Recently, I had come across a very interesting Domain Name Dispute Case related to ‘MySwissChocolate’ and thought of going deeper into it. I asked Gurpreet of Amarjit and Associates some questions and got his viewpoint on this issue.
Can you briefly tell whats this domian dispute "myswisschocolate.com" all about ?
The dispute concerns the trademark rights of the complainant in the mark ‘MySwissChocolate’.
The complainant holds trademark registrations for the above mark in Switzerland, European Union & USA.
The complainant is also carrying on business through the Domain Name MySwissChocolate.ch.
The respondent at the time of filing complaint was Yang Kyung Won of Seongnam Si, Republic of Korea. However after the filing of complaint with the World Intellectual Property Organization under Uniform Domain Name Resolution Policy (UDRP), the current respondent transferred the Domain to Lee Sujin of Seoul, Republic of Korea.
The complainant contends and the Panel holds that it is the clear case of CyberFlight.
The dispute concerning the Domain Name MySwissChocolate.com though is of generic nature but respondent(s) have failed to reply to the contentions of the complainant, didn’t provide any evidence of legitimate use of the Domain Name and moreover offered the Domain Name for Sale for the consideration of USD 6000.
The Panel taking into consideration all the facts and circumstances including the evidence produced by the Parties ordered the transfer of the disputed Domain Name to the Complainant after considering para 4(a),(b)&(c) of the policy.
Can you really have a dispute on generic domain names ?
The law on generic names differs from jurisdiction to jurisdiction. However, in the current case, before the Panel, the respondent(s) have failed to provide any evidence of use and legitimate use of the Domain Name.
The basic principle evolving Domain Names is that the Domain should be registered for the legitimate purpose and the registrant should be able to provide sufficient evidence for the legitimate use or the preparation to use the Domain Name in future. The law on generics can be invoked only if the registrant is using the Domain Name legitimately. For example, ‘Apple’ is a generic expression if used in connection with fruits or Apple but it is a well known mark if used with electronics. No one can take advantage of the Law on Generics to claim a proprietorship to run a website incorporating the mark Apple for electronics or allied goods or services. However, if someone is legitimately doing business of apple through the said Domain Name, the plea of the said registrant is a valid argument before the Panel.
Can names like this have a trademark ?
Yes, the generic names can be used as Trademarks until and unless such names or marks do not have direct reference to the character or quality of goods or services. For example, apple for apples, sugar for sugar, chocolate for chocolates is not a trademark. However, Apple for Electronics, Sugar for cafe and Chocolate for footwear are very good trademarks.
What are your thoughts on buying and protecting domain names so that you don’t have to leave it at a later stage ?
As discussed above, the Domain Name should be purchased for the legitimate business activities. Before buying a Domain Name, Registrant should do due diligence of the existing rights of any other third party through Trademark Searches, common law searches such as search engines, trade directories etc.
When the Domain Name is Registered by the registrant, the Domain should be developed or Registrant must have some preparation to use such Domain Name.
If the Domain is registered purely for investment purposes, the registrant should seek professional advise before buying or investing in such Domain Name to carry out Trademark and Common Law Searches. Though these searches are not binding or absolute, nevertheless it provides fair argument for the investor in case of any dispute at the later stage.
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