WIPO - bad flip-flops on the 3-letter issue

[basscaster]

SFR.org awarded to the complainant. I'm as confused as hell - are 3 letters generic or not?

http://arbiter.wipo.int/domains/deci...2004-0385.html

[Steen]

If you are redirecting AOL.com to an ISP you might have some problems

[Garry Anderson]

Panelists Jonas Gulliksson and Olivier E. Itéanu are corrupt - aiding and abetting overreach - but most here know my opinion of those that pervert trademark law.

David E. Sorkin - the dissenting panelist - is honourable in highlighting that this is "common three-letter combination" and concluding "I therefore would find that Complainant has not proved that the disputed domain name was registered in bad faith, and would dismiss the Complaint on that basis."

[chatcher]

Originally Posted by xbase234

SFR.org awarded to the complainant. I'm as confused as hell - are 3 letters generic or not?

http://arbiter.wipo.int/domains/deci...2004-0385.html

This panel seemingly decided what they wanted the outcome to be, and then did a lot of work sifting through the cited cases to find justification for their decision. Undoubtedly they were influenced by the previous activities of the respondent. I think a "fresh" respondent who had never been before a UDRP panel before might have had a better result.

Ignoring the specific merits of this case, the UDRP process does not lend itself well to the concept of precedents. Each panel makes a decision, good or bad, based on the circumstances of the dispute before them, and then their decision is forever used to argue one way or the other in future cases. A lot of "bad" UDRP "law" from past disputes haunts us.

I understand there was a need for an expedient process to deal with so-called cybersquatting in the past when many companies were just beginning to grasp the idea that the Internet was important and a domain name was valuable. But with each passing day I think the value of the UDRP system diminishes. Is there any established company that still has not awakened and had the chance to obtain the domain name(s) they need for their business? Any new disputes that arise must surely be at least partly the fault of the complainant. Either their failure to renew a domain name they had, or failure to defensively register any names they feel are similar enough to marks they own to litigate. I think normal legal channels should be adequate to take care of the problem at this point.

[basscaster]

chatcher -

I agree, I think there is bias here because of the respondent's history of WIPO cases. You make some good points -

[namedropper]

Originally Posted by chatcher

Any new disputes that arise must surely be at least partly the fault of the complainant. Either their failure to renew a domain name they had, or failure to defensively register any names they feel are similar enough to marks they own to litigate.

Personally I think that's a ridiculous argument. A company shouldn't have to defensively register every possible variant of every trademark they own. Between typos and combinations with other words and phrases, it's impossible to register them all.

I would agree that it's wise to register some of the common ones if you are worried about it and have the money, but you can't put the blame on the company for a cybersquatter finding another variant to register and try to scum money off of.

Dittot for forgetting to renew. Yes, it's their fault they didn't renew, but it still doesn't excuse someone else registering it to try to infringe upon the trademark. If someone else registers it and uses it for some legitimate purpose that doesn't infringe upon their marks, fine, but nothing excuses cybersquatting.

Now of course none of these arguments relate to the three letter issue or trademark overreach, but I had to respond to the idea that the company is to blame if someone else tries to rip them off.

[chatcher]

Originally Posted by namedropper

Personally I think that's a ridiculous argument. A company shouldn't have to defensively register every possible variant of every trademark they own. Between typos and combinations with other words and phrases, it's impossible to register them all.

I would agree that it's wise to register some of the common ones if you are worried about it and have the money, but you can't put the blame on the company for a cybersquatter finding another variant to register and try to scum money off of.

Dittot for forgetting to renew. Yes, it's their fault they didn't renew, but it still doesn't excuse someone else registering it to try to infringe upon the trademark. If someone else registers it and uses it for some legitimate purpose that doesn't infringe upon their marks, fine, but nothing excuses cybersquatting.

Now of course none of these arguments relate to the three letter issue or trademark overreach, but I had to respond to the idea that the company is to blame if someone else tries to rip them off.

I said "at least partly to blame", and my point was that the UDRP dispute venue isn't necessary to take care of the disputes that will inevitably arise. Of course you can't register every domain name that potentially could include a variation of your mark. But you ought to register the ones you care enough to litigate over.

The so-called cybersquatting problem that originally spawned the whole mess had little to do with "typosquatting". It was the extortion of the holders of famous trademarks by holders of the domain names most suitable for those the companies that owned those marks.

I'm not defending trademark infringement of any kind, just arguing against the policy that results in decisions like this one.

As far as failure to renew a domain name, I think that can be legitimately viewed as an indication that the previous owner no longer has any interest in the domain. Some arbitration panels have accepted that as a reasonable defense against bad faith registration.

[Garry Anderson]

NameDropper> "A company shouldn't have to defensively register every possible variant of every trademark they own. Between typos and combinations with other words and phrases, it's impossible to register them all."

