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Arbitrator: If You Own .Com, You Should Get the Rest

Got the .com? You have a right to ccTLDs and other TLDs, says arbitrator.

Here’s a World Intellectual Property Organization case that should raise some alarms.

A panelist has awarded the domains sexywebcam.mobi and sexywebcam.tv to the owner of SexyWebCam.com, which also has a trademark for SexyWebCam.com. Arbitrator James A. Barker noted that the trademark includes .com, and is very different from having a trademark to the term ’sexywebcam’. Nonetheless, he found the domains were confusingly similar to the .com owner’s mark.

To be fair, the respondent argued his case poorly. As Barker writes:

The difficulty with this argument is that the Respondent provides little evidence to support it. It seems plain that the term “sexywebcam” cannot be found in a dictionary, and so is not generic is that sense. No evidence is provided that the conjoined term “sexywebcam” is generic or descriptive. No evidence is provided of the use of that term by third parties, which might demonstrate that it has the descriptive value suggested by the Respondent. While the Panel believes that the term “sexywebcam” may have descriptive connotations, no evidence is provided that it is, in fact, used in that way.

In other words, the respondent’s arguments may have been valid, if he had just provided a little bit of evidence.

But this case should have still gone the other way. Finding confusing similarity sets a bad precedent. By Barker’s logic, if I have a trademark to domain.mobi, I could win the confusing similarity argument to the owner of a .com. If he bought the .com from someone after I registered the .mobi, I could win the .com.

source DomainNameWire.com