Your Seemingly Generic Domain Can Be Lost in a Trademark DisputePosted: February 24, 2012
In our last article, we discussed a case where a small company Wapple managed to win a trademark battle against Apple. As said in that article, decisions like those are nice to see, as Wapple did definitely have rights to their name per the facts of the case.
Unfortunately, quite often there are decisions in domain disputes (UDRP) where the owner can lose the domain. Just like the Apple vs. Wapple decision was surprising, these generic domain decisions can also be surprising but obviously in the other direction.
The most recent reported case of this happening was the AutoOwnersInsurance.com UDRP. As the article indicates, the complainant was able to add a massive amount to their complaint and essentially completely transform it and without any notice to the respondent, the panel decided 4 days later to rule against them.
One particular thing to note in that decision was that the complainant’s registered “trademark” on Auto Owners Insurance was merely a design mark, which essentially means “Auto Owners Insurance” was not a distinctive enough phrase to give the complainant exclusive rights to use it for auto insurance. In other words, the USPTO seemed to believe it was a generic phrase.
Another recent case was a different sort of generic domain, LifetimeAssistance.com. While this is not a generic product or service per se, it’s not nearly as distinctive as Google for instance. The trademark would have limited scope and the domain owner would have rights to use it providing they aren’t infringing on that scope.
One thing to note about that case was that the complainant had owned the domain at some point and let their registration lapse. They claimed an old employee’s information was on it, so they weren’t aware they let it lapse. Their organization is run off of the .org.
One of the most famous recent examples was Octopus.com. You might wonder how in the world a domain like that could be lost in a UDRP decision. The complainant’s actual trademark was OctopusTravel, obviously for a travel company. They didn’t have the exact trademark even.
Many factors led to the 3-member panel deciding against the respondent. The respondent was actually a former employee of the company and bought Octopus.com in 2006, after that company’s trademark was filed. He also placed travel ads on the domain, which is considered bad faith given he was clearly aware of his former employer named OctopusTravel involved in travel. Everything combined, he ultimately lost the case.
What does this mean for you if you buy a generic domain?
Search for existing trademarks anyways
No one would believe that “free credit report” is anything but a generic phrase, but it is in fact a registered trademark. Anyone with domains containing that exact phrase could be at risk to lose the domain and/or face a trademark lawsuit. Don’t assume the domain you’re getting couldn’t possibly be trademarked – search the USPTO database TESS and the international database ROMARIN.
Search for companies named what your trademark is
There can be multiple companies existing with the same name – just because others exist doesn’t mean you can’t use your domain. However, it’s still good to know if others do exist. Some complainants have been able to win UDRP cases with just a common law trademark, meaning they have established their rights through use in commerce.
That said, if you want to understand whether or not other existing companies with the same name may put you at risk of losing your domain or more, consult an IP attorney specializing in domain law.
Be wary of what goes on your domain
As our last article showed, Apple Inc. does not own exclusive rights to all names with Apple in them or anything “confusingly similar” to Apple. That said, there are many generic domains with apple in them that could easily be taken by Apple Inc. depending on what is on them. AppleTree.com with content on it about the fruit would likely be okay. AppleTree.com with an app or mobile device storefront would indicate bad faith usage of the domain.
If you have a case where you would like to include another company’s name in your business to sell their products, you need their permission. Even if you have it, they can revoke it at any future time if they so choose and there’s little you can do about it.
Do always consult an IP attorney if you ever find yourself in any sort of trademark dispute, as many cases don’t “fit the mold”. Certain circumstances could literally turn the case around based on changing whether a particular criteria is met or not. While generic domains are generally safer to use, due to their value, they are still targets for disputes, so be prepared to vigorously defend your rights to the name if a dispute arises.