I agree 100% Dan - doing so would amount to a tax on trademarks - for the benefit of registrars.

"Yes, it's their fault they didn't renew, but it still doesn't excuse someone else registering it to try to infringe upon the trademark."

Given that this is a "common three-letter combination" (as described by honourable panelist David E. Sorkin) - just how exactly had the legal holder of domain infringed upon the trademark?

Please tell us - how did the legal holder of domain try to infringe into the area of mobile telecommunications?

[basscaster]

This getting into a different topic, but there is a case for making defensive registrations, especially if you start getting into the area of hiring an attorney to send cease and desist letters, or taking trademark challenges to court. One attorney's letter could easily cost $500-1000, or more. At a $8.95 GoDaddy fee, it makes sense for any trademark holder who regularly employs attorneys to defensively reg 10 or more names a year.

[namedropper]

Originally Posted by Garry Anderson

Given that this is a "common three-letter combination" (as described by honourable panelist David E. Sorkin) - just how exactly had the legal holder of domain infringed upon the trademark?

Please tell us - how did the legal holder of domain try to infringe into the area of mobile telecommunications?

Did you not read the part where I said I wasn't talking about the three letter domain in question, just the comment that it's partly the company's fault if someone cybersquats on them?

Pay attention so you don't ask stupid questions.

Originally Posted by xbase234

At a $8.95 GoDaddy fee, it makes sense for any trademark holder who regularly employs attorneys to defensively reg 10 or more names a year.

Yes, exactly my point. It may be *wise* to register some (avoiding trouble doing something relatively cheap and easy if you can is always a good plan), but not doing it does not in any way partially or wholly justify someone coming along and cybersquatting.

[Garry Anderson]

Dan - I was paying attention - so very sorry to annoy you - please do not get upset chum ;-)

Dan> "Did you not read the part where I said I wasn't talking about the three letter domain in question"

You were talking about the "three letter issue" - not "three letter domain in question".

N.B. "Now of course none of these arguments relate to the three letter *ISSUE* or trademark overreach..."

You had not specifically identified this case as overreach - but did say, "it still doesn't excuse someone else registering it to try to infringe upon the trademark".

Merely a minor misunderstanding between us.

So - as "the intials have inherent legitimate uses up the wazoo" (using your words for another case) - are we to presume you agree with honourable panelist David E. Sorkin?

[aZooZa]

Don't want to 'steal' this thread, but as it has the attention of some IP brains, I pose this:

The domain PayPal.com.my was registered in Malaysia a few days ago. As I understand it, ICANN leaves all IP matters for regulation by the relevant country ccTLD administrators. I know for a fact that it's not the 'real' PayPal that registered this domain.

So what redress is there for the 'real' PayPal on the basis, as I understand it, that Malaysia subscribes to WTO and WIPO?

Even given eBay's litigious disposition and bottomless pockets, how can they pursue it? Can ICANN ultimately demand the removal of the offending zone entry from Verisgn? How far would PayPal get in pursuing this in Malaysia?

As I say. sorry to 'hijack' this but I see some expert knowledge and opinion above...

Thanks.

[actnow]

This french company came up under discussion over another TM.
Société Française du Radiotéléphone-SFR.

I don't remember the domain but they threatened someone here because it
was "similar" to SFR. But, not SFR.

I believe they have the .com, .net and .info.

Maybe, someone at San Francisco Resellers (?) should fight for the name.
Using the argument that they are dominating the family of letters SFR.

[diverge]

Originally Posted by aZooZa

The domain PayPal.com.my was registered in Malaysia a few days ago. ...

So what redress is there for the 'real' PayPal on the basis, as I understand it, that Malaysia subscribes to WTO and WIPO?

It has always been my fear that the very presence of various TLDs would be negated by decisions such as this one. Why should ICANN even offer the ".my" extension for Malaysia (or any of the other ccTLDs), if someone is not allowed to register "paypal" in a different country? In other words, if my ownership of "mydomain.com" (and the trademarking thereof) gives me exclusive rights to "mydomain.*" why have the other TLDs at all? The only reason I can think of is to provide locale specific information (such as ww.sfr.com vs. www.sfr.fr). If that is the only use, then all TLDs should belong to the registrant of the .com. Period.

This brings the thread back to the question at hand -- if two companies of separate industry cannot share one second-level domain on different TLDs, then the entire TLD system needs to be thrown out. The current evaluation process seems to allow such congenial brand-sharing. But if the panelists continue to make decisions such as this (sfr.org) this creates dangerous "precedent" for negating the entire ccTLD system altogether.

Am I overreacting?

[jberryhill]

Am I overreacting?

Yes, because this case did not exactly involve "two companies of separate industry [sharing] one second-level domain on different TLDs".

are 3 letters generic or not?

The word "generic" has a very specific meaning in trademark law. While I am certainly aware that domainers regularly use the word "generic" in the sense of "it can be used for lots of things", that is not what "generic" means in trademark law.

