Crocodile International snaps up '.mobi' premium name
The recent registration of the domain name 'crocodile.mobi' by Singaporean company Crocodile International Pte serves to highlight the manner of operation of the '.mobi' premium name trademark application process.
'.mobi' domain names became available for open registration on September 26 2006 after a sunrise period intended to allow trademark holders to register in priority. The sunrise period was followed by a premium name trademark application period.
During the premium name trademark application period trademark owners could apply for registration of premium names subject to the Premium Name Trademark Registration Conditions under the Premium Name Trademark Application Rules for '.mobi'. Premium names, which were the subject of the process consisted of commonly used words and phrases. The World Intellectual Property Organization (WIPO) Arbitration and Mediation Centre was in charge of the administration of the process and appointed a number of experts to decide on premium name applications.
One such application was filed by Crocodile International for the premium name 'crocodile.mobi'.
The conditions which Crocodile International had to satisfy in order to obtain the premium name were as follows:
- Whether at the time of the application, Crocodile International was the holder of a current (non-expired) trademark registration in its name.
- Whether the premium name 'crocodile.mobi' was identical to the textual or word elements of the trademark registration on which the application was based?
- Was the relevant trademark registration of national effect (a federal registration of a trademark) with no disclaimers of pertinent textual or word elements?
- Was the relevant trademark registered or applied for in the name of Crocodile International prior to July 11 2005 with the trademark authority with which the trademark is registered?
- Had the trademark been used by Crocodile International or with its consent for a period of at least five years prior to the date of the premium name application?
Having examined each of these conditions, WIPO panellist Susanna H S Leong held that the registered trademark CROCODILE was in extensive use five years before Crocodile International filed its application and the Singaporean company had adduced enough documentary evidence to prove that the use of the trademark CROCODILE was real, substantial and in good faith. She therefore allotted the premium name 'crocodile.mobi' to Crocodile International.
Shrawan Chopra, Anand & Anand, New Delhi
Copyright © Law Business ResearchCompany Number: 03281866 VAT: GB 160 7529 10