Webwork - 4:03 pm on Mar 12, 2008 (gmt 0) Parked is not the equivalent of "unused", especially given the advances in "feed technology". Many of the generic domains, that likely would be "developed" as directory type websites, would operate in substantially the same manner as they do now, as "parked domains" They would
Alrighty. As explained below and as worked out in an exchange of stickymails sent after this thread appeared, we are going to reframe the issue a bit in hopes of building a general trademark analysis and (unqualified, "don't rely on it", talk to a lawyer no matter how good it is) legal analysis thread. So, here goes. Feel free to join in to whatever degree you have experience, training or deeper insight into the analysis of domain name + trademark issues.
Parked is not the equivalent of "unused", especially given the advances in "feed technology". Many of the generic domains, that likely would be "developed" as directory type websites, would operate in substantially the same manner as they do now, as "parked domains" They would
So, if it - what you see in your browser - walks like a duck (database driven webpages), quacks like a duck (website listings appear on those pages as in any directory fed from a database) and flies/poops like a duck (has the operational equivalent of paying "members") then it's a bit of a strain to say it's not a website. Parked pages, which now also include a smattering of content (news feeds, public domain content, etc) are websites, as much as the great variety of anything else that calls itself a website - such a MFA "websites", product feed "affiliate websites", etc.
So, I'd remove from the analysis the fact that the "domain is parked". Parking is just a form of auto-generated website creation and there are millions of auto-generated "websites" which - in addition to the above - include blogs that are little more than embeded RSS feeds, "websites" that spit back to Google what the websites "system" already pulled from Google, and on and on.
IMHO, salesmark/trademak analysis really needs to move beyond "is it parked"? Parking is irrelevant to "infringement" or "stakes claiming".
Or, maybe not, as even "as parked" the domain-web-site "exists" and therefore - if it pre-exists "your (version of) a website" your client may well be "on notice" of prior "use". That notice may be a fact of some importance in some settings.
The more relevant issues might be:
1. NAF / WIPO, a/k/a "the cheap route". At NAF and WIPO the fact that the domain registration pre-dated your client's service mark will likely be the Achille's heel. Your client likely won't prevail.
2. Prior knowledge. Who had the prior knowledge? My guess is the person who registered what I'm guessing is as Letter(I-,E-) + Word domain had no prior knowledge of your client's company. Therefore, it's your client who likely had prior knowledge of the registration by the .Com registrant. Push comes to shove, if your client chooses to push, it's possible that "with that knowledge of the pre-existing registration and use" your client could lose their rights. Longshot? Maybe. What if the registrant lives in another country and counters your move with legal action in their country - where the rules are a bit different? What if your claim of a salemark is countered with a common law claim? What if the 2 marks may have distinct uses? What if your client failed to disclose knowledge of the existing "use" when applying for a salesmark?
P1R, trademark and salesmark is sufficiently complex and sufficiently nuanced that it really isn't a fruitful "forum topic". In most cases, of late, trademark threads have recently been quickly put to rest. The reason I'm responding to this one - besides the fact that you are by far one of the most helpful members of WebmasterWorld (and a mod, too boot) - is that your question about "parked" and "unused" is one that continues to play a role in the minds of many and I wish to address that issue as a unique issue.
IMHO, the idea that "parking is a factor" - in 2008 - has or is darned near a 'legal distinction anachronism'. I don't believe parking, per se, has ever been an important fact in trademark analysis for if it was the plethora of WIPO and NAF rulings would long ago have established that parking means unused mean and that 'you lose something'.
But that's not the case. Not even close.
Parking isn't at all what the trademark experts - those sitting as adjudicators - have focused on. It has only been an issue where those parking domains were plainly "trading off" the famous or well established - and typically non-generic - "brand". (You can find some reason rulings where 3 letter .Com domains, which are typically immune from "we own those 3 letter" claims of right because there's just so many ways 3 letters can be deployed, have lost their domains because the person parking the 3 letter domain chose to specially target ads relating to the most popular "trademarked and non-generic use" of those 3 letters.)
Okay, that's the parking side of the analysis.
The brand, trademark or salesmark analysis, which tends to be fact specific, complex and nuanced, is really beyond the methods and practical abilities of this space. We really can't help your or your client with a targeted analysis, but perhaps we can flesh this out with a bit more generic advice.
So, P1R, if you've got any other interesting angles on this issue - ones that can keep us in the generic analysis space - I'm game, 'cause I plan to use this thread as an opportunity to build a bit of a generic analysis opportunity . . as time allows. :)
Feed us as much generalized info or questions as you care, P1R, as I know you to be a very smart fella with great writing skills and this could be a good object lesson in generic trademark analysis. In other words, help me out here as trademark is an important issue in this space but, to develop a "generic use thread" requires a certain special touch - which you have, in framing issues, integrating hypotheticals, etc.
IF anyone else has any generic trademark analysis advice to offer now would be a great time to post it up.
[edited by: Webwork at 4:51 pm (utc) on Mar. 12, 2008]