Last week a Federal District Court threw out a lawsuit brought against ICANN on the basis that the asserted .WEB trademark was generic and therefore not subject to trademark protection. The case is important because the Court commented on the new gTLD program and reasoned that only “famous” names and brands would qualify as “trademarks” in the new .anything world, essentially mirroring precedent that has held the .com, .biz, and .info TLDs as generic terms or place identifiers.
Decision Confirms gTLDs Not = Trademarks
Specifically, the Central District of California District Court in Image Online Design v. ICANN dismissed an action by Image Online, which argued (inter alia) that it held trademark rights to the .web TLD. Image Online is a telecom and Internet registry service provider that registers users into the .web space on an alternative DNS root system. Image Online applied to register the .web gTLD in the main DNS root system in 2000 and had been “waiting” since then, but did not file an application in 2012 to register the .web TLD pursuant to the ICANN New gTLD Program. Seven others have filed applications with ICANN to run the .web registry.
The Court, looking to the future of an expanding Internet, explained that the .web TLD was not a protectable trademark and differentiated between protectable terms as TLDs:
Plaintiff (IOD) argues that “the function of TLDs as generally not being source indicating is a relic of an essentially exclusive ‘.com.’” (Compl. ¶ 37.) This may be the case. 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 court agrees with Judge Kelleher that 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?”. Image Online Design, Inc. v. Core Ass’n, 120 F.Supp.2d 870, 879-80 (C.D.Cal. 2000).(emphasis added)
Thus, the Court acknowledged that there is a difference between marks that are simply generic terms and marks that are common terms but also function as famous trademarks – also known as “arbitrary trademarks.” Further, its decision falls in line with a long-line of precedent sited in court and arbitration decisions that gTLD’s do not have trademark significance. See, e.g., In re Oppedahl & Larson LLP, 373 F.3d 1171,1173 (Fed. Cir. 2004) (“the term ‘.com’ is a top level domain indicator (TLD) without any trademark significance” and “‘.com’ has no source-identifying significance.”).
The tricky part of this analysis is that one companies’ arbitrary trademark is anothers generic term and deciding the scope of each parties’ rights based on their different relationship with the gTLD will be a tricky part of the application process.