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Username: LegalEagle
Date/Time: Sat, January 5, 2002 at 2:36 PM GMT
Browser: Microsoft Internet Explorer V5.5 using Windows NT 5.0
Subject: All licensed uses ...

Message:
 

 
> most domains taken by UDRP and bullied from owners are not 'world famous' trademarks like Coca-Cola.

Indeed, 'world-famous' is not necessary to successfully challenge a domain name - there are other criteria in the UDRP that mitigate the celebrity of the mark: including prior usage, the location(s) of trademarks and the location of the respondent (e.g. if they are in another country where the mark is not so well known).

> WIPO grabbed JT.com from Israel citizen for Japan Tobacco Inc. Why > should Japan Tobacco be allowed to have World Rights to the
> initials 'JT'?

From case no. D2000-0492:

The respondent was another Japanese company (Yoshiki Okada), the complainant owns over 100 trademark registrations of JT throughout the world and sells annually billions of dollars of cigarettes bearing the "JT" trademark throughout the world.  Thus, the Complainant's trademark "JT" has become well-known throughout the world and especially in Japan. Bad faith was shown by the company demanding no less than a million dollars for the name. The respondent never contested these facts through no response. WIPO found that the respondent had no legitimate reason for holding the name but for the purpose of "selling it to another person for unjustifiable profit".

http://arbiter.wipo.int/domains/decisions/word/2000/d2000-0492.doc

> They could still use coke.com for marketing - just redirected to
> coke.drink.us.reg as certificate of authentication.

That's fine, but it doesn't solve the 'problem' of Coca-Cola preventing others of using the domain name coke.com.

> As to not naming book 'Coca-Cola': In the first 2 minutes I found
> these - so likely several more.

For all of your examples, use of the trademarks would have undoubtedly been expressly licensed by The Coca-Cola Company. TMs can be licensed to anyone by their owner. In fact, I know of one Sunrise registrant who licensed - for a considerable amount - a trademark from a company that owned a generic trademark, in order to register it during Sunrise.

I also know from experience that The Coca Cola Company has very stringent and exacting licensing policies for the use of its famous mark. Unauthorized usage of its mark will be met with very aggressive litigation; the company is extremely protective of its mark.

I won't go through each of your examples of so-called common words, but ...

rollerblade is in fact a trademarked name for in-line skates, as band-aid is a brand for adhesive strips. These are specific branches of trademark law where the brand has in fact become the class - however domain caselaw has traditionally favored the original company that made that name famous to begin with.

Most of the other examples you chose are not single common words but combinations of single common words that were probably registered trademarks; the few that are single words may have been famous enough to warrant greater claim to a name, or there may have been other specific circumstances for the respondent to lose the name; one would have to research each case to find out.

There have been undoubtedly very controversial cases in the courts through the years and a judgement can usually be appealed, but the Rule of Law is usually upheld in most cases: i.e. the courts do endeavor to maintain consistency across courts and cases, regardless of who brings the action and who it is against.

 


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