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Generic Domain Names And Disputes

Published September 13, 2010

A World Intellectual Property Organisation ruling has highlighted the importance of domain name owners to consider registering other name extensions.

The case involved the registrant of the domain name who filed a complaint with WIPO concerning; a domain registered by a party involved in a similar business. 

The complainant stated the .org domain name was identical to his trademark, that the other party had no rights or legitimate interests to be using the domain name and that the name was registered and was being used in bad faith.

The .org registrant denied the allegations, claiming fair commercial use of what is a descriptive term to describe his activity.

While the WIPO panel agreed the domain name was identical to the complainant's trademark; it said where a domain name is merely a generic description of a trade and is being used by the respondent in relation to that trade, the registration and use of the domain name may be legitimate.

WIPO states that were the case otherwise, domain name registrants could effectively monopolise descriptive terms. 

Since it was not possible for the WIPO panel to determine if the respondent had any bad faith motive directed at the complainant's trademark rights, the complaint was denied.

Based on WIPO's ruling, it would appear to be prudent for registrants of generic domain names to not only register the .com, but at the very least, the .net and .org version of their domain names as well in order to prevent a potential competitor doing so and causing brand confusion. 

While registrants of Australian domain names ending in have a higher degree of protection, they should also register the .com version of their domain name where possible as many Internet users have been conditioned to the .com extension.

The full WIPO ruling can be read here.

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