Tuesday, 8 September 2009

Distinctive IP - First Come, First Denied

Issue 17, 8 September 2009 First Come, First Denied

We’ve only had our domain name dispute procedure for a short while. Which may explain the seemingly inexplicable Gardenmaster decision. The adjudicator ruled that a small cc that had used the name Gardenmaster for gardening services since 1969 (no that’s not a typo!) had to hand over a domain name registration which it had obtained in 2007 for www.gardenmaster.co.za to Masstores (Makro). A company that had started using the name Gardenmaster for a range of garden tools some 30 years later in 1999, registered the trade mark in the same year, and been irked in 2008 to find that the domain name was taken. The adjudicator had no doubt that the cc had registered the name www.gardenmaster.co.za to frustrate Masstores. So the registration was abusive.

The adjudicator was influenced by various factors. For example, the fact that the cc said it had registered the name in 2007 to ‘protect its rights’, after finding out that garden tools were being sold under the same name (apparently the right answer to the ‘why’ question is ‘so that we could start e-commerce’). The fact that the cc offered to sell the registration to Masstores for a significant amount after the retailer approached it. The fact that the cc didn’t answer written questions put to it by the adjudicator. The fact that the cc’s registration was formally in the name of an agent. And the fact that the cc hadn’t actually used the registration, in other words hadn’t established a site under the name. So it was apparently reasonable to infer that this was just a bad egg trying to frustrate Masstores from getting the registration.
Really! Here’s another possibility - on becoming aware of the fact that another company was using the name in a similar field, the cc thought hey we better make sure we can use our name for the website we will surely one day create, so let’s register it. Being unversed in these things, it used a marketing agent to do so. When Masstores finally woke up to the fact that it had failed to register an important trademark as a domain name, it said oh sherbet, someone else has it. So Masstores threw its mass around and said Gimme. And the cc thought, hey here’s a chance to make some nice money, so it tried to do a deal. And when Masstores refused to bite and instituted proceedings instead, the cc thought sod this for a lark, let’s just put our trust in the legal process (fools!).
There was no abuse here, no cyber-squatting, no taking unfair advantage of another’s rights, no registration primarily intended to frustrate another party. Just two businesses with rights to the same name. Which meant it was first come first served. But in this case the one that came second had the wherewithal to be awkward. So a different rule applied!

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