Company stunningly loses a domain arbitration case over HPPre.com.
With the HP Pre 3 getting ready to hit the market, HP filed a domain name dispute with National Arbitration Forum to get the domain name HPPre.com.
Here’s what happened:
-The day after HP announced its acquisition of Palm (maker of the Pre), the registrant registered the domain name
-The registrant created a splog at the domain name that grabbed stories about Palm products from sites such as Engadget
-The registrant added Adsense ads to the splog to monetize it
A slam dunk for HP, right? Amazingly, no.
I’m really scratching my head on this one as it seems to contradict just about every similar UDRP I’ve reviewed.
According to panelist Jeffrey M. Samuels, if you register a domain name to provide a “news and commentary” splog on the trademarked product and place ads on the site, you can still be making “legitimate noncommercial or fair use of the domain name”.
Samuels wrote “Respondent’s use of the disputed domain name was not motivated substantially out of economic interest but, rather, out of an interest in providing a repository for comments regarding IT products”.
By that logic you can go out and “front run” multiple products that may be released in the future or name changes as the result of mergers, create an automated and ad-supported site on the domain, and you’ll be free and clear.
Hmm.
I suspect this isn’t the last we’ll here about this domain name.
The marketing executives who did not register the domain name or variety of names before the company released the news should be fired. That or deduct from their bonuses the cost to acquire the name(s). They obviously want the name or other names, so why not register them before releasing the news?
Minutes before, simultaneously or minutes after the news is released.
I think one key thing here is that this transaction was only announced. It didn’t actually close until July 31, 2010.
So while this looks and quacks like a duck technically and obviously the trademark on the product wasn’t even close to being owned by HP just because they announced the sale.
And actually if you look at HP’s IP page you find that there isn’t even a trademark on Pre by Palm because there is a TM not an R next to PRE
http://www.hpwebos.com/us/company/trademark.html
I had checked the USPTO and couldn’t find it either but thought I just didn’t spend enough time.
Now, HP has filed for a trademark on HP Pre here it is:
http://tess2.uspto.gov/bin/showfield?f=doc&state=4008:nedcju.7.16
Notice that the filing basis is 1b not 1a and notice the filing date is 7/14/2011.
And they are trademarking specifically hp pre not just pre.
The owner of HPPre.com can opposed that trademark (and gum things up) or they can file their own trademark with with 1a for a different purpose. They might very well get theirs granted before HP gets there trademark (large companies sometimes are slow with these things..)
Sorry I mean “get their trademark granted before HP gets their trademark..”
Legitimate noncommercial with that arguably splog site showing ads? Huh?