Arbitrator Refuses to Hand Over Generic .Org Domain to .Com Owner
Wednesday, September 8th, 2010
Owning a generic .com doesn’t give you a monopoly on other top level domains.
The owner of the descriptive and generic domain name IntlMovers.COM has failed to win the domain name IntlMovers.ORG from its owner in a UDRP case.
Although IntlMovers.com existed before IntlMovers.org, and they offer similar services, panelist Tony Willoughby pointed out that owning a generic .com doesn’t give you an automatic monopoly on other top level domains:
The Policy was designed to protect trade mark owners against cybersquatters. If the name in issue is merely a description common to a particular trade and is being used by the Respondent in relation to that trade, the registration and use of the Domain Name may well fall outside the scope of the Policy. Were it otherwise, domain name registrants could effectively monopolise descriptive terms. The owner of fish.com, for example, could monopolise “fish†in all domains even against sellers of fish.
Willoughby mentions that it’s possible to get trademark rights in a generic term, but the complainant failed to show it had these rights at the time the respondent registered the .org domain name.
Further Reading:
- Salesforce.com can’t force owner of Forces.com to hand over domain
- Arbitrator Says Complainant Harassed Domain Owner
- EducationDynamics Snags a Generic Domain Through Arbitration
Tags: tony willoughby, udrp
Although it’s a good thing the panel decided in favor of the “little guy”, the term intlmovers is hardly generic. Fish is generic, candy is generic but abcmatress is not.
Intl is a common abbreviation for “international”, and international movers are a big business. I’d argue abcmovers is not generic, but intlmovers is.
“I’d argue abcmovers is not generic, but intlmovers is.”
Andrew 1
Acro 0
Andrew, so is the compound generic by means of inheriting the popularity of its prefix? And what determines that? E.g. ‘gaga’ has more results than “intl” so is “gagamovers.com” a generic?
Acro, my thinking here is:
‘International Movers’
is a category generic, just like
‘Local Movers’
Intl is a common abbreviation for International Movers, so
‘Intl Movers’
is generic
If Acro and Andrew were the panelist making the UDRP decisions you’d have these different outcomes.
So its really a crapshoot when you go to arbitration….
John, you are correct
Andrew, I think that unless the prefix is truly generic (think: mega-, mini-, super- etc) then the term “generic” is abused when one tags any prefix to a generic word. For example, Cpt stands for Captain but surely you wouldn’t say CptCrunch is a generic; it’d be a nice violation of the Cap’n Crunch brand.
Acro,
I think you are really missing that International (Intl) Movers is descriptive of the service being offered which is an international moving service.
It cannot be TMed without acquiring some secondary meaning.
International (Intl) Movers could apply to any company offering international moving as there is nothing Distinctive about it that would distinguish the service offered by one company from another.
Intl Movers = suggestive (no TM)
-
Acro Intl Movers® = descriptive (TM)
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This is a non-legal opinion.
Acro, but Captain Crunch is a made up phrase. International Movers isn’t. This isn’t about “prefixes”, it’s about an entire category.
Again, I’ll proffer this example: “local movers” is generic, right?