With generic names involved, getting trademark rights over the same is not an easy task. The complexity intensifies further when the generic term involved is a common Surname.
WIPO witnessed a dispute regarding the registration and use of the domain name
McGraw.org. The Complainant was Max McGraw Wildlife Foundation. The Complainant owns a non-profit organisation aimed at the preservation of Wildlife.
The Complainant’s organisation started initially in 1962. The Complainant claims common law rights over the MCGRAW mark since 1977 owing to its continuous usage by the organisation. The Complainant claims that the disputed domain name in question was offered for sale through a parking page for $1,999. The Complainant had negotiations with the Respondent over the name with a price as high as $10,000 being quoted, however the Respondent didn’t accept the deal. The domain name during the dispute redirected to an Amazon webpage and talked about music.
The Respondent argued that the sale of the domain name couldn’t be forced upon him and if he did intend to sell the domain name, he would have long ago. The Respondent presented his connection with the singer Tim McGraw and thus has a legitimate interest in the domain name.
The Court pointed out that common law trademark rights are acquired by continuous usage of a mark. However, owing to the generic nature of the term involved, which in fact is a common Surname, common law rights would be difficult to assert unless it has acquired notoriety.
The panel didn’t find that McGraw name could not be directly linked with the Complainant. The Respondent thus didn’t register the domain name in bad faith. The Complaint was denied.
However a check into the website at McGraw.org does show the Complainant’s company. This must mean both the parties came to a settlement after the dispute.
You can read the case in full detail here.