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Copyright on Generic Local term domains?
copyright domain name ownership?
majestic12




msg:4211498
 9:15 am on Oct 5, 2010 (gmt 0)

Hi there..

This week I put up a site for a friend of mine, I won't post it here for obvious reasons..

Lets say it was..

www.widgetcleaningmanchester.co.uk


The site ranked number 8 today for "widget cleaning manchester" and we got an email, some guy says quote... "could we not have got your own name".. says he is registered with the UK tax office. end of message..

He owns the .com..

Now

The term is a generic term "widget cleaning manchester" and not something like "The manchester widget cleaning corp"

Can anyone tell me how we stand on this if the guy decides to take this further..

We were not trying to steal any brand name, just using common sense and using a generic term..

Surely if he had any rights millions of websites would be in jeapoardy of being claimed by others?

Many thanks..

 

IanTurner




msg:4211638
 1:57 pm on Oct 5, 2010 (gmt 0)

Well there are two routes he can take -

1 file a dispute with Nominet

see Policy [nominet.org.uk...]

2 Take you to court for Trademark Violation or Passing Off - you would need to consult a lawyer regarding this one - not really my area of expertise.

HuskyPup




msg:4211868
 7:32 pm on Oct 5, 2010 (gmt 0)

IANAL however:

The term is a generic term "widget cleaning manchester" and not something like "The manchester widget cleaning corp"


I would say that it is very unlikely they could do anything since they are generic. Just think of this, I constructed a site for a friend who owns a popular local hotel and bar. Of course with it being a hotel there are also many other UK hotels scattered about using the same name yet only one hotel got:

keyword1keyword2hotel.co.uk, only one got
thekeyword1keyword2hotel.co.uk, only one got
keyword1keyword2hotel.com, only one got
thekeyword1keyword2hotel.com

All the other several hundered hotels in the UK have all adopted a satandardisation of:

keyword1keyword2town.co.uk

or

keyword1keyword2hoteltown.co.uk

I have also constructed some photographers sites doing similar:

specifictownphotographer.ccTLD

or

specifictownphotography.ccTLD

It would be interesting to know how they base their rights to the .co.uk when they didn't have the nous to register it themselves in the first place!

What do they cost GBP 5-10 per annum, unbelievable?

majestic12




msg:4213500
 11:25 pm on Oct 7, 2010 (gmt 0)

Yes this is a real grey area, as far as I am concerned it should be first come first serve..

There are billions of domains such as

servicetown.com etc on the web, I consider this kind of phrase generic and nobody should have the right to it unless it is trademarked "before" any kind of dispute...

Also if they do try and claim it I believe the domain owner should be entitled to some form of compensation.. as you say Husky pup the complainer should have spent the money themselves..

Thanks for the replies...

Webwork




msg:4213521
 1:06 am on Oct 8, 2010 (gmt 0)

It's a bit more challenging to stake an exclusionary trademark claim to words that are generally used and accepted as descriptive. It's nice when the law "makes sense".

I imagine there would be a riot if someone attempted to claim exclusionary trademark rights to "New York (City) deli". :-/

IanTurner




msg:4213702
 11:23 am on Oct 8, 2010 (gmt 0)

Webwork the difficulty comes when a company has been registered as New York Deli Inc, they use this as their brand. Any company registering the domain newyorkdeli.com and trading in the same industry would then be in danger of breaking rules on 'passing off'.

Here in the UK there had been pressure from the government to get tradesmen (bricklayers, carpenters, roofers etc) paying tax and part of that was to try and get them to incorporate as companies by giving tax breaks, rather than being self employed - so what happened here is that we have a profusion of small companies with names like <town name> Builders Ltd, <town name> Flooring Ltd, <town name> Glass Ltd etc etc.

A lot of the people involved are not web savvy and thus won't have registered domains - and if another local company then registers the <town name> <trade> domain there is a lot of room for confusion in the eyes of the consumer, which is a line that the law here will have to take note of.

Webwork




msg:4213720
 12:18 pm on Oct 8, 2010 (gmt 0)

danger of breaking rules on 'passing off'


Ian, when it comes to domains and websites and businesses that choose to employ generic or geo-generic descriptive names, whereby "the Web becomes the medium or context of the claim of passing off", the law - now or in the near future - will have to come to grips with the reality that so many entities could rationally and legitimately claim fair use rights to "city + plumber, bakery, deli" that passing off MUST mean something more than "CompanyX is using a geo-service domain that is the same as our's".

Something more example: I use the geo-reference service domain which is the same as Geo+Service+Inc AND I use an image of "Inc's trucks" or "Inc's storefront" and/or I design my website to mirror Inc's site.

Granting a "right of exclusion" to geo-reference domains + generic service + "Inc" would allow people to essentially usurp or claim rights of exclusion to something they have no real right to, i.e., the name or identity of a city or region or a unit of governance - whose name or title belongs to everyone and no one.

IanTurner




msg:4214255
 11:43 am on Oct 9, 2010 (gmt 0)

I suggest that you do a search on the trademark database for a few place names - you will see many examples where these rights have been granted.

see [tess2.uspto.gov...]
and
[ipo.gov.uk...]

Webwork




msg:4214257
 11:53 am on Oct 9, 2010 (gmt 0)

I've probably done far more US) TM searches and research than most. In the handful (3 or 4) situations in the past 12 years where anyone (large IP firms and 1 annonying entity) paused to assert a right to one of my many domains I stood my ground (that they were overreaching) and kept hold of my domains. I have never had a domain taken by any means. That's entirely because I've stuck to generic descriptive domains. Also, I have a decent feel for what is and what isn't subject to "~rightful claims of exclusivity" . . and have practiced in the field of trial law / litigation for 30 years. (<- That last one probably counts a bit as unjustified/tactical/manipulative/bullying "threats of legal action" tend to have whatever the opposite effect of "intimidate me" is. ;) )

I'm not saying that it's impossible to secure a mark for a generic descriptive phrase/domain but I am saying that it may be hard to defend such a mark against attack, especially if someone attempts to claim rights of exclusive use, i.e., "no one else can use this generic descriptive word pairing for any other use or related use".

A careful reading of the application history for TMs, a careful reading of the grant of the mark for "exactly what" the mark has been granted, an examination of the surrounding or similar marks and how or why "they all work together", some knowledge of the history and practices of the Trademark Office, some knowledge of how those practices may or may not square with applicable law in any given case of the granting of a mark - including a knowledge of when and how another entity can file a challenge to a TM holder's "~claims of exclusivity" - is what I had in mind when answering . . but not quite lecturing . . on the topic of TMs and TM law, as the subject matter doesn't quite lend itself to speedy posts on domain forum message boards. ;), :-/ and :P

YMMV.

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