Revenge of the Nerds

[jberryhill]

This was a fun one:

thenerds.com -

http://www.arb-forum.com/domains/decisions/155179.htm

"The Respondent claims that the Complainant does not state when it acquired the alleged categorical distinctiveness in connection with a term that is commonly associated with technical subject matter. The phrase “the nerds” is likely more synonymous among consumers with the 1984 motion picture “The Revenge of the Nerds”. "

 

[Jack Gordon]

sounds about right to me

 

[pljones]

Nice decision John.

 

[namedropper]

"Complainant contends that Respondent’s only use comes by way of infringement upon the rights of a trademark holder and that the term “the nerds” is a not generic, but rather a term that is unquestionably capable of gaining trademark protection, which the Complainant has done. "

Complainant further admits to being dropped on his head as a baby and smoking copious amounts of crack before reaching the decision to try to trademark the term.

 

[lotsofissues]

Dr Berryhill,

I'm interested in hearing your response to this statement.


"Respondent contends that it has rights to and legitimate interests in the Domain Name because its business consists of the registration of abandoned and expiring domain names, such as the Domain Name.



In view of the Panel’s dispositive finding as to the existence of trademark rights, the Panel declines to reach a finding as to Respondent’s rights or legitimate interests. In so doing, the Panel does not find that Respondent has established rights or legitimate interests in the Domain Name."

Has the legitimacy issue been conclusively discussed in previous rulings?

 

[jberryhill]

"Has the legitimacy issue been conclusively discussed in previous rulings?"

Relative to Ultimate Search? Yes, e.g.:

http://www.arbforum.com/domains/decisions/96320.htm
The Respondent is using the domain "groceryoutlet.com" for a website that links to online resources for groceries and similar goods. The domain is therefore being used to describe the content of the site. The panel finds that this is a legitimate interest in the domain name.

http://arbiter.wipo.int/domains/decisions/html/2002/d2002-0189.html
The Respondent is entitled to conduct a business of capturing generic trademark names which become available in the marketplace – often through failure to renew registration.
[...]
The Respondent is using the name for what has been held in other WIPO decisions to be a legitimate business. Accordingly in the opinion of the Panel, the Complaint must fail.

 

[URLCollection]

Great Job John - This was a very interesting case! Nice work!!!