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April 03, 2015

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"Generic Words" As Domain Names

By Stevan Lieberman & Debora McCormick

1) When is it permissible to use a generic word as a domain name?

2) When can generic words be registered as a trademark pursuant to United States law?

3) When can the person / company that has a registered trademark for the generic word(s) bring an action to have the registrant relinquish a generic word(s) domain?

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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