Game over as panel overturns generic domain name registration
The alternative dispute resolution (ADR) panel for domain names in the top-level domain (TLD) '.eu' has issued its decision in Case 4014, which involved a generic domain name, 'game.eu', in a trademark context.
There are no specific rules for generic domain names, that is, domain names consisting of a generic word with a TLD suffix. Such domain names are subject to the same assessment as other domain names with regard to the rights on which the registrations are based.
The domain name 'game.eu' was registered by First Internet Technology Ltd on the basis of a Benelux trademark it had filed shortly before applying for the domain name. The trademark was registered only for plectrums in Class 15 of the Nice Classification. In addition, First Internet had obtained a large number of other Benelux trademarks for generic words, such as COMPUTER, SOFTWARE and WEATHER, and had applied for corresponding '.eu' domain names.
The complainant, Game Group plc, holds trademark rights in the mark GAME, which is registered as a device mark in the United Kingdom. The panel held that Game Group has also established common law rights in GAME as a word mark through extensive use. It did not accept First Internet's argumentation that the word 'game' was devoid of distinctive character for Game Group's business, which included retail of games.
The panel noted that there was no evidence of any use of the trademark GAME by First Internet or any indication that it had been applied to plectrums. Accordingly, it dismissed First Internet's trademark registration as a basis for rights or legitimate interests in the domain name.
The panel went on to discuss the issue of bad faith. An unusual element in the case was the fact that for a period of time First Internet had used the domain name to point at Game Group's website 'game.co.uk'. The panel held that this activity was an indication that First Internet was fully aware of Game Group and its business and benefited financially from Game Group's name. Considering that First Internet had registered the domain name with the intention of selling it to Game Group at a premium, the panel found that it had been registered in bad faith.
The decision confirms that a trademark registration is not always enough to secure a corresponding '.eu' domain name, as was demonstrated in the ADR panel's decision in Case 596, concerning the domain name 'restaurants.eu'. In that case the respondent had registered RESTAURANTS and other words that were generic by nature as Benelux trademarks for camel hair; the panel found that the domain name registration had been made in bad faith.
The Game.eu Case illustrates some of the fundamental problems in the interaction between trademarks and domain names: for domain names, unlike trademarks, there are no requirements as to distinctiveness and no class system. The fact that trademarks consisting of generic words may be accepted for goods for which the words are non-descriptive has enabled holders of such trademark registrations to acquire generic '.eu' domain names. The generic nature of these domain names is exactly what makes them valuable.
Considering that the sunrise rules were drafted to protect existing trademark rights, this practice appears to constitute circumvention. It was made possible by the speedy registration procedure in some trademark offices before and during the sunrise period. The ADR decision in Game.eu, however, shows that a trademark registration as such will not necessarily constitute sufficient basis for an '.eu' domain name.
Lisbet Andersen, Bech-Bruun, Copenhagen
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