Whether a term is "generic" in the trademark sense is determined by how the term is used by the party in question. For example, the word "apple" is the generic term for a type of fruit which grows on particular trees - i.e. it is virtually impossible to even refer to that type of fruit without using the word "apple". If you are using the word "apple" to refer to that type of fruit, then your use of the term "apple" in that context is unassailable. You are using a term in its generic sense.

If you apply the term "apple" to a personal computer, then you are making an arbitrary use of the term "apple", since you are no longer referring to that particular fruit. Such an arbitrary use can become distinctive in the minds of consumers as referring to a personal computer that originates with a particular source of personal computers - and indeed it is a distinctive trademark used to indicate the source of a line of personal computers manufactured by Apple Computer.

So, it is not a question of whether the word "apple" is generic or not. Whether it is generic depends on how it is being used.

Getting back to the question of whether "3 letters are generic or not", one can reach a variety of conclusions. "Cat" is three letters, and it is a generic term for a type of animal. "PWC" is three letters, and is used generically in the context of watersports to refer to personal watercraft (jet-ski's and the like). However, "CAT" is also a brand of earthmoving equipment made by the Caterpillar folks, and PWC is a brand of accounting services provided by PriceWaterhouse Coopers.

The question is not whether, divorced from any context, 3 letters are or are not generic. The question is what is the party doing with those three letters, and what inferences may be drawn about that party's intent based on all of the circumstances of the case.

Such circumstances to be considered can include the relative fame of the asserted mark - i.e. we might assume that anyone with a glancing knowledge of computers or the internet has heard of "IBM" or "AOL" - so there may be three letter combinations where a respondent may face a heavy burden to rebut the inference that he/she knew or should have known of an existing trademark. In other cases, as noted in the posted decision, the existence of a small debt collection firm in Florida claiming WB&W as an unregistered mark does not result in an automatic presumption that a registrant in another country would have any reason to know of that claim for the purpose of determining the domain registrant's intent.

[aZooZa]

John, you cite an example of "apple". My scenario is a little different. Can you supply an example using a verb instead of a noun? Maybe of the type "PayPal" -v- "PayFor", where of course the verb in question is "pay".

Looking at that, I'm thinking it gets further convoluted, as "pay" is also a noun, but not in this context I don't think.

Thanks!

[Garry Anderson]

John> "we might assume that anyone with a glancing knowledge of computers or the internet has heard of "IBM" or "AOL" - so there may be three letter combinations where a respondent may face a heavy burden to rebut the inference that he/she knew or should have known of an existing trademark."

However, I am sure you are not saying, "that these trademarks are held by 'International Business Machines' and 'America Online' precludes anybody else from using the three letters for any other business".

So - why should respondent face ANY burden (let alone heavy one) - to rebut the inference that they knew or should have known of an existing trademark - when the three letters could be used for different purpose?

Why should respondent have to prove themself innocent of anything - when no crime has been commited?

[Ovicide]

Originally Posted by jberryhill

"PWC" is three letters, and is used generically in the context of watersports to refer to personal watercraft (jet-ski's and the like).

...claiming WB&W as an unregistered mark does not result in an automatic presumption that a registrant in another country would have any reason to know of that claim for the purpose of determining the domain registrant's intent.

The "pwc.com" and "wbw.com" decisions are at:

http://arbiter.wipo.int/domains/deci...2002-0087.html
and
http://www.arb-forum.com/domains/decisions/98813.htm

Both are good reading.

[diverge]

Originally Posted by jberryhill

Yes, because this case did not exactly involve "two companies of separate industry [sharing] one second-level domain on different TLDs".

http://www.sfr.org/ = Gambling portal
http://www.sfr.com/ = Wireless services

These are separate industries in my book. If you contend that they are the same industry (e.g., the "internet industry"), then show me two websites (ANY two websites) that represent two different industries. I will show you two "internet industry" companies.

If sfr.org does not have the right to exist because those three letters are already taken by a different entity, then no site has the right to exist using the same second-level domain as another entity, and that negates the entire use of TLDs, IMHO. And don't say that this is only if the name is trademarked, because I have seen cases where a company trademarked their domain postfacto and still won suit against another domain (can't remember the case, right at the moment, but I read about it a few months ago).

Am I wrong?

[jberryhill]

Why should respondent have to prove themself innocent of anything - when no crime has been commited?

Civil disputes are not questions of guilt or innocence, and no respondents are going to jail, either, so I don't understand the question.

In a civil dispute, neither party is presumed to be "innocent" or "guilty". The two parties put on their evidence, and the dispute is determined based on a preponderance of the evidence. Obviously if a party does nothing, they are going to be at an automatic disadvantage.

And you are correct, the material you put in quotes above, prefaced by "I am sure you are not saying" is, indeed, material which I did not say. Congratulations on learning to read.