Various rules and regulations behind generic domain names
Monte: Oh that’s great. That’s great. So moving into one of the key decisions that you just recently had, and I would like you to really go into detail about this decision and why you feel its so important for the industry for domain holders because a lot of it has to do with what one calls a generic domain name and the various rules and regulations about what’s generic and what’s not. It’s pretty relevant because everybody has that question. You know, I have this domain name. It’s generic however it may have a trademark being in some other form in use. Based off of your experience and this decision, tell me about the significance of this decision and how it impacts our industry a little bit.
Stephen: The domain name we’re talking about is kiwi.com.
Monte: So kiwi as in the fruit?
Stephen: Kiwi as in the fruit, or as in the bird, or as in the many other things that are out there.
Monte: Right.
Stephen: The domain name itself is obviously generic yet the complaintant in this case had numerous trademarks for the word kiwi in lots of countries around the world. What I think is significant, I mean there’s been a lot of cases where complaints have been turned down. What I think is significant about this case as opposed to other cases is that the board specifically found that the complaintant brought in bad phase. That hasn’t happened an awful lot. They did that because the complaintant was attempting to use the wife of board to push someone else around because we’re talking about the complaintant has lots of money and had the ability to without even thinking about it to go ahead and file this it wasn’t anything that mattered to them.
Monte: Right, right.
Stephen: Basically, what happened is the bored spanked them. They said you know this is ridiculous. You had no evidence of any sort and you just filed this in order to make us work and you have no possible basis for having any right to this domain. That’s really the key point, just as you have a trademark on something doesn’t mean that you have the right to the domain name.
Monte: Exactly. That’s what a lot of people confuse in our industry. We talked a little bit about that with John Barryhill on the first show. There is a lot of questions about the registration of a domain name compared to a trademark. What if you registered a trade, you know the domain name prior to a trademark being filed. Who really has the law, the right? Is it common low rights? Is it real trademark rights? You know what it is.
Stephen: Well I mean the key thing to remember is that no person, no entity, anyone in the world has what we call a right and gross to a trademark or in this case, right and gross to a word. And what that means is, that lots of people can use the same word for different business. Like for instance, they can have the word kiwi and use it for shoe polish and we can have kiwi and use it for pay per click advertising or a search engine.
Monte: Right, now in this case the kiwi, the complaintant was representing what industry?
Stephen: Well, it’s just what I said actually.
Monte: The shoe polish.
Stephen: The shoe polish.
Monte: Right. And everyone’s seen the shoe polish, kiwi shoe polish? It’s the little black portable containers that you see at the shoe stores that you can buy right off the shelf and bring home with you and do your own shoes basically, yeah.
Stephen: That’s it. Even a step beyond that, trademarks and trademark rights are based on first state rights then national rights. For example, in the United States you could use the mark blah in say Maryland and I could well, you’d use it in Florida, and I can use the word blah in Maryland and as long as neither of us are going outside of our state . . .
Monte: State boundaries.
Stephen: We have no right or we can’t say anything to each other even if we’re using it for the exact same goods and services. The moment one of us goes across state lines, let’s say you use the word blah for selling chairs across state lines before I went and started using the name to sell chairs, then you would have rights if you were in interstate commerce. But that only gives you rights across the United States. Let’s say someone else has the domain name blah blah.com, which I assume is a good domain, in I don’t know China and they’re also selling chairs. They have an absolute right to that domain name even though they’re using the same goods and service and even though you have national rights. So you really got to separate it by each country and separate it by the states based upon when each person comes in. And reality is, whoever uses it first, allowing to the prior rules, has the right.
Monte: Right, right. So the definition of common law trademark then is in this particular case regarding domain name is 1) establish a common law trademark if they’ve registered and have a definition of use of a domain name prior to someone else filing a trademark online.
Stephen: There’s no requirement for registration. Common law rights come from your common use.
Monte: So as long as you’ve used an idea or a mark and you can prove the use of that mark ahead of, even a trademark filing you would have common law trademark?
Stephen: That is correct. In fact . . .
Monte: And you could defend those rights as if you were the trademark holder?
Stephen: That is correct. You don’t get particularly more rights from filing a trademark than you had under common law other than your statutory rights and the ability to say this is yours and putting everyone on notice which is basically statutory rights. You can also get some ability to get more damages among other things.
Monte: Okay, hey Stephen, we just got a message that we need to break for a little commercial. Also, I think we’re gonna try to get your phone line a little louder as well. So we’re gonna break for just a minute. We’ll be right back with domain masters. Just please hold on for a minute.
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