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English Courts Rule against Trademark Holder in Domain Dispute

Is this ruling legalising cybersquatting?

     
4:11 pm on May 26, 2005 (gmt 0)

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The High Court of England and Wales has struck down a trademark complaint against the owner of PHONE4U.co.uk. The trademark holder, Phones 4 U, Ltd., brought the action claiming charges of passing off and trademark infringement. Both claims were rejected with the court ruling that the term "phones 4 u" was descriptive and that it had not acquired sufficient distinctiveness through use. The court accepted the domain owner's contention that when he registered the domain he was unaware of any trademark rights to the term despite one of the defendant's stores being located near the domain owner's office.

Just received this from sedo newsletter... there is something interesting about it.

I do have some concern as I have a domain which I am developing, the name I believe is generic, but the trade mark for it is held by a large company..

They do not use the trade mark, but have simply registered it...

My fear has always been that after the site is fully up and running I will find myself in legal dispute.. do you think this ruling is of help to me?

As I've said they do not trade under the name and I will be... The difficulty is I would like to trade products under that name and not just hold it as a domain name...

4:17 pm on May 26, 2005 (gmt 0)

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When in doubt.... stay safe. If you don't believe an alternate name would be just as good then it looks like you are hoping to cash in on somebody else's brand/trademark.

after the site is fully up and running I will find myself in legal dispute

The more successful your site / the more of a thorn you prove to be for them the more likely they are to come after you. It would be a disincentive to invest in the site.
5:35 pm on May 26, 2005 (gmt 0)

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Nope your not reading it right oddsod...

My domain is a commonly used language term covering the product... it's hard to find a similae? but let's say shoelaces.com

that covers all kinds of shoelaces, it's generic...

yet let's say 'clarks shoe company' have a trademark on shoelaces which 1, they do not use it to sell shoe laces but simple hold it as a squat.... and 2, do not sell any products under that name...
there is no brand ...

Therefore perhaps similarly to the court ruling, just because they hold the trademark to shoelaces does not mean that they can claim trademark over every dictionary entry and indeed they would already have no claim to my domain...

I would like to add 'shoelaces' to my labels and wondered if it was running under that does that negate their claim?

5:38 pm on May 26, 2005 (gmt 0)

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Correct me if I'm wrong but don't they actually reject trademark requests for terms that are too generic? i.e. you couldn't trademark "computers" or "drugs" or "internet" or "shoes". The fact that they have a trademark for it may suggest it's not generic enough.
5:59 pm on May 26, 2005 (gmt 0)

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let's not get in to symantics ...

sufficient to say the tenor of what I am saying is the case ... I don't want to expand on the details here while the project is in development.

11:34 pm on June 3, 2005 (gmt 0)

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In general, you will only lose a domain if the person claiming against you can prove that when a surfer types in a specific phrase they are specifically looking for their site.

There was a recent claim against datingdirect.com who were offered and purchased datingagency.com (for example) The owners of the operating datingaganecy.co.uk (again for example) site took datingdirect to court claiming that surfers typing datingagency into their browsers were obviously looking for them as an established site.

The claim was thrown out as the judge declared that the term 'dating agency' was generic and did not soley relate to the claiments site, and that in fact, dating direct was a dating agency of kind.

1:01 am on June 4, 2005 (gmt 0)

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Thanks M3Guy

I think that would mean I'm safe...

As it is a generic name and the company do not use it for anything, the domain is safe...

I would like to sell products under that name also, but I think even although it is unused, they do hold the trademark and that would be a different matter...

I could try and add something on the end of it? such as Co' or indeed add original to the begining?

I will take this further with a solicitor specialising in trademarks ...

If you can point me to any information on that court ruling it would be appreciated..

Thanks again