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In legal actions relating to trademarks and domain
name, facts generally control the outcome. Pursuant to the World
Intellectual Property Organization (WIPO) guidelines and the United
States trademark laws, most often its the facts of each specific
case that control the final decisions as to who can use a generic
trademark / service mark, and ultimately, who will have control of
the generic domain. One might conclude that many decisions are
therefore subjective and possibly biased toward the trademark
holder. Since that
might be the case, a domain registrant can take steps to protect its
rights to register and use generic domains.
According to the guidelines and relevant decisions
presented by the WIPO Arbitration and Mediation Center
(“Center”), generic (dictionary) words can be used as a domain
if the web page to which the domain resolves (1) shows information
pertaining to that term as understood in common speech (i.e.
“apples.com” resolves to a web page relating to an apple grove
in Washington state and not to Apple Computers) and (2) describes
the product or business and doesn’t use the word(s) to take
advantage of a trademark owner’s rights in the word(s).
In recent opinions, the Center seems to rely on
principles of United States trademark law in analyzing a trademark
owners rights to a generic trademark and thus its ability to obtain
the disputed “generic domain.” In order to understand WIPO UDRP
decisions in which “generic domains” were not transferred
to a trademark holder, it is necessary to briefly discuss what facts
a trademark owner must establish in a UDRP proceeding.
It is well-established that under the Paragraph 4(a)
of the Uniform Domain-Name Dispute Resolution Policy, the trademark
owner must show the following:
(1) the manner in which the domain name(s) is/are identical or
confusingly similar to a trademark or service mark in which the
Complainant has rights; and
(2) why the Respondent (domain-name holder)
should be considered as having no rights or legitimate interests in
respect of the domain name(s) that is/are the subject of the
complaint; and
(3) why the domain name(s) should be
considered as having been registered and being used in bad faith
Whenever a domain registrant is allowed to retain a
“generic domain” after the trademark owner asserts its generic
trademark, the arbitrator’s decision generally turns on the fact
that the trademark owner is unable to establish that the domain
registrant is using or registered the domain in
“bad faith.”
However, in a recent decision the panelists not only
found “no bad faith,” but they also dealt with the issue of
generic words as domains and trademark. In Deutsche Post AG v.
NJDomain, D2006-0001(WIPO March 1, 2006), a case brought to
determine whether the domain POST.COM (registered on November 4,
1998) should be transferred to the owner of a German trademark
registration for POST (No. 39540404 filed May 10, 1995). The domain
registrant was allowed to retain POST.COM, partially based on the
fact that it was a generic word.
Specifically, based on the above listed criteria, the
panelists concluded the following:
1)
the panelists could not definitively state that the POST.COM
domain was identical to the asserted trademark registrations since
the disputed domain POST.COM consisted
of a generic word that described the services the respondent offered
and complainant failed to show that the word “Post” had come to
be identified with complainant and its business;
2)
the domain name registrant used the domain name for an email
address business that offered the service since POST.COM was
acquired (and certainly prior to complainant’s notification of any
dispute) and therefore respondent had a legitimate interest in
POST.COM; and
3)
since virtually all of the complainant’s asserted
trademarks registered several years after the POST.COM domain was
registered, then complainant failed to show the domain POST.COM was
registered and used in bad faith.
The most interesting portion of the decision was the
panelists’ discussion regarding the use of generic words as
domains. The panelist were concerned about complainant’s one
trademark, the word mark POST, that registered prior to the domain
registration.
The panelists looked at both the mark and domain and
found that the trademark, which consisted of the word “POST,”
and the domain, which also consisted of the word “POST,” was the
same in appearance, spelling and pronunciation.
Then the panelists decided that the word “POST” was a
generic word. Under the UDRP, generic word are “given little if
any protection” whether the mark is used as a common law trademark
or is actually registered by a governmental agency. Additionally,
since the domain registrant also used the same generic word as a
domain name, he is accorded “very wide protection under the UDRP
by virtue of that fact alone.”
“It would be quite contrary to
the Policy and entirely inconsistent with practice under it to
restrict the use of generic words in domain names, unless they have
also taken on the stamp of a particular business name to the extent
that they are identified with a particular trademark owner.” Deutsche
Post AG v. NJDomain, D2006-0001 (WIPO March 1, 2006).
In order to show that the word “POST” was generic,
respondent submitted the dictionary definition of the term
“POST” and a Google search showing 972 million web pages
containing the word “POST” evidencing the word “POST”
without the complainant’s name ( Deutsch or “DHL”).
The panelists relied on other UDRP decisions to form
the basis for their ruling regarding the use of generic domains. For
example, in Postecom spa v. smartphone sa: File No.
FA0204000110805 (NAD July 22, 2002), “… the word POSTE is a
generic term used in several languages with different meanings.
Therefore, POSTE is incapable of acting as a common law trademark
without a showing of significant secondary meaning.”
Additionally, in Rollerblade Inc. v. CBNO, WIPO
D2000-0427 (Aug. 24, 2000), the panelists decided that
ROLLERBLADING.COM would remain with the domain registrant because
the use of “rollerblading” was not trading on the goodwill of
nor intentionally causing confusion with the ROLLAR BLADE mark, but
rather was “merely seeking to trade on the popularity of a term
used generically by many people for a popular sport.”
In summary, to protect rights to a generic domain, it
would be prudent to direct a generic domain to a site on which there
is information that relates to the generic word. That is, the
generic domain AMERICANINVENTOR.COM should point to a site that has
information about “American inventors” or offers legal services
to “American inventors,” and does not give information about the
new television show entitled “American
Inventor.”
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Greenberg & Lieberman
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