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Arbitrator: If You Own .Com, You Should Get the Rest

Got the .com? You have a right to ccTLDs and other TLDs, says arbitrator.

Here’s a World Intellectual Property Organization case that should raise some alarms.

A panelist has awarded the domains sexywebcam.mobi and sexywebcam.tv to the owner of SexyWebCam.com, which also has a trademark for SexyWebCam.com. Arbitrator James A. Barker noted that the trademark includes .com, and is very different from having a trademark to the term ‘sexywebcam’. Nonetheless, he found the domains were confusingly similar to the .com owner’s mark.

To be fair, the respondent argued his case poorly. As Barker writes:

The difficulty with this argument is that the Respondent provides little evidence to support it. It seems plain that the term “sexywebcam” cannot be found in a dictionary, and so is not generic is that sense. No evidence is provided that the conjoined term “sexywebcam” is generic or descriptive. No evidence is provided of the use of that term by third parties, which might demonstrate that it has the descriptive value suggested by the Respondent. While the Panel believes that the term “sexywebcam” may have descriptive connotations, no evidence is provided that it is, in fact, used in that way.

In other words, the respondent’s arguments may have been valid, if he had just provided a little bit of evidence.

But this case should have still gone the other way. Finding confusing similarity sets a bad precedent. By Barker’s logic, if I have a trademark to domain.mobi, I could win the confusing similarity argument to the owner of a .com. If he bought the .com from someone after I registered the .mobi, I could win the .com.

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  1. Cindy

    We should all just start filing lawsuits instead of allowing domains to go to UDRP.

    That would slow the UDRPs down tremendously.

  2. Patrick McDermott

    “By Barker’s logic, if I have a trademark to domain.mobi, I could win the confusing similarity argument to the owner of a .com.”

    Andrew,

    I get your point and the decision certainly raises eyebrows.

    But even with this arbitrator, I don’t think you could use ownership of “Domain.mobi” to get the .COM.

    It would be very easy for any respondent to “provide evidence” that “Domain” can be “found in a dictionary”, “is generic or descriptive” and show multiple examples of “use of that term by third parties”.

  3. Helder

    This is getting too ridiculous to be true, but it’s true.

    According to that decision maybe there should only be .com’s, why register anything else, you got the com, you get it all

    Each time i read these decisions i get sick, there’s an organization out there with no law, yes no law, who takes domains away from whoever they want, and no one seems to be able to do anything about it.

    All decisions about domains should be made in a court of law, like it happens with every other businesses.

  4. domain guy

    what we have here is a failure to communicate.the only uspto manual referring to domains orginated in 1999 clearly states the trademark is to the left of the .com not the .com itself. so here we have a rogue arbitrator that is creating his own trademark law precedent.this is why all panels are made up of these ip attorneys this is why these ip professional need to be punished.
    in addition sexy web cam can be found on the web not in the dictionary. and if this idiot arbitrator reviewed the uspto case file there is a search methology applied by the examing uspto attorney.

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