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John Berryhill “Generic Means Nothing Absent Context of “for What”

Posted on the 17 April 2024 by Worldwide @thedomains
Generic Domain Names

One of the best participants at Namepros in my opinion is John Berryhill. John takes the time to help out on matters of intellectual property, udrp’s and other industry news. Every once in awhile he makes a reply that is worthy of a post and I think it’s important for those who don’t participate at Namepros to read.

In a thread about James Booth’s $275K sale of John chimed in with all the back and forth about generic vs some thinking was a bad faith sale.

John gives his take on how you should look at names deemed as “Generic” and how there are so many other factors involved when deciding UDRP’s.

One of the things that drives me batty in these discussions, though, is the use of a term like “generic” in isolation from any application of the word or phrase in question.
Typically, the discussion is about whether something is, or is not, a “dictionary word” – i.e. a word or phrase having a primary meaning of some kind independent of a secondary meaning as a trademark.
When you hear the word “generic”, a little bell should go off in your head with the sound of “…for what?” indicating that when we talk about ‘generic’ in trademark law, then we mean whether it is generic for a specified set of goods or services, or not.
Take the word “Monster”. Is it “generic”? (see note 1 below)
The word “monster” is generic for scary or dangerous creatures of some kind.
The word “monster” is NOT GENERIC for an energy drink. It is in fact a well known trademark for an energy drink.
So, the point here is that you can’t say as some kind of absolute proposition that “‘monster’ is generic” or “‘monster’ is not generic” without completing the question “generic for what?”
Now, most of the interesting domain disputes – the bulk of ones I have spent waaaaay too many years defending – have involved a domain name based on some kind of ‘dictionary word’, phrase, surname, geographic location, etc. versus someone having a trademark that is identical or confusingly similar to that domain name.
Just looking at decisions I have obtained in the first three months of this year:

transco.comWIPO D2024-00612024-03-19Complaint denied

pitstop.comWIPO D2023-53182024-03-14Complaint denied

toros.comWIPO D2023-53832024-03-01Complaint denied

malo.comWIPO D2023-50632024-01-31Complaint denied

credable.comWIPO D2023-47242024-01-24Complaint denied

Every single one of them involved a complainant who has a perfectly good trademark of some kind.
Credable is a financial business in India. It is also a homonym of the dictionary word “credible”. The panel decided, based on the evidence presented by both sides, that it was more likely than not that the respondent registered the domain name because it sounds like “credible” than because of the complainant’s mark.
Malo is a well-known mark for cashmere fabric and clothing in Italy. It is also the Spanish masculine adjective for “bad” but, more to the point, is the domain registrant’s own last name. The panel decided, based on the evidence presented by both sides, that it was more likely than not registered because it was his last name.
Toros is the largest fertilizer company in Turkey. It is also the Spanish dictionary word for “bulls”. The panel decided, based on the evidence… you get the idea… Same thing for both Pitstop and Transco.
I have two pending right now – and – I am hopeful there will be similar results.
But, and I want to make this clear, in EVERY single one of these cases, and these are just my cases for the first three months of 2024, there was no argument about whether the Complainant had a distinctive trademark for whatever it is they do. There was no argument that the Complainant “can’t have a trademark on a dictionary word” – most of the best trademarks ARE dictionary words – “Bud”, “Coke”, “Tide”, “Ford”, “Amazon”, all have dictionary meanings. But it’s not meaningful to talk about whether “bud is generic” without specifying if you are talking about friends or beer. You can have a Bud with your bud, but those are two different things.
I would assume that a company shelling out tall bucks for a domain name has likely already obtained an opinion on their alternatives. Nobody is going to pay six figures for a domain name if their lawyer is confident they can get it for four figures in a UDRP, and they probably base that determination on a deep look into the facts, and whether the totality of the circumstances adds up to a conclusion that the domain name was registered because of the trademark claim or not.
That’s why, whenever a wave of the “stupid virus” hits Namepros, like “Libra” and then “Diem”, I try to point out that registering a bunch of domain names right after a press announcement of a future product, etc., and then arguing “but its a dictionary word” is a transparently poor approach. Saying “but Libra is an astrological sign” to justify five domains registered the day after the Facebook announcement, when you somehow went on a “Libra” binge, but surprisingly don’t have any “Capricorn” or “Taurus” domains, is not a persuasive set of facts.
So, yes, “Galatea” is a “dictionary word” albeit not a commonly used one. But it is “generic for something”. Whether it was registered because of a trademark or an expected trademark, what evidence there might be for or against that proposition, and what the likely timeline or outcome of an alternative to purchasing it would be, is apparently a calculation that the purchaser made.
But that, in a nutshell, is the vast majority of “interesting” UDRP cases. They seldom turn on whether or not there is a trademark, or if the word or phrase in question is “generic” in a vacuum. They turn on what the evidence shows was or was not the probable motivation of the Respondent in having acquired the domain name. But, in the federal appeals circuit that includes the jurisdiction governing GoDaddy, Namesilo, Namecheap, and several other registrars, the original registration date can control the outcome. The way the relevant US law is interpreted in that circuit is different from UDRP outcomes, which can be controlled by when the current registrant obtained the domain name. Again, a trademark owner deciding whether to purchase or dispute a domain name needs to take into account the likelihood of success in a UDRP and the likelihood of the domain registrant (a) filing a further proceeding, and (b) prevailing in that proceeding.
I have no idea what the specific circumstances involving this mark and this domain name might happen to be. Nor do I care. But I do hope that my usual rant about what “generic” means, and how it means nothing absent context of “for what” may have reached someone who hasn’t heard it from me a hundred times already.

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