Opinions Please

[Data Glasses]

Below is the reply i have just received after sending the ***** council an invite to join *****forum.com.au,

Dear Rod

While we wish you well with your new venture, I would like to point out that the ***** Council of Australia has for 18 years published a magazine called ***** Forum and has a related website, *****forum.org.au. Associated with that are 8 weekly or fortnightly ebulletins that cover many of the things you are promising.

So we are not too happy about your adoption of our title and suggest it would be better for both of us if you choose another.

Best regards

R****** L****


This was my reply :

Hello R******

Please note a trademark search was done before registering the domain name and i will be continuing with the forum

I also wish you well with your website

Regards

Rod

 

[joe]

Does what it says on the tin. Hard to imagine how they could prove bad faith.

 

[DomainNames]

I think its a good name and I have never heard of ***** council of australia or used *****forum.org.au... If they wanted it they should have registered it previously... "You snooze you lose"

Probably best if you dont talk with them any longer as they seem to think they own generic words

 

[Bacon Farmer]

Sounds like they would have a good case for a common law trademark and could say you are passing off. I helped retrieve a domain recently in similar circumstances.

 

[snoopy]

Sounds like they would have a good case for a common law trademark and could say you are passing off. I helped retrieve a domain recently in similar circumstances.

Doubt it on a term like that. Assuming it is used for a forum it is descriptive of what it is, if Rod was planning on launching a magazine that would be a different matter.

 

[Data Glasses]

Doubt it on a term like that. Assuming it is used for a forum it is descriptive of what it is, if Rod was planning on launching a magazine that would be a different matter.

That is the way i see it, they actually seem more focused on a magazine rather than an actual forum persay

I did get one more email just after posting :

Yes, we have not registered a business name, unfortunately. If you did a search you would have known that you were choosing a domain name that was almost exactly the same as ours. That seems a curious strategy to me. Why would you do that?

My reply was :

Richard

Your question is like asking why did someone register cars.com.au and not expect someone else to register cars.net.au. (example only)

I have chosen a generic term for my website and as stated did the correct thing by searching for a trademark before i started the site

There is nothing underhanded or a premeditated strategy other than wishing to run an active music discussion website

At this point i will leave it at that and wish you well in the future

Regards

Rod

 

[payattention]

KeywordForum.com is very popular for websites (which is obviously your strategy as well as many other webmasters) regardless of the niche and isn't underhanded or a "curious strategy" at all. I'm always searching for topic forum or topic forums for subjects that I'm interested in.

I'd tell him where to stick his flute but judging by his responses, he probably did that a long time ago.

 

[Bacon Farmer]

Assuming it is used for a forum it is descriptive of what it is,...

It might be descriptive of the underlying site but I don't think "trademark" laws take that into account.

If they can prove searchers or visitors are looking for the website of the magazine and believe it is the correct site associated with the mag then that would be the issue.

 

[Data Glasses]

It might be descriptive of the underlying site but I don't think "trademark" laws take that into account.

If they can prove searchers or visitors are looking for the website of the magazine and believe it is the correct site associated with the mag then that would be the issue.

They do not have a trademark and they have not even registered a business name, they do not actually have an active forum on the site, it is promoted as music forum magazine, my site does not offer a magazine of any description

I also believe that because they are using the .org.au extension they are promoting themselves as an organisation, where as i am not implying anything like that

 

[Bacon Farmer]

If they have a common law trademark they don't need to register anything. You need to look up what that means.

http://www.google.com.au/search?q=c...azrAeusf2TBg&ved=0CAcQpwUoAQ&biw=1366&bih=653

It means that if they can prove that people are confused or think your site is their site then you could be in trouble (limited to proven damages of course + the most expensive bit > lawyer fees ).

 

[snoopy]

It might be descriptive of the underlying site but I don't think "trademark" laws take that into account.

Of course it does.

If they can prove searchers or visitors are looking for the website of the magazine and believe it is the correct site associated with the mag then that would be the issue.

The sites are nothing unlike.

 

[snoopy]

They do not have a trademark and they have not even registered a business name, they do not actually have an active forum on the site, it is promoted as music forum magazine, my site does not offer a magazine of any description

I also believe that because they are using the .org.au extension they are promoting themselves as an organisation, where as i am not implying anything like that

Just reading this again it sounds like a lawyer hasn't contacted you, rather a staff member/manager? (is that what happened?) Personally I wouldn't be spending much time on this.

 

[Bacon Farmer]

... if Rod was planning on launching a magazine that would be a different matter.

Probably doesn't matter so much magazines but same industry - music.

 

[Bacon Farmer]

Of course it does.

The sites are nothing unlike.

They only need to prove some people were confused but don't they.

 

[Bacon Farmer]

Of course it does.

The sites are nothing unlike.

You mean they're both about music?

