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Frontier Compliance: A Communication System Emerging in Cyberspace
Unformatted Document Text:  13 implies that the Wal-Mart Stores, Inc. is entitled to own all the domain names that include the word walmart such as walmartshop.com, walmartcenter.com, walmartbusiness.com, etc. In case where generic words themselves are considered trademarks, this problem is compounded. For example, “crew” means a team or a troop, but in a UDRP proceeding it was decided that crew.com should be transferred to J. Crew, which owns a trademark in J. Crew. 6 This kind of decision is criticized as being anti- competitive (CTP, 2000). But in a decision regarding franceinfo.com, the complainant owns a trademark “FRANCE INFO + mark” and the respondent claimed that he registered the domain name for business providing travel information on France. 7 The panel decided that exclusive rights in generic words such as “info” should not be acknowledged for the purpose of cancellation or transfer of a domain name, and thus he cannot accept that the complainant proved the element of the similarity between the domain name and the trademark. On the other hand, in a decision regarding www.biofield.com , the panel decided that the domain name transferred to Biofield Corporation that owns the trademark “biofield,” although the trademark involved the combination of generic words. Therefore, UDRP decisions are not only consistent regarding the circumstances under which domain names are considered confusingly similar to trademarks, but also they are quite different from the rules of the real space that provide limited ownership on generic words. The second element is whether the respondent has no rights or legitimate interests in respect of the domain name. The Policy provides the following circumstances in which the respondent could be considered to have demonstrated her rights or legitimate interests in the domain name: (1) before any notice to the respondent of the dispute, her use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (2) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or, (3) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. 8 For example, in a proceeding regarding www.penguin.org, the panel rejects the complainant Penguin Books, Inc.’s request to have the domain transferred 6 WIPO D2000-0054. 7 WIPO D2000-1567 8 Policy 4. c.

Authors: Woo, Jisuk.
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13
implies that the Wal-Mart Stores, Inc. is entitled to own all the domain names that
include the word walmart such as walmartshop.com, walmartcenter.com,
walmartbusiness.com, etc. In case where generic words themselves are considered
trademarks, this problem is compounded. For example, “crew” means a team or a troop,
but in a UDRP proceeding it was decided that crew.com should be transferred to J. Crew,
which owns a trademark in J. Crew.
6
This kind of decision is criticized as being anti-
competitive (CTP, 2000). But in a decision regarding franceinfo.com, the complainant
owns a trademark “FRANCE INFO + mark” and the respondent claimed that he
registered the domain name for business providing travel information on France.
7
The
panel decided that exclusive rights in generic words such as “info” should not be
acknowledged for the purpose of cancellation or transfer of a domain name, and thus he
cannot accept that the complainant proved the element of the similarity between the
domain name and the trademark. On the other hand, in a decision regarding
www.biofield.com
, the panel decided that the domain name transferred to Biofield
Corporation that owns the trademark “biofield,” although the trademark involved the
combination of generic words. Therefore, UDRP decisions are not only consistent
regarding the circumstances under which domain names are considered confusingly
similar to trademarks, but also they are quite different from the rules of the real space
that provide limited ownership on generic words.
The second element is whether the respondent has no rights or legitimate
interests in respect of the domain name. The Policy provides the following
circumstances in which the respondent could be considered to have demonstrated her
rights or legitimate interests in the domain name: (1) before any notice to the respondent
of the dispute, her use of, or demonstrable preparation to use, the domain name or a
name corresponding to the domain name in connection with a bona fide offering of
goods or services; or (2) the respondent (as an individual, business, or other
organization) has been commonly known by the domain name, even if you have
acquired no trademark or service mark rights; or, (3) the respondent is making a
legitimate noncommercial or fair use of the domain name, without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark or service
mark at issue.
8
For example, in a proceeding regarding www.penguin.org, the panel
rejects the complainant Penguin Books, Inc.’s request to have the domain transferred
6
WIPO D2000-0054.
7
WIPO D2000-1567
8
Policy 4. c.


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