09-03-2014, 06:39 AM
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It's 42
Industry Role:
Join Date: Jun 2010
Location: Global
Posts: 18,083
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Quote:
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It is well established that generic Top-Level Domains such as ".com" may be disregarded in the assessment under paragraph 4(a)(i) of the Policy (e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). This means "pinsex" and "pingay" need to be compared to the Respondent's trademark.
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The above is a much more interesting point made. The inclusion of the gTLD string is excluded from ''assessment''.
Usually, barring extreme circumstances, registered trademarks ? trump common law trademark claims. The other 2 criteria: confusingly similar and unauthorized use claims are sustained without controversy.
Prior use does not establish "common law trademark." Branding, public awareness and use might but against a registered trademark -- you lose.
As a trademark holder and domain holder, more importantly a brand owner, this is seen as a favorable decision. Pinterest is not doing business on the backs of pingay.com and pinsex.com it's quite the opposite in reality. pinterest.com has millions of users daily, is branded and is an Internet ''icon." |
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