UDRP view of Pay per Click

[domaingenius]

Correct me if I am wrong but I believe that someone on this legal forum posted
something about UDRP not inferring badly against Pay Per Click. Would appreciate a pointer to that again. I am at this precise moment typing a witness statement in which the other party is strongly implying that pay per click does not give me any IP rights in the name I am using for the website.
I of course am referring to Google Adsense as being based on that (I think John hinted at that ?) and hardly 2nd class.

Any points to include and Wipo cases appreciated.Must conclude the wit stat tonight.

Thanks
DG

 

[steveatvillas]

Hey DG:

It is true that more and more panels are taking a dim view of PPC, and I just read one decision stating that "all PPC sites do is clutter up the internet". Having said this, they also say that PPC is not the issue in and of itself. It is how the domain was regged, and did this registration violate the definitions of "Registration in Bad Faith." You want to look at UDRP clause 4a. You also want to look at UDRP clause 4.c. as to your legitimate rights of use.

If you're good at research, he's what you can do:

1. WIPO is now categorising decisions and main points based on a myriad of reasons. Here's the link to that general page: http://www.wipo.int/amc/en/domains/search/legalindex.jsp

2. Scroll down the form until you get to section II.C.5.f. and you'll see a whole list of subjects. Ones I just looked at are Speculation: iv, and Parking: xvi.

3. Make yourself a strong pot of coffee and prepare to do a lot of reading. You'll want to read the Complainant's and Respondent's charges against each other, then skim down to the findings.

It is rarely the case that Parking or PPC alone will sway the decision...it's down to more substantive, legal, IP infringement law issues. It's pretty black and white, really.

Hope this helps.

Steve

Sorry, DG, I should also say that Panels do look at usage after the fact as a contributory factor of "Use in Bad Faith".

The fact that you are using Goog to supply your PPC ads is not any more of a feather in your cap as any other upstream link provider. As to the narrow field of law regarding IP, WIPO is going to look at whether your name is infringing the rights of a TM holder (and ® trumps ™), causes confusion in the marketplace, infringes the "CLASS(ES)" of the TM holder.

If I knew more particulars of your case, I might be able to help steer you better.

 

[domaingenius]

Thanks for the below,useful,

DG

Hey DG:

It is true that more and more panels are taking a dim view of PPC, and I just read one decision stating that "all PPC sites do is clutter up the internet". Having said this, they also say that PPC is not the issue in and of itself. It is how the domain was regged, and did this registration violate the definitions of "Registration in Bad Faith." You want to look at UDRP clause 4a. You also want to look at UDRP clause 4.c. as to your legitimate rights of use.

If you're good at research, he's what you can do:

1. WIPO is now categorising decisions and main points based on a myriad of reasons. Here's the link to that general page: http://www.wipo.int/amc/en/domains/search/legalindex.jsp

2. Scroll down the form until you get to section II.C.5.f. and you'll see a whole list of subjects. Ones I just looked at are Speculation: iv, and Parking: xvi.

3. Make yourself a strong pot of coffee and prepare to do a lot of reading. You'll want to read the Complainant's and Respondent's charges against each other, then skim down to the findings.

It is rarely the case that Parking or PPC alone will sway the decision...it's down to more substantive, legal, IP infringement law issues. It's pretty black and white, really.

Hope this helps.

Steve

Sorry, DG, I should also say that Panels do look at usage after the fact as a contributory factor of "Use in Bad Faith".

The fact that you are using Goog to supply your PPC ads is not any more of a feather in your cap as any other upstream link provider. As to the narrow field of law regarding IP, WIPO is going to look at whether your name is infringing the rights of a TM holder (and ® trumps ™), causes confusion in the marketplace, infringes the "CLASS(ES)" of the TM holder.

If I knew more particulars of your case, I might be able to help steer you better.

If I knew more particulars of your case, I might be able to help steer you better.

This actually is an opposition to a Trademark Application that I am taking against a company who started using the name (same as my domain) 15 months AFTER I registered and started using the domain.

What I need to find, quickly ,is one goodwipo/udrp case that says that pay per click is not bad and/or is a legit use .

Any helpers ?

DG

Can anyone help, please ? Only have a day to lodge the statement so need to find one
and havent done so yet . Inthe long run it may help others also.

DG

 

[jberryhill]

http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-1816.html

In parts of the Complaint the Complainant gets close to suggesting that the mere commercialization of the Domain Name via a pay-per-click parking site is inherently abusive. That is not the case. All depends upon the Domain Name and the Respondent’s motives in relation to it.

 

[steveatvillas]

Ah, well, this is quite a different situation. You are lodging an opposition against a Registered Trademark (®) application, during the opposition period. Correct?

And, to strengthen your opposition, you are citing the existence of a domain name that is COMPLETELY IDENTICAL, no more and no less, to the word mark now in application? Correct?

You need to show prior art, prior useage in commerce, and what's more that the NICE classes of the TM application are in the same field of commerce as is the use of your domain name.