 

[DomainNames]

Spacey, dont worry about it. Dont waste sleep thinking about what might happen.... In this case it probably wont but If they ever send you a cease and desist or take you to audrp post it here. Several of us might be able to lodge defence ideas for you.

"Music Forum" is a totally generic term...

My advice set up a monetised page now then just get some forum software ( such as vbulletin) .

Do not continue discussions with them from here or it might backfire.

Even a common law trademark or trademark does not mean they would get the name anyway in a dispute proceeding. In fact often you can even get their trademark cancelled due to it being too generic!

Sadly SOME lawyers love these cases as they see $$ representing both sides. Lodge the defence yourself or use Coopers Mills from this forum if it ever went to audrp.

putting forum behind an industry has been around for as long as the internet carforum boatforum musicforum tennisforum ....... generic terms are generic terms. MOST dispute resolution panelists understand this now... ita abit like carsales boatsales trucksales......

Look at this for a good example of how hard some companies will try to bend the rules ... make accusations...to get a domain name and ultimately lose and be left with huge legal fees, bad world publicity and egg on their faces ! http://www.wipo.int/amc/en/domains/decisions/html/2004/d2004-0047.html

7. Reverse Domain Name Hijacking

In the Panel’s view a finding of reverse domain name hijacking is warranted if the Complainant knew or should have known at the time it filed the Complaint that it could not prove one of the essential elements required by the Policy. The Panel is supported in this view by the earlier decision of underlying this Futureworld Consultancy (Pty) Limited v. On-line Advice, WIPO Case No. D2003-0297. In the Panel’s view such a finding is particularly appropriate where the Respondent’s registration of the domain name predates the very creation of the Complainant’s trademark.

In this case, the Panel is concerned by the Complainant’s disingenuous conduct in relation to priority. The Complainant fails to disclose when it commenced business using or adopted its mark. The Complainant claim that it was unable to determine the date the Respondent’s initial registration of the domain name runs counter to its own evidence in Annex A showing a creation date of October 1996. In the Panel’s view this goes beyond the border of vigorous prosecution and falls in to the realm of abuse of the procedure by the Complainant.

In the Panel’s view the Complainant’s actions must have inevitably imposed burdens and costs upon the Respondent. The Panel is also concerned that abusive complaints risk diminishing the credibility of the entire UDRP process. The Panel finds reverse domain name hijacking.

 

[snoopy]

They only need to prove some people were confused but don't they.

Not true, they need to prove they have a trademark (debatable) and the need to prove infringement of that mark (no chance).

You mean they're both about music?

One is a forum, the other a magazine. Saying they are both about music doesn't mean anything. That is the ordinary use of the term.

 

[Bacon Farmer]

Even a common law trademark or trademark does not mean they would get the name anyway in a dispute proceeding. In fact often you can even get their trademark cancelled due to it being too generic!

In the situation I was involved with, the common law trademark allowed the owner to file for and get the generic words registered as a trademark. It was rejected initially but having proved the business had been in operation for 20 years plus it was eventually approved. ie common law trademark plus decades of trading > registered trademark.

 

[Bacon Farmer]

Not true, they need to prove they have a trademark (debatable) and the need to prove infringement of that mark (no chance).

Of course it's debatable whether they would but if you don't think they have a bloody good chance of getting it after using it for 18 years and with having a reasonably high profile in the industry, then you're not being truthful.

Actually they need to prove "likelihood and/or actual deception/confusion in the public". No chance really? Same exact words, same industry - "no chance" at all of any confusion. You are joking. All they need to do is take a poll of their subscribers and ask them. I bet they could find a couple of confused clients no worries.

One is a forum, the other a magazine. Saying they are both about music doesn't mean anything. That is the ordinary use of the term.

If they were using the words in two different classes or industries then you might be right but within the same industry it actually does mean something.

 

[DomainNames]

In the situation I was involved with, the common law trademark allowed the owner to file for and get the generic words registered as a trademark. It was rejected initially but having proved the business had been in operation for 20 years plus it was eventually approved. ie common law trademark plus decades of trading > registered trademark.

Hi Bacon Farmer, as you probably know trademarks can be contested and cancelled.. It happens more often than people realise. Also as Domain name Policy states a trademark or "common law trademark" does not give automatic rights to any domain name . It also is not the only thing needed to win a domain dispute proceeding


http://www.auda.org.au/policies/auda-2005-01

"2.3 There is no hierarchy of rights in the DNS. For example, a registered trade mark does not confer any better entitlement to a domain name than a registered business name. Domain name licences are allocated on a ‘first come, first served’ basis. Provided the relevant eligibility rules are satisfied, the first registrant to apply for a particular domain name will be permitted to license it. "

http://www.auda.org.au/policies/auda-2010-05/

This is a famous case. In the end the trademark holder also lost their trademarks!

http://reports.fja.gc.ca/eng/2009/2008fca50.html

http://www.dnattorney.com/more-news-about-domain-name-disputes-and-transactions.shtml A MUST READ FOR ALL!!