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Username: LegalEagle
Date/Time: Sun, December 30, 2001 at 2:21 PM GMT
Browser: Microsoft Internet Explorer V5.5 using Windows NT 5.0
Subject: an opinion


        Certainly, WIPO is not the only authority, and other companies may very well try to challenge successful .info registrants in their local courts.

However, it is my experience that they would have very little success in regards to generic, dictionary-based words.

This is because, despite another company having that same trademark, there would be very little confusion in the eyes of the public customer (e.g. they would not expect the word 'business' to belong to any particular company, unlike 'Coke'). Also, regardless of the court, there would have to be some evidence of bad intent or at least some 'riding on the coat-tails' of the challenger's TM.

I should know: my law firm has failed to successfully challenge others' .com generic domains, on behalf of clients. This was even when our clients had the trademark and the respondent did not. We have however, been very successful with less ambigious (i.e. obvious TM) domain strings.

Deep-pocked companies may very well try to challenge successful registrants for generics, but even with prior use to a name they would not be successful (one of our clients challenging a .com had a trademark for a generic name that dated back to the 1920s).

In the absence of a hierarchical right to the same trademark, the rights to a name is simply deemed contractual, between the registrant and the registry. Therefore parties, such as our friend Sanjeev Goyal and his client (who have successfully registered with a purported trademark), who happened to register the domain on a 'first-come, first served' basis with the registry, cannot lose the name to another trademark holder even if the latter party's claim is 'more worthy' and the TM itself is 'more famous'.

Incidentally, there are other companies that own the trademark to the trademark text of 'apple' (not just Apple Computer, Inc) and 'Sun' (not just Sun Microsystems, Inc.) to name just two examples. If these non-behemoth companies were successful in registering the name, then the larger companies would have no other choice but to simply buy the name from them. This is what happened with many of the ambigious .coms and my firm has had great success in negotiating welcome settlements in situations such as this.

By the way, does anyone know of a successful challenge (that wasn't settled) for a generic domain in any non-US or commonwealth court, anywhere? I'd be interested to know.



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