Comments on: Register.com Goes After Register.cc

By: Domain Name Wire » News » Register.com Loses Register.cc Battle - The Domain Industry's News Source

Thu, 20 Mar 2008 14:03:05 +0000

[...] filed under UDRP by Register.com for the domain Register.cc (first covered on Domain Name Wire here.) The three person panel found that, while the domain is identical to Register.com’s [...]

By: Andrew

Andrew — Thu, 20 Mar 2008 13:15:31 +0000

Thanks guys…working on a story now

By: Dave Zan

Dave Zan — Thu, 20 Mar 2008 04:17:03 +0000

Yup. Decision’s finally published:

http://domains.adrforum.com/domains/decisions/1126697.htm

One other interesting bit about this is it involved 2 lawyers well-experienced in this thing. I’m sure they both gave their all, but there can only be one.

By: no-name

no-name — Wed, 19 Mar 2008 23:06:03 +0000

shhhh domainit.com WON! woohoo for the little guy!

By: John Berryhill

John Berryhill — Wed, 19 Mar 2008 21:19:22 +0000

Nod to cdunn on this one. The “first use” date claimed in a TM application is not relied upon for any substantive examination purpose. As also pointed out, the “REGISTER” applications were issued on a 2(f) – acquired distinctiveness – basis. Hence, one thing that is certain from the face of the registrations is that the claimed term was not distinctive when first used.

Decision here:

http://domains.adrforum.com/domains/decisions/1126697.htm
Register.com, Inc. v. Domain-it!, Inc. c/o Domain-It Hostmaster

By: Register.com files dispute to get Register.cc

[...] To read the full article in Domain Name Wire, see domainnamewire.com/2008/03/03/registercom-goes-after-registercc [...]

By: Dave Zan

Dave Zan — Fri, 07 Mar 2008 11:19:20 +0000

IANAL but how did register.com get a trademark on that term? First, as near as I can tell, register.com wasn’t doing any registering in 1994 so how can they claim use in commerce?

Two clues:

Word Mark REGISTER
Goods and Services IC 042. US 100 101. G & S: Computer network address management services, namely providing services enabling entities to reserve and secure computer network addresses and to access, add, modify, or delete information relating to their computer network addresses; computer services, namely providing search engines for obtaining data on a global computer network; hosting the web sites of others on a computer server for a global computer network. FIRST USE: 19941201. FIRST USE IN COMMERCE: 19941201

Word Mark REGISTER
Goods and Services IC 038. US 100 101 104. G & S: ELECTRONIC MAIL SERVICES. FIRST USE: 19941201. FIRST USE IN COMMERCE: 19941201
IC 042. US 100 101. G & S: COMPUTER AND BUSINESS SERVICES, NAMELY, HOSTING THE WEB SITES OF OTHERS ON A COMPUTER SERVER FOR A GLOBAL COMPUTER NETWORK, AND PROVIDING INFORMATION ABOUT WEB SITE DEVELOPMENT, ELECTRONIC MAIL, AND ELECTRONIC COMMERCE. FIRST USE: 19941200. FIRST USE IN COMMERCE: 19941200

They just have to meet the USPTO’s requirements. Gotta love the wording on the first part above.

I too am looking forward to the result.