In all honesty without all of the relevant details it is really hard to know.
Some of the deciding factors of whether there is a case to be answered are as follows:-.
1) Did the domain get registered in bad faith (trying to profit from someone trademark for example, 1 way this maybe demonstrated is that the domain point to a parked page although that doesn't prove in itself bad faith)..
2) Was the registrant aware of the trademark before a c&d was sent (this ties in with point 1). Also is the trademark applicable in the country the domain is for..
3) Is the domain used in the same line of business (if the words in the domain are dictionary words and the site is a different type of service then a trademark is hard to enforce as they usually are only for that line of service, if for example the domain was googleclothing.com for example google would probably win a case because the name was not generic).
There are of course other things that come into it. If your friend did not receive proper details from the company for example a letter explaining how he is going against their trademark then he may have been a bit quick at releasing the domain. It is not an unreasonable request and if the complainer has due reason then they will be happy to provide such details.
Even if the domain is found to be against a trademark it might still be possible for the person who has control of the domain to sell it to them. It costs $x000 to bring a WIPO complaint and that is before lawyers fees are taken into consideration, even if your friend lost the WIPO case he would only have his own fees (legal representation) to pay as WIPO is not carried out in a court of law for example (although the company could later take it to court). This being the case alot of companies are willing to pay a small fee for the domain as it is a cheaper route if they see you are not going to be scared easily by the C&D (and any lawyer letters). Of course do not necessarily offer to sell it to them as that would help prove bad faith.
I am of course not a lawyer anything in this post is from observation of the way things work. If you are interested looking more into things like this then it can be quite interesting reading past WIPO cases as they tend to be quite detailed and show arguments from both sides plus a detailed explanation of the outcome anf why the judges came to this outcome.
You can find the previous WIPO's at http://www.wipo.int/amc/en/domains/cases.html..
My friend was naive, he got excited that he had a good .in (for a very good .com company). He registered an almost immediately told FareCompare that the domain has been registered by him, and if they mind his using that in India. Which IMO is STOOOOOOPID!! YES, he was aware of the .com being registered. He doesn't know about TMs (I have just educated him) According to me, the name is pretty much generic - FareCompare.in No he didn't receive emails. He himself emailed them. My friend was in the travel industry, and had experience building the site.
Instead of giving them the ownership of the domain for REG FEE, he could have atleast had US$ 500?.
I have one trademarked domain (it is a borderline case).
Peter - REPS ADDED..
Very good information has been given to you and I would suggest that in future your friend take all of these things into consideration when he is registering any other names. The main thing with names conflicting is if the list of products registered along with it don't conflict with anything else using that name and product. So first off you want to check the type of products that are associated with the original name...
The name being generic is not enough. You must not think of a TM when registering a name. You said, This is wrong. When registering a name if you are thinking of a well known website,company or brand, you are in the wrong here. You shouldn't do this. I mean, of course, your friend shouldn't. Lol...
I completely agree with you Marcel. He doesn't know he was "squatting"! Anyways, have educated him to some order and hopefully he would be okay.
I have one trademark name (borderline case) - I guess we all make mistakes.
But tell me, something like orange (perhaps a TM for mobile services), someone buys out the .in for that... How can it be a TM problem. The name is GENERIC dammit. It is a fruit!..
That is when it boils down to usage. They cannot enforce their trademark on a service/product that is completely unrelated (although they will try) especially with such a generic name...
Oh Lord! What are we coming to. GOD (TM)?..
What if someone were to register a domain anonymously? No whois protection etc, but just plain anonymously.
Write to the .com owner. And ask him if he wants to buy?.
I have gotten really interested in this.
I know of someone who apparently sold trip _ advisor _ .co .in for an xxxx figure very recently. Can I get to know from somewhere?.
LOL @ me.....
What do you mean by "anonymously"? By giving incorrect whois data? In this case you could lose the domain...
And "windows" are just a part of my house.....
An "apple" I something I eat.
I won my softball league, so I am a "champion", 3 "cheers" to me.
It all comes down to usage...
Awesome! I burst out laughing Will add reps for a response like that! Yes that is exactly what I mean. I was doing a random check, and there are hundreds of domains with improper registration details (TM and otherwise)..
Trademarks are not of concern in registration details/whois.
How can you know these domains do not have a valid whois? But in case a domain does not have a valid whois, the owner is risking to lose it upon a complaint...
The reason I am stressing so hard on generic names is because I own a lot of them, and one fine day Pirelli would come knocking on my doors and ask for ZERO.ORG/ZERO.US from me, and I lose my domain.
Apparently a poor guy lost ZERO.ORG to Pirelli http://domains.adrforum.com/domains/...ons/938092.htm http://domains.adrforum.com/domains/...ons/938180.htm..
An invalid whois will not help you in this case. Now thats ridiculous...
Why to tell the .com owner that you have registered the other TLD if you are not planning to draw their attention towards it. And trying to get a deal on that domain name. For example many people have .nets and other TLD's but they don't email the .com owner of that version of domain name. But still we cannot say a person was innocent if he commits some crime and says he didn't knew it was a crime. Yes but if the company has the trademarks then it could be a problem. He emailed them that he owns this domain name.
It will be again called squatting.
I am not saying that the circumstances would have been, that your friend registered that domain name for reselling it at higher price. But still sometimes things go in such a way that it does look different to different people. It depends from where you see them.
Not only will you be in danger of losing the domain because of invalid whois but if the whois also has an invalid email account then you will not be able to transfer it nor will you know that there is a WIPO in the first place...
Hmmm... Obviously an alias can be used...
I really want to dig deeper into these issues.. I dont think we have any advisors in India!.
How would someone actually be able to first book and then sell trip adv!sor.co.in?.
Honda.in got sold for US$ 500 recently (ref: Namebio)..
This is just wrong, and a good case of a company abusing the laws that are in place to help protect TM. Big difference between zero and pzero, IMHO...
Exactly... I have been feeling very strongly!! Which is why I am asking all kinds of irritating questions!..
The guy who lost the .org didn't protect himself. You can't rest on "generic" and " I own it". You need to be proactive. I do not like the decision, then again, I preach the reality of UDRPs and if you don't protect yourself, it will haunt you...
It's a lot easier to say a single word like orange is generic and prove it than to do so for a rhyming phrase like FareCompare. It would be hard to even use farecompare without infringing on the other TLD owner. Fare really only has one meaning. Even if you tried using it for bus or subway fares instead of Airlines it is still in the travel industry. Fare is generic, and Compare is generic, but put them both together and it is pretty clearly targeted at a specific industry. Add the fact that you acknowledge knowing of the TM holder by approaching them to buy it and you've just shot yourself in the foot. Add the fact that he worked in the travel industry and he's now shot himself in the other foot, making him a sitting duck...
Yeah, he was plain naive... He really bought it to make money (which makes him a squatter) Infact he was planning to build the very same product as farecompare, which makes him a MORON.
I am still wondering how domains like Honda.in get bought for USD 500 and people still buy domains like Ask Jeeves Dot In..