New Ruling Makes Domain Name Theft Harder to Prove

vectro writes "This article from the San Jose Mercury News says there is a new ruling that you need more than a trademark to force someone to give up a domain name. The actual domain names in question were avery.net and dennison.net (Trademarks of Avery Dennison, the label company but also common last names), but this is a great precedent."

Comments

trademark rights

[opus]

What nobody seems to understand is that trademarks are legally protected against misuse only in a limited area of business. Thus Steve and Steve were able to start a computer company and call it "Apple", and they weren't infringing on the trademark of Apple records.

There would be nothing legally wrong with my purchasing "ford.com" (if I could), as long as I didn't use it to sell cars.

But domain name squatters are still the third lowest form of scum on the net, after spammers and script kiddies. But there's nothing we can do about them, other than refusing to give in to their demands.
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This ruling may help...

[jd]

...but then, it might not.

It might make large companies all the more vicious in their dealings, scared of losing out.

Personally, I think if a person gets a domain name, in ALL INNOCENCE of any conflict, they should not be penalised or subject to harassment by large companies through the courts.

Likewise, if a person gets a domain name for the explicit purpose of damaging a company (through reputation, or financially) then I don't recommend they write a book on how to win friends & influence people.

Company names like "Ford" are difficult, as it's so common a word, as a personal name, the name of a water crossing, and the verb describing a type of movement through water. How can you prove what was intended?

The simple answer would seem to be: Well, what's the TLD? If it's a .com, then it would be reasonable to assume they mean the company. If it's something else, it's probably one of the other meanings.

Conflict is only going to exist if there are no SOLID, ENFORCED ground-rules on the type of domain you take out.

Not so sure.

[HEbGb]

While there have been a few cases of big companies going after a small, legitimate player who happens to have a domain name containing their trademark (ajax.org comes to mind), this is certainly not the norm. I do not agree that this is a 'great precedent'.

As a small-time businessman, I would be extremely frustrated if a domain name speculator decided to hold a domain name containing my trademark hostage to try and extort a few dollars from me. To protect against this, I've been reflexually registering domain names left and right which have anything to do with my work. This is annoying, time consuming, and expensive.

Trademark law is designed to provide protection to a term, phrase, or symbol to identify a specific product or company. Allowing unbridled infringement in the domain name area is dangerous business, and serves to dilute the value of that company's mark.

It is rarely the case of a 'big evil corporation' going after the little guy. Usually, it's an opportunist huckster trying to scam a few bucks off of value that they did not create. They get no sympathy or support from me, and I'm suprised that they're getting it from folks in this forum.

Re:Not so sure.

[paitre]

While I agree with your last point, I strongly disagree with your argument in general. This IS a good precedent to set for several reason, IMHO.
First and formost we have a Judicial body recognizing that there IS a difference between .com, .net and .org, and that many organizations have abused the registration process in an effort to "protect" their trademarks (and NSOL abuses it daily). A commercial entity with no ties to the network infrastructure has absolutely no business having a .net domain. .com was originally reserved for normal companies, IIRC, and that's where they should have sayed.
Second is that, in general, Tradmark law has been applied only in cases where the offender was involved in the same industry as the original owner. There is absolutely NOTHING that Ford Motor Co. can do to me if I were to open a computer repair shop called Ford Computing Services. There would also be nothing they could do to me if I had opened this shop ten years ago, and owned the domain ford.com.
I believe the ruling was intended to force a company who wishes to steal a domain from a previous registrant to prove actual harm to the company. If there is no harm to be proven, and particularly if the tradmark holder is in a different industry than the domain owner, there is nothing the holder can do. Don't like it? Tough. Trademark law is almost as silly as Patent law, however, I CAN understand the point behind Trademarks, I CAN'T understand the point behind software patents.

Re:Not so sure.... which side are you on?

[Sun Tzu]

By "...reflexually registering domain names left and right which have anything..." to do with your work, aren't you committing the same offense -- or at least, having the same effect -- as those you argue against? Shouldn't you simply pick the single, most appropriate, domain and let others, with their legitimate interests, have the others?

Right decision

[Tet]

I'm pleased to see this. It is without doubt the right decision, because:

• Avery Dennison is in no way related to network infrastructure, so they certainly shouldn't be granted exclusive use of a .net domain.
• As the article says, others have a legitimate claim on the domain. Just because it happens to be someone else's trademark has little bearing on anything. The domains aren't being used to infringe the trademark -- they're being used in a completely different context.
• There's only room for one of each domain on the Internet, and first come first served is as good a way of deciding who gets what as any other. Otherwise, domain ownership will turn into a farce, where the corporation that can afford the most lawyers always wins.

pffft

[Accipiter]

I don't think it's right to grab a domain (let's say ford.org), and wait for the company to pay you big bucks to take that domain from you. However, as in the case with earth.com, I DO think that the person who registered the domain, and is currently using it, has a right to continue using it under the name he/she chose.

These kinds of Corporations are the big bully in the schoolyard. They get a kick out of picking on the defenseless kids by the wall, and they get a domain name out of it too. Nice to see laws like this are being put into effect. (That earth.com deal really hit me.)

-- Give him Head? Be a Beacon?

Then you're part of the problem

[0xdeadbeef]

I've been reflexually registering domain names left and right which have anything to do with my work. This is annoying, time consuming, and expensive.

I don't know what you've been registering, but it sounds like what Colgate-Palmolive has done, registering hundreds of English words related to personal hygene.

If this is what you've been doing, then you're just as bad as a squatter! Except rather than extorting companies with identifiable names, you're snatching up the namespace to deny others entry into the market. A monopolist, rather than a thug, but still abusing the system.

They get no sympathy or support from me, and I'm suprised that they're getting it from folks in this forum.

We don't have sympathy for the squatters, we have antipathy towards the bureaucrats and corporate hucksters who think they have "rights" to particular domain names. They just don't seem to grok that DNS was not designed to protect trademarks, and trademarks were never intended to be implemented globally. Their own wrong assumptions are what's causing the problem. Squatters are no different than they are, just opportunists trying to make an easy profit.