Bullshit is a wonderful word. I recently finished reading "On Bullshit" - a treatise published by Princeton Press, which is a great treatment of the subject. I welcome you to DNForum and invite you to call me on mine whenever the occasion arises. If you go back far enough, you might even find the Lewis v. Berryhill cage match. Many a fine bovine turd was polished on both sides of that one.
I understand the OP to be asking in some type of WIPO or similar dispute
Well you said...
not shared by statutes and trademark law that govern domains.
The UDRP is neither a statute, nor a law, but a contract clause. So, if we are talking about statutes and laws, there is support for the proposition that, yes Virginia, parking does constitute a service in commerce.
Then there are sites like, oh one I've heard of is called Google.com. There is practically no content at all on their web page, and when you enter a search on that big entry line, all you get are paid ads and search results with links to other websites.
It's pretty cheesy of someone to take a perfectly good domain name like Google.com, and then just use it to provide links to other websites, I realize, but even that obscure outfit managed to convince quite a few folks that they provide a marketable service of some kind.
Now of course, prevailing in a WIPO dispute doesn't require IP rights at all, so I guess that's why I had a different take on what the OP was asking about.
In the context of the UDRP, the available rights are "legitimate rights and interests" which mean a whole lot of things other than trade or service mark rights.
There is a long line of cases to the effect that providing paid advertising directories constitutes a bona fide use of a domain name, constituting a legitimate right within the relevant part of the UDRP....
http://www.arb-forum.com/domains/decisions/96320.htm
Complainant alleges that Respondent derives revenue from its site when users click on the links. If this allegation were substantiated, it would support a finding of a legitimate right or interest in the domain, not bad faith. The mere fact that Respondent gains income from the domain name is not, in itself, bad faith no more thannor is the fact that not all of Respondentâs domain names resolve to useful or informative websites.
Now, as far as his very specific question on opposing an application, the OP might want to take a look at the pleadings in, e.g. the oppositions filed against USTM Appl. No. 76/200010
http://ttabvue.uspto.gov/ttabvue/v?...ameop=&propname=&pop=&pn=&pop2=&pn2=&cop=&cn=
Not sure if that link, or this link:
http://ttabvue.uspto.gov/ttabvue/v?pno=91177914&pty=OPP&eno=1
...are the appropriate ones
But... I will be interested to get your take on why you believe the complaint in that matter to be precluded by the trademark statute or, in other words, to have my own bullshit exposed.
He says nothing about registering a mark, only parking. So, for that reason, I stand by my answer, and without cursing.
Well I'm utterly mystified by what distinction you are trying to make there. I'd ask WTF you mean, but I'm not sure if the F is okay by you.
He is asking whether parking accrues IP rights. "Registering a mark" does not, by itself, confer IP rights. In order to register a mark, you have to have a mark - in other words you have to have accrued IP rights in order to get a 1A application registered.
Hence, I pointed out two examples of parking in which, yes, the USPTO had no difficultly recognizing that indeed the activity was the conduct of a service in commerce, and in connection with distinctive names for providing the service. I mean... is there some way to register a mark in connection with an activity which is NOT susceptible to the accrual of IP rights?
Otherwise, I'm not sure I understand what you are saying in reference to our statutes and laws not recognizing advertising (which is what parking is) as a use in commerce susceptible of accruing a TM right - whether registered or common law.
Any ideas or knowledge of this being pleaded before ?.
Reading your question more carefully, I gather:
1. You have domain name XYZ.com. You are using it to provide advertising services.
2. Someone has applied to register XYZ as a mark, and it has reached publication for opposition.
3. You want to oppose their application.
Of course there is a constellation of other specific facts, such as whether your domain name is used
as a mark in relation to the advertising you are conducting. There are also questions of whether it makes sense in the context of what they are claiming as their goods or services.
However, an opposition need not be a Battle Royale to the death. Like most legal proceedings, most oppositions settle. An opposition proceeding can be an ideal context in which to secure a non-enforcement agreement, if your underlying concern is that they would otherwise use their trademark registration to come after your domain name.
The basic facts of the opposition I've linked above are:
Applicant is seeking registration of "@POS.COM" as a mark for certain services relating to Point-Of-Sale terminal software.
Opposer(s) own interests in the domain name POS.COM, which is being used as a PPC page to advertise Point-Of-Sale goods and services.
Now, I have no idea why some marketing genius thinks it was a good idea to intend to use "@POS.COM" as a trademark when they don't even own the domain name POS.COM.
But the domain registrants are not going to wait around to find out, so they indeed are opposing registration of the mark, as likely to cause confusion or mistake relative to the source of goods and services which are being provided by means of their domain name.
Now, of course, POS can stand for any number of things, but I don't want to be scolded by Eric again for being naughty.
