Hypothetical Question on TM issue

[domain_investor]

Assume for a rather generic term, like antiaging, there exists a magazine with that name, and it's trademarked. Does that mean that no one else could start a blog called Antiagingblog.com or AntiagingNews.com or a forum called AntiagingForum.com or a wiki called AntiagingWiki.com? Can someone really corner the whole market on anything information with a rather commonplace term like antiaging?

 

[jberryhill]

Magazine Title Cases:

I did the first three of these. There is one pending on "EuropeanCar.com" which I expect to go the same way. Much of the same brief was used in StreetRodder.com http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-0703.html

EMAP USA, Inc. v. Dick Jurgens d/b/a Mobile Dick's Cycle Clinic
WIPO Case No. D2001-0311
http://www..wipo.int/amc/en/domains/decisions/html/2001/d2001-0311.html
Magazine Title: “MOTORCYCLIST”
Domain: <motorcyclist.com>

“Respondent, contends that MOTORCYCLIST is a generic term. While this is true in some contexts, it is not a generic term for magazines. See e.g. H. Marvin Ginn Corp. v. International Assn. of Firechiefs, 228 U.S.P.Q. 528 (Fed. Cir. 1986) ("Fire Chief" not generic for fire-fighting magazine). Instead, the term as used by Complainant is descriptive of its magazine and is entitled to protection as a trademark if it has acquired distinctiveness, also known as secondary meaning.”

Prisma Presse v. Bill Connelly
WIPO Case No. DBIZ2002-00175
http://www.wipo.int/amc/en/domains/decisions/html/2002/dbiz2002-00175.html
Magazine Title: “GEO”
Domain: <geo.biz>

“Finally, the Panel agrees with the Panelists’ decisions in the cases cited by the Respondent, which have held that where a Respondent intends to use a generic disputed domain name in a non-trademark manner, then it is appropriate for the Respondent to use the domain name despite the fact that the Complainant owns a trade mark identical to the domain name. This conclusion can be applied to the circumstances of this dispute. Although the Complainant owns a trade mark registration of the term "GEO", this is a generic prefix which the Respondent intends to use, in a non-trade mark manner, for a business connected with the meaning of the prefix.”


Mariah Media Inc. v. First Place® Internet Inc.
WIPO Case No. D2006-1275

http://www.wipo.int/amc/en/domains/decisions/html/2006/d2006-1275.html
Magazine Title: “OUTSIDE”
Domain: <outside.com>

“The mark consists of a common English word that appropriately describes many goods and services. The evidence in the record does not persuade the Panel that the mark is so famous that it is “inconceivable that Respondent did not know about Complainant’s OUTSIDE family of marks,” as the Complainant asserts, or that the name “has no value apart from Complainant’s marks.” Indeed, the word appears in many other trademarks and domain names, as the Respondent demonstrates. Thus, even if the Panel accepted the doctrine of constructive notice based on the Complainant’s United States trademark registrations, it could not conclude that the Respondent’s choice of the Domain Name was most probably motivated by an intention to target the Complainant’s marks.”


General Media Communications, Inc. v. Crazy Troll c/o CrazyTroll.com
NAF Claim Number: FA0602000651676

http://domains.adrforum.com/domains/decisions/651676.htm
Magazine Title: “PENTHOUSE”
Domain: <PenthouseBoutique.com>

Complainant General Media Communications, Inc., is not entitled to preclude all other uses of the term "Penthouse," as is indicated by the fact that there are nearly 40 other live Penthouse and formatives registered with the PTO. It can only do so if the use is found reasonably likely to confuse the consuming public. 15 U.S.C. §1114(1)(a). However, to preclude Respondent's use on this basis, Complainant would have to prevail in a formal trademark dilution proceeding, since the UDRP does not provide relief on such basis.

 

[domain_investor]

From reading those, my bet is that, depending on the judge I guess, something like AntiagingGuide.com or AntiAgingReport.com would be okay even if there were an AntiAging magazine. I don't think those would be likely to be confused with the magazine given the term is so universal, and I'll bet I could find 10,000 domain name with the word antiaging in it.

 

[jberryhill]

And another one:

http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-0676.html

Complainant must do more than just show pay-per-click use to establish bad faith. Contrary to Complainant’s assertions, pay-per-click websites are not in and of themselves unlawful or illegitimate, e.g., Terana, S.A. v. RareNames, WebReg, WIPO Case No. D2007-0489; Fratelli Carli S.p.A. v. Linda Norcross, WIPO Case No. D2006-0988. Complainant has provided little evidence (as opposed to allegations of counsel) that Respondent selected the disputed domain name for a free ride upon Complainant’s mark. Complainant has made no showing that consumers and Internet users have been or are likely to be confused or to associate Respondent’s services with Complainant’s, and the Panel’s examination of the parties’ respective websites bears out this observation.

 

[maroulis]

Magazine Title Cases:

I did the first three of these. There is one pending on "EuropeanCar.com" which I expect to go the same way.

You' right in your assumption this went to the wires last night
http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-0676.html

 

[jberryhill]

You're right in your assumption

I'm freakin' psychic, I tellya.

Not a good week for the Complainant:

http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-0703.html
McMullen Argus Publishing Inc.
streetrodder.com - Complaint Denied

http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-0676.html
McMullen Argus Publishing Inc.
europeancar.com - Complaint Denied

You can just smell the $$$ burning....

 

[maroulis]

I'm freakin' psychic, I tellya.

Not a good week for the Complainant:

http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-0703.html
McMullen Argus Publishing Inc.
streetrodder.com - Complaint Denied

http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-0676.html
McMullen Argus Publishing Inc.
europeancar.com - Complaint Denied

You can just smell the $$$ burning....

indeed forgot to congratulate you John - another excellent execution - well done!