checking the website every so often. This is where the UK's DRS (i.e. UDRP) system is fatally flawed in favour of the large companies in that it does not distinguish between a Word Only trademark and an Image trademark.

DG