What is a generic domain name? Do they even exist?
The World Dictionary defines the term ‘Generic’ as:
generic or generical (dʒɪˈnɛrɪk) — adj 1. applicable or referring to a whole class or group; general 2. biology of, relating to, or belonging to a genus: the genericname 3. denoting the nonproprietary name of a drug, food product, etc — n 4. a drug, food product, etc that does not have a trademark
Part 3 and 4 are the relevant pieces in this discussion. In both the adjective and noun form, the term ‘generic’ appears to be tied to proprietary or trademarked product. If the existence (or lack of) of a trademark is the required characteristic for something to be deemed ‘generic’, is there really a safe domain name?
I know I may have lost you already but follow me a bit deeper into the rabbit hole.
Let’s use a name of mine that appears to be completely generic: www.Emphysema.info. While the term ‘Emphysema’ does not appear to be a common brand name, popular recording artist (see: Madonna vs. Dan Parisi and Madonna.com), or major retail chain (see: Target Brands, Inc. v. Eastwind Group), it could be seen as non-generic. The term ‘Emphysema’ is a dictionary term widely recognized as generic and not belonging to a specific mark however, the .info extension may change things. It could be argued that the term looses it’s ambiguity when an extension is applied to the end. Is the domain name extension actually a part of the term, legally?
According to Berkman Center for Internet & Society
Question: Do I have trademark rights in my domain name?
Answer: You may actually have trademark rights superior to those of your accuser. You may have such trademark rights because
(a) you have a registered trademark;
(b) you have a pending “intent to use” trademark application, of which the filing date predates the use of the mark by your accuser;
(c) you have a pending “use based” trademark application and your date of first use predates the first use of the mark by your accuser; or
(d) you have “common law” rights to the trademark.
In the U.S., the person who establishes priority in a mark gains the ultimate right to use it. According to the Lanham Act, determining who owns a mark involves establishing who first used it to identify his/her goods. That means, in the United States, you do not need to register a mark to establish rights to it. However, registering a mark means that the registrant is presumed to be the owner of the mark for the goods and services specified in the application.
So in this instance, if I were able to first secure a mark on Emphysema.info in the fourth category as described below:
Not all identifying names and phrases can be protected by trademarks. Protection depends on a mark’s strength, which is determined by how it is categorized. There are four categories (in descending order of strength):
… A generic mark rarely receives protection because it is naturally associated with something in consumers’ minds. An ordinary description is not special enough to warrant protection. However, if consumers connect the mark and its source in a way that would not exist without the mark’s use in commerce, then the mark can be protected…
I would be in the best possible position for defending my name and interests but according to the dictionary definition above, I would no longer own a ‘generic’ domain name! More to the point, it could be argued that any domain name (primarily because it includes an extension and cannot exist without it) is unique and therefore incapable of being generic.
When your head stops spinning, come back and check for more on domain name registration and classic UDRP case history.