detailed trademark situations, please read !

[polish_aristocrat]

--------------------------------------------------------------------------------

A friend who's not a DNF member asked me this question but since I am not a lawyer, I decided to ask it here.

anyway, here are the questions

1. Someone establishes a games website called alladin.com in 1999
someone else registers aladin.com in 2000

the game website becomes popular and registers a trademark for themselves in 2003. In 2005 aladin.com owner sues aladin.com for trademark violation, but WIPO considers the case from all points of view and decides that there's no apparent violation, because it cannot be proved that aladin.com has been registered in bad faith ( the trademark didnt exist in 2000, neither was the game sites popular ) and aladin.com is also a generic name ( "aladin" may not be a generic word, but this is just an example )

NOW MY QUESTION IS - f.e 1 year after winning the WIPO case, aladin.com puts the domain on the market and I buy it. Please note (!) that I am buying it BEING FULLY AWARE of the alladin.com popular website and trademark. So - does the fact that I am buying it, can put me in legal spotlight and I can risk being WIPOed and losing this name?

Basically, the guy owning alladin.com website could not prove that aladin.com was registetred in bad faith so he could not take it away from him.
But now i am buying it being aware of the trademark, so this could be perceived buying in "bad faith"? So from the legal point of view - does the WIPO decision in favor of aladin.com is a decision good only for the current owner who registered it in 2000, or for any other next owner too, such as myself? ( lets assume that after i buy it, i will run aladin.com in the same way as the previous owner, who won the WIPO case did ).

I appreciate any comments on this from experts.

2. Parking domains and trademark violations.

Same example as above, but without any WIPO case yet.
so I buy aladin.com which is an uncommon, yet still generic name, and instead of developing it, I park it on a popular parking service, which displays contextual ads.
Please consider the fact that I have no control over the ads.
But the ads displaying there, are ads for "games".
Now, alladin.com owner has a trademark for the name alladin being used to offer / promote online games.
Can he WIPO me because i infringe on his trademark because the parked page displays ads for "Games" althoguh I have no control over it?

The question comes down to how does "domain parking" is perceived by WIPO? From my perspetcive, if I own 150 domains names, and have a few of them developed, I can park the undeveloped ones on a parking service, as many people do.
So I can also park aladin.com, because I view it as inactive, because my developments plans for it will take 2 years. So by parking it, I make money from aladin.com and the ads indeed may seem to infringe on alladin.com trademark, but I may not be aware of it, because ( see above ) parking is done by default for all my inactive domains and in some future i may want to develop aladin.com into something completely different than a games network ( which wouldnt be a violation anymore, because "aladin" is a kinda generic word ).

How would WIPO decide on this? any previous similar cases?

best regards,

polish aristocrat


EDIT: in regard to 2nd case:

By parking the domain name aladin.com I let the parking service, run by a Google reseller for example automatically chose ads for my domain.
It is COMPLATELY not my "fault" or intention that most of the ads are promoting "online games". So am I really responsile for this in any way?
I would say the alladin.com owner should not have a problem with me, if anything, he should have a problem with Google, because they let their AddWords advertisers bid for the term "aladin" to promote their own gamins services...


edit : 3rd question, unrlated to the things above

does using a "whois privacy" service like the one from GoDaddy or NameCheap, can be a sign to WIPO that a domain name is registered in bad faith? I just wonder if it can be even just a minimal factor?

PS sorry for posting this accidently in the wrong forum few hours ago, please lock / delete that previous thread

 

[DNQuest.com]

In answer to #1 - read this thread

http://www.dnforum.com/f26/upcoming...zureus-com-knot-com-others-thread-145353.html

Ther have been decisions where"rights-to-succession" have applied, there are case where just the last registration was only considered.

Item 2 - With the above example, usage of the domain is important. If you park it, that would be construed as "bad faith" since you are not trying to establish interest in the domain and it would appear that you are using the domain to capture the traffic of the TM holder.

 

[polish_aristocrat]

Hi DNQuest, thanks for your input.

re no 1 - I am interested which rule applies more often - the right of succession or last change of ownership.

does it depend on any specific circumstances and factors?

re no 2 - its clearly stated that we are talking about a short, somehow generic domain ( although not used in every-day language and which is not a world popular brand like apple.com )
The owner of said domain name admits by himself that he only has a trademark to exclusively use that trademarked word in his own particular industry and as long as there are no links on the typo domain, matching his industry, then he doesnt feel like there's an infrigment or he can do anything.
that is why I was - and still am - feeling that displaying a default parked page, with no links to his ( taking the aladin.com example ) gaming industry - could be relatively safe

especially since there is absolutely no similarity or user confusion

anyway, thanks for your opinion, i will see if there are more opinions too

 

[jberryhill]

does it depend on any specific circumstances and factors?

For one thing, you want to specify in the transfer agreement that it is not just the domain name being transferred, but the goodwill in the ongoing operation of the domain name since it was begun to be used.

 

[DNQuest.com]

John,

Would there be a tansfer of goodwill if the previous owner just had it parked or left the domain inactive? or does teh domain have to somewhat in an "active" status to obtain the good will?

 

[jberryhill]

Probably not.

Yes.

 

[DNQuest.com]

Thanx John.