I'm further assuming that in order to demonstrate your use in commerce, you are trying to substantiate that an existing website is use in commerce.

Question: Is your site a full-on website with content, a Raison d'etre, and Google Adsense for Publishers as your source of PPC income, or is it just a parking company's lander with PPC?

I've got to tell you that opposing a Trademark Application is substantively different than a WIPO challenge, either as Claimant or Respondent. And you really should be using a lawyer whose speciality is Trademark Applications and opposition. It's a narrow field.

But, If I read you right, you're looking for a WIPO case wherein it is clearly stated, "Yes, a PPC site is a legitimate business use."?

Let me know if I'm close to the issue or not. Then maybe more help can be given.

Steve

 

[domaingenius]

ah, well, this is quite a different situation. You are lodging an opposition against a registered trademark (®) application, during the opposition period. Correct?

yes, the other party has sought a trademark

and, to strengthen your opposition, you are citing the existence of a domain name that is completely identical, no more and no less, to the word mark now in application? Correct?

yes correct, but not to strengthen it is the sole basis for opposition

you need to show prior art, prior useage in commerce, and what's more that the nice classes of the tm application are in the same field of commerce as is the use of your domain name.

the domain was registered 15 mnoths or so before the other party
and used in same classes i am objecting to

i'm further assuming that in order to demonstrate your use in commerce, you are trying to substantiate that an existing website is use in commerce.

yes

question: Is your site a full-on website with content, a raison d'etre, and google adsense for publishers as your source of ppc income, or is it just a parking company's lander with ppc?

it serves up google adverts, but is used with namedrive

i've got to tell you that opposing a trademark application is substantively different than a wipo challenge, either as claimant or respondent. And you really should be using a lawyer whose speciality is trademark applications and opposition. It's a narrow field.

hmm, if only one could afford a lawyer but i cannot. I have been through then wringer before and won 9 out of 10 times in high court ,even defence barrister for other side said i should be a barrister ,hmm if only.

but, if i read you right, you're looking for a wipo case wherein it is clearly stated, "yes, a ppc site is a legitimate business use."?

that is good and how i have pleaded it and served it this afternoon

let me know if i'm close to the issue or not. Then maybe more help can be given.

yes steve ,dead right pretty much

steve

1

 

[jberryhill]

Let me know if I'm close to the issue or not. Then maybe more help can be given.

Knowing what country he's doing this in might also be a useful data point.

Question: Is your site a full-on website with content, a Raison d'etre, and Google Adsense for Publishers as your source of PPC income, or is it just a parking company's lander with PPC?

I'm curious to know why you think that makes a large difference.

Would you say that the subject of US TM Reg. No. 2721033 is not a use in commerce? The USPTO apparently disagrees.

 

[steveatvillas]

Hey, great minds think alike. Doesn't sound like you're a novice either. And as you're using the terms "barrister" and "high court" I'll chance it that you're in Old Blighty?

Anyway, sounds like you've given it your best shot, and in light of the recent WIPO cases where a Trademark holder can get possession of a name even after the fact, you've done the absolute right thing to foreclose any further action.

If you get down to where the examiner is leaning the other way, you might prevail in forcing the TM applicant to make an "exception" to his mark for the domain name. Not as good as a complete shoot down, but a fall back point.

But, hey, if you're 9 for 10 I'm preaching to the choir.

Remember to wear a suit for court ;-)

Good luck to you, and PM me sometime. I'm in Marbella area if you ever get down this way, first and last shouts on me....

Steve

 

[domaingenius]

Knowing what country he's doing this in might also be a useful data point.



I'm curious to know why you think that makes a large difference.

Would you say that the subject of US TM Reg. No. 2721033 is not a use in commerce? The USPTO apparently disagrees.

Yes that US trademark may come in usual ,thanks

DG

Hey, great minds think alike. Doesn't sound like you're a novice either. And as you're using the terms "barrister" and "high court" I'll chance it that you're in Old Blighty?

Anyway, sounds like you've given it your best shot, and in light of the recent WIPO cases where a Trademark holder can get possession of a name even after the fact, you've done the absolute right thing to foreclose any further action.

If you get down to where the examiner is leaning the other way, you might prevail in forcing the TM applicant to make an "exception" to his mark for the domain name. Not as good as a complete shoot down, but a fall back point.

But, hey, if you're 9 for 10 I'm preaching to the choir.

Remember to wear a suit for court ;-)

Good luck to you, and PM me sometime. I'm in Marbella area if you ever get down this way, first and last shouts on me....

Steve

Yes ,unfortunately, I am in the UK, Surrey. Thanks and will post the results.
In fact may well be in Spain sometime in next months so will give you
shout when/if I do actually get there.

DG

 

[jberryhill]

After you guys are finished trading paella recipes, let us know how the case works out.

 

[steveatvillas]

Hey, John, you're invited too!

 

[domaingenius]

After you guys are finished trading paella recipes, let us know how the case works out.

Yep will do John .

DG