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.web lawsuit thrown out of court, “too generic” to be a trademark

Kevin Murphy, February 8, 2013, 08:32:05 (UTC), Domain Registries

A California lawsuit that threatened to scupper all seven applications for the .web new gTLD has been thrown out.
The judge in Image Online Design v ICANN yesterday granted ICANN’s motion to dismiss the case, saying that IOD had no claim for breach of contract and, significantly, that “.web” is too generic to be a trademark.
Here’s the money quote:

This court agrees with ICANN that the mark .WEB used in relation to Internet registry services is generic and cannot enjoy trademark protection.

IOD applied for .web during ICANN’s proof-of-concept new gTLD round in 2000, but was not approved.
It sued ICANN last October, claiming breach of contract and trademark infringement and interference with its business.
The company has been running .web in an alternate DNS root, where hardly anyone uses it, since the 1990s.
Unfortunately for IOD, when it applied in 2000 it signed a document releasing ICANN from all legal liability in relation to the application, so the judge yesterday ruled that it could not sue for breach of contract.
The court also upheld the longstanding position of the US courts that top-level domains cannot be trademarks.
The US Patent & Trademark Office is of the view that TLDs do not indicate the source of goods or services; only the second-level domain does.
IOD had argued in court that, with the imminent introduction of dot-brands, the USPTO expects to modify its position. The judge in this case, Dean Pregerson, agreed in part, stating:

For instance, if ICANN were to introduce the TLD .APPLE, the user would arguably expect that that TLD is administered by Apple Inc. In such a case, the TLD might be considered a source indicator. If Sony tried to administer the TLD .APPLE, Apple Inc. would likely argue and possibly prevail on a trademark infringement claim.
This said, it appears to the court that today only the most famous of marks could have a source indicating function as a TLD. Some marks, such as .WEB, might remain generic even if they were famous, since .WEB in connection with registry services for the World Wide Web appears to refer to the service offered, rather than to only a particular producer’s registry service.

the mark .WEB is not protectable under traditional trademark analysis because it “seems to represent a genus of a type of website” and thus answers the question “What are you?” rather than “Who vouches for you?”

IOD’s other claims were also thrown out. Read the court’s order here.
The ruling means that a similar lawsuit filed by fellow 2000-round new gTLD applicant Name.Space, which is looking for an injunction against 189 gTLD applications, may be on shaky ground too.

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Comments (3)

  1. Tom G says:

    Maybe in the case of dotbrands, could a tld be trademarked. But for generics, The TTAB said this in the precedential case of .music:
    “the Board found the mark to be descriptive of “registration of domain names for identification of users on a global computer network,” since “consumers would anticipate that .music identifies the registration of domain names for a music-related top-level domain.” Likewise the mark is descriptive of Internet hosting services, music publishing and entertainment services, online directory services, and, finally, downloadable content.” ”

  2. Philip Corwin says:

    In an LRO filed against an applicant who intends the gTLD to be single-registrant/closed generic, the argument could be made that the gTLD will in fact be a source indicator and therefore, just as with a trademark .brand, prior USPTO and judicial views on this question should be set aside.

  3. John Berryhill says:

    “In an LRO filed against an applicant who intends the gTLD to be single-registrant/closed generic, the argument could be made that the gTLD will in fact be a source indicator”
    …but not for registry services, since by definition a closed single-registrant operator will not be offering those services to others. So the argument still fails.

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