Generic Terms In Domain Names Proving Difficult To Defend As Trademarks

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By Monika Ermert for Intellectual Property Watch

In one of the first decisions on an objection filed at the World Intellectual Property Organization against a new top level domain (TLD) application, the complainant, Express, LLC lost to Sea Sunset, a subsidiary of Donuts. Express is a US fashion dealer, and Donuts is one of the so-called “portfolio TLD applicants” that has applied for nearly 300 new TLDs.

Both parties have applied for .express at the Internet Corporation for Assigned Names and Numbers (ICANN).

ICANN is currently delegating new top level domains from .ngo to .miami. It has integrated “objections on legal ground” – procedures at WIPO to avoid what can be described as “name squatting” at the top level.

Trademark rights for .express go back to as early as 1979. The panel (a single expert, Florida State University Law Prof. Frederick Abbott) decided that that the potential use of the applied-for TLD by Donuts did not “take unfair advantage of the distinctive character or the reputation of the Objector’s registered or unregistered trademark or service mark.”

Express as a generic English language term is not distinctive, “except in the channel of trade in which the Complainant uses it,” the decision reads.

“The Panel ultimately decides that the trademark owner (Complainant) should not be able to prevent adoption by the applicant (Respondent) of the applied-for gTLD < .express> in the particular context presented here,” it said. “While Complainant certainly owns rights in the EXPRESS trademark for use in connection with apparel and fashion accessories, and while that trademark is reasonably well known among a relevant segment of consumers in the United States, there are so many common usages of the term “express” that it is not reasonable to foreclose its use by Respondent as a gTLD.”

Both parties may now meet at an auction in the next stages of the TLD application process.

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