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    Generic Terms In Domain Names Proving Difficult To Defend As Trademarks

    Published on 15 July 2013 @ 4:36 pm

    Intellectual Property Watch

    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.

     

    Comments

    1. Marketing Day: July 15, 2013 says:

      [...] Generic Terms In Domain Names Proving Difficult To Defend As Trademarks, http://www.ip-watch.org [...]

    2. Marketing Day: July 15, 2013 ,Vancouver Island, Canada says:

      [...] Generic Terms In Domain Names Proving Difficult To Defend As Trademarks, http://www.ip-watch.org [...]


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    We welcome your participation in article and blog comment threads, and other discussion forums, where we encourage you to analyse and react to the content available on the Intellectual Property Watch website. By participating in discussions or reader forums, or by submitting opinion pieces or comments to articles, blogs, reviews or multimedia features, you are consenting to these rules.

    We welcome your participation in article and blog comment threads, and other discussion forums, where we encourage you to analyse and react to the content available on the Intellectual Property Watch website.

    By participating in discussions or reader forums, or by submitting opinion pieces or comments to articles, blogs, reviews or multimedia features, you are consenting to these rules.

    1. You agree that you are fully responsible for the content that you post. You will not knowingly post content that violates the copyright, trademark, patent or other intellectual property right of any third party or which you know is under a confidentiality obligation preventing its publication and that you will request removal of the same should you discover that you have violated this provision. Likewise, you may not post content that is libelous, defamatory, obscene, abusive, that violates a third party's right to privacy, that otherwise violates any applicable local, state, national or international law, that amounts to spamming or that is otherwise inappropriate. You may not post content that degrades others on the basis of gender, race, class, ethnicity, national origin, religion, sexual preference, disability or other classification. Epithets and other language intended to intimidate or to incite violence are also prohibited. Furthermore, you may not impersonate others.

    2. You understand and agree that Intellectual Property Watch is not responsible for any content posted by you or third parties. You further understand that IP Watch does not monitor the content posted. Nevertheless, IP Watch may monitor the any user-generated content as it chooses and reserves the right to remove, edit or otherwise alter content that it deems inappropriate for any reason whatever without consent nor notice. We further reserve the right, in our sole discretion, to remove a user's privilege to post content on our site. IP Watch is not in any manner endorsing the content of the discussion forums and cannot and will not vouch for its reliability or otherwise accept liability for it.

    3. By submitting any contribution to IP Watch, you warrant that your contribution is your own original work and that you have the right to make it available to IP Watch for all purposes and you agree to indemnify IP Watch, its directors, employees and agents against all damages, legal fees and others expenses that may be incurred by IP Watch as a result of your breach of warranty or of these terms.

    4. You further agree not to publish any personal information about yourself or anyone else (for example telephone number or home address). If you add a comment to a blog, be aware that your email address will be apparent.

    5. IP Watch will not be liable for any loss including but not limited to the following (whether such losses are foreseen, known or otherwise): loss of data, loss of revenue or anticipated profit, loss of business, loss of opportunity, loss of goodwill or injury to reputation, losses suffered by third parties, any indirect, consequential or exemplary damages.

    6. You understand and agree that the discussion forums are to be used only for non-commercial purposes. You may not solicit funds, promote commercial entities or otherwise engage in commercial activity in our discussion forums.

    7. You acknowledge and agree that you use and/or rely on any information obtained through the discussion forums at your own risk.

    8. For any content that you post, you hereby grant to IP Watch the royalty-free, irrevocable, perpetual, exclusive and fully sub-licensable license to use, reproduce, modify, adapt, publish, translate, create derivative works from, distribute, perform and display such content in whole or in part, world-wide and to incorporate it in other works, in any form, media or technology now known or later developed.

    9. These terms and your posts and contributions shall be governed and interpreted in accordance with the laws of Switzerland (without giving effect to conflict of laws principles thereof) and any dispute exclusively settled by the Courts of the Canton of Geneva.

     

     
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