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 business.info
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.
Regards
Alex