The latest domain news will likely have more cyber lawyers and domain registers rubbing their hands in glee.
Google has lost the first round to oust typo cybersquatter site “goggle.com”. Google complaint against the domain name's current registrant David Csumrik was dismissed by the National Arbitration Forum on a procedural technicality. Evidence presented to the panel suggested there was a prior agreement to "co-exist". The Uniform Dispute Resolution Policy was designed to give trademark owners a way to take domains from cybersquatters without resorting to expensive litigation.
The other “Goggle” tries to persuade thick fingered participants to answer some questions and divulge some personal details by offering prizes. More ominous and with further reaching implications is the second case.
British High Court rules “No UK customers, no dispute”
The High Court has rejected claims made by the US online dating company Plentyoffish Media that it was entitled to assert rights over UK-registered trademarks because it had a high number of UK visitors to its website. The judge rejected and dismissed the US firm's claims that Plenty More LLP (plentymorefish.com) was passing itself off as belonging to the US brand.
“A reputation in the UK is not sufficient: customers in the UK are required and that is so whether the business provides products or services," Justice Birss QC said in his ruling.
"Deciding who constitutes a UK customer from the point of view of a services business may involve tricky questions in some cases but as a matter of law in my judgment customers of some kind are required. Thus the Intellectual Property Office applied the right test when [it] sought customers (or a business) within this jurisdiction," he said.
So in the UK if you can prove that your use of a trademark has established "goodwill" in the business associated with that trademark, then this goodwill is protectable, and if another business "passes off" their services as being yours and appears to claim that their services are yours or that you are in some way connected or have endorsed the services, then you can take action. You can claim damages or seek an injunction to prevent that use, so long as you can show that you have or are likely to suffer damage as a result of the use.
Follow the logic...
- Plentyoffish operated its own online dating service at "plentyoffish.com"
- Plentyoffish claimed that it was the second most viewed online dating website in the UK and one of the 150 most visited sites in the country in total.
- This, it claimed, entitled it to "goodwill" over its signs, according to the ruling.
- Plentyoffish was free to use, but the company asked visitors to sign up as members.
- Plentyoffish claimed that Plenty More had infringed its rights by using the trademarked sign "plentymorefish" in a website domain for its subscription-based online dating service, which had been registered in the UK in April 2007.
- Plenty More's website was confusing and caused some visitors to register with the subscription service in the mistaken belief that it was Plentyoffish's free service instead, the US company had argued, according to the ruling.
- Plenty More's use of 'plentymorefish' "would cause a misrepresentation and ... damage would be suffered or would be likely to arise," Plentyoffish had claimed.
- Plentyoffish claimed that the visitor numbers alone meant it was entitled to goodwill rights to the sign. It said that visitors of the site could be treated as "customers" because they were "exposed" to the site's advertising and even though the dating service it provided was free.
Justice Birss rejected the argument and said that only members of the site could be considered as Plentyoffish's customers.
"The only class of people who could be customers of the [Plentyoffish's] business in the relevant sense were the members, the people who joined the site and used the dating services," Justice Birss QC said in his ruling.
"There was no evidence that any such people existed in the UK in April 2007. [The IPO's] decision was right. The appeal will be dismissed," the judge said.
Trade marks can be also be protected by registering the trade mark at the UK Trade Marks Registry. As I stated initially, cyber lawyers and domain registers are rubbing their hands in glee.
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