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Google settles Dispute over gmail.de after 8 years

April 16th, 2012 Comments off

This Domain Registered by MarkMonitor: Gmail.de

8 years after the introduction of Google’s Gmail email offering, it appears it has settled a dispute over the use of the brand in Germany as shown by a transfer filing with the German patent office. When Google introduced the service worldwide in 2004, they encountered problems with the name in Germany, England and Switzerland, which forced Google to operate under the name GoogleMail instead. While the case in Switzerland was settled in 2009 and in the UK in 2010, the negotiations in Germany continued until the trademark was transferred last Wednesday. The domain gmail.de changed ownership on the same day and is now also owned by Google with the domain now displaying a Mark Monitor holding page.

The German brand for “G-mail… und die Post geht richtig ab” (gmail – and off the mail goes, based on a German idiom), which was registered in 2000 was owned by entrepreneur Daniel Giersch who enforced his rights in 2005. His email service is now available under the domain and name “@quabb.com”. While the price for the settlement is not known, Giersch turned down an offer of 250.000 Euro from Google for the mark and domain in 2006.

Google also had trouble obtaining the domain YouTube.de, but was able to settle with the owner of the domain in 2007.

[via Computerworld | Golem.de (German) | SZ (German), thanks to Christoph Kilz]

Categories: dispute, External Articles, Gmail, gmail.de, google, Legal, Legal Issues, patent pffoce, trademark Tags:

WIPO Panel Debates Definition of “Bad Faith” in UDRP Decision

July 5th, 2010 Comments off

In a recent decision in the dispute for the domain name Evoq.com, the WIPO panel let the original registrant keep the domain name. However the 3-person panel did not agree how exactly the “bad faith” criteria should be applied. The panel was not clear whether it mattered if a domain name was registered in bad faith when compared to the complainant’s trademark, or if this criteria could be applied against any existing trademark.

From the decision (emphasis added):

Faced with the fact that the Domain Name was registered in 2004, well before the Complainant was formed in 2007, the Complainant argues that the Domain Name was registered in bad faith directed at General Motors, which had announced a concept car called “Evoq” in 1999.

Some members of the Panel are inclined to conclude that, to prove bad faith registration, the Respondent must have had a bad faith intention with respect to the Complainant’s mark. However, the Panel does not need to reach a definitive conclusion on that issue because, even if bad faith directed at third parties could constitute bad faith for the purpose of this requirement, the Panel does not find the existence of any such bad faith on the evidence in this case.

So while the panel clearly thought that the domain owner did not register this domain in order to infringe on the complainant’s brand, at least one panelist thought it may have been infringing on another companies’ brand and thus could potentially constitute a bad faith registration.

In a conversation with DNN, Zak Muscovitch of DNAttorney commented as follows:

Zak Muscovitch at DomainConvergence

The Complainant’s position is absurd. The Complainant argues that the Respondent should be found to have registered the domain name in bad faith, even though the Complainant wasn’t even in existence at the time the domain name was registered, because the disputed domain name was registered after an unrelated third party; General Motors, acquired trademark rights. The fact that the Complainant was able to adopt EVOQ as a trade name and trademark for its communications and branding business years after General Motors acquired trademark rights, in ostensible “good faith”, means that the Respondent was equally able to register the domain name in good faith notwithstanding General Motor’s limited rights. What is good for the goose is good for the gander. EVOQ is a name that could lend itself to any number of business endeavours. This is a case of attempted domain name hijacking in my opinion, pure and simple.