LEGAL POSTS :: Howard Neu's Blog
U.S. DISTRICT JUDGE DEFINES WHAT MAKES UP A GENERIC DOMAIN NAME.
An Order handed down in the Ricks v. BMEzine, LLC case deals with the issue of Bad Faith on Domain registration renewals as well as defining when a Domain Name is considered to be "Generic"
Posted on Tuesday, July 27, 2010, 12:36:18 PM Eastern Time USA by HN.
Our thanks go to Andrew Alleman of DomainNameWire.com for bringing the case of Ricks v.BMEZine.com, LLC , a case in the U.S. District Court for the District of Nevada, to our attention. See http://domainnamewire.com/2010/07/27/court-rules-in-bme-com-cybersquatting-case-could-affect-domain-owners/#comments
Though his article concentrated on the fact that the Court held in its Order of July 26, 2010, that RENEWALS of domain names are the same as initial REGISTRATIONS of domain names for purposes of determining "Bad Faith" under the Anticybersquatting Consumer Protection Act (ACPA), we want to bring to your attention that the Court had a great discourse on what constitutes a "generic" word for trademark purposes.
The Court stated: "To state an anticybersquatting claim, the plaintiff must establish that its mark upon which the domain name allegedly infringes was “distinctive at the time of registration of the domain name.” 15 U.S.C. § 1125(d)(1)(A)(ii)(I); Lahoti, 586 F.3d at 1197. Marks generally are classified in one of five categories: “(1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). Suggestive, arbitrary, and fanciful marks are inherently distinctive and thereby automatically are entitled to federal trademark protection because “their intrinsic nature serves to identify a particular source of a product.” Id. A descriptive mark is not automatically entitled to trademark protection, but may become protectable if the mark has acquired distinctiveness through secondary meaning. Zobmondo Entmt., LLC v. Falls Media, LLC, 602 F.3d 1108, 1113 (9th Cir. 2010) (citing 15 U.S.C. § 1052(f)). Generic marks are not eligible for trademark protection, even if they acquire secondary meaning. Id.; Welding Servs., Inc. v. Forman, 509 F.3d 1351, 1358 (11th Cir. 2007); Filipino Yellow Pages, Inc. v. Asian Journal Publ’ns, Inc., 198 F.3d 1143, 1147 (9th Cir. 1999).
In the case of Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 929 (9th Cir. 2005). “If buyers understand the term as being identified with a particular producer’s goods or services, it is not generic. But if the word is identified with all such goods or services, regardless of their suppliers, it is generic.”
Thus, Courts have framed this as the “who-are-you/what-are-you” test. “A mark answers the buyer’s questions ‘Who are you?’ ‘Where do you come from?’ ‘Who vouches for you?’ But the generic name of the product answers the question ‘What are you?’”
Ultimately, the Court inquires whether consumers who ask for the product by the mark are describing the type of product, (apple) or are seeking the product of a particular producer (Apple).
So, the bottom line is that if you believe that your domain name is "generic" and not subject to attack by a trademark holder either under the UDRP or the ACPA, you need to ask the above questions which will determine if you will win or lose.
Thanks for listening,
Howard
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From Danny Pryor
I like the apple vs. Apple reference. Clearly, if a person registered applecomputersonsale.com, that is a group of four common, generic terms that clearly address a specific manufacturer and their product line. On the other hand, eatanappletoday.com is obviously not begging people to consume circuit boards and mice, but a fruit of the tree.
What happens, though, when a registrant registers a generic name, in good faith, and a company with a trademarked generic name decides they want the domain? What if Apple started acting like, say, Verizon and started suing people for any and all domains with the term "apple" in it? For instance, ilikeapples.com is not about the computer, but about the fruit ... with recipes for apple pies, how to make apple betty, how to brew apple tea or wine, and how to store those apple recipes on a computer for easy recall. Now what?
If it seems like a far-out question or scenario, consider some of the ridiculous rulings that have been handed up in our courts in the past couple of years.
Added on: Tue, Jul 27, 2010 01:04:39 PM