Attorney Member’s input sought…

[DryHeat]

As to the relative protection, against TM-type claims, that can be added to a domain-name via development.

I realize that each case/situation is unique with its own particular facts and circumstances when it comes to protecting speculative domain collections from TM-type claims. There’s one element, however, that is often cited as having a protective value against such attempts at snatching the domains away from speculative entrepreneurs. This is the extent to which the domain can be deemed “GENERIC”. Based on this criteria alone, I’d greatly appreciate if our attorney (and other legally knowledgeable) members can provide their opinions as to how would they classify the protective value (and hence desirability/necessity) of development to a sample of following domains as:

Class A:
Domain is highly generic and has no/very little chance of a successful TM-type claim even without development.

Class B:
Domain is generic but does carry a significant likelihood of a successful TM-type claim without development.

Class C:
Domain is hard to classify as generic and has a high likelihood of a successful TM-type claim without development.

Sample Domains:

1. EzTickets.com
2. Broadband.net
3. NewOrleans.org
4. Cigars.info
5. Transportation.biz
6. Themeparks.us
7. PanAmNews.com
8. Pregnancy.info
9. Financing.biz
10. Getaways.us


I know that for myself and probably for many other members, an expert input will be of good educational value and greatly appreciated.

Trademarks nor Copyrights entitle any entity to ownership over a domain instead thay have ownership over the name it's self and for things like pepsiblue.com Pepsi could take the owner of that domain to court they will never win because a you cant trademark a common name like "blue" or for instance there was a thing about sonygames.com recently even though sony indicates they own Sony Games they instead own Sony and Sony Games is a trade name but is not secured under the trademark as "Games" again is a common name

[Ari Goldberger]

First, my view is to always play it safe and, at the very least, have a plan for future use of the domain name. Even putting up a basic site related to the domain name with links and some minimal content will help you in the event of a dispute. Moreover, I think it is smart business as well. It will increase the value of the property and, likely, increase the potential return visitor traffic and yield higher search engine ratings. Regardless of whether a domain name is generic, I suggest that you shield yourself with legitimacy by putting something up on the page, even if minimal, along with relevant links that can generate revenue.

Second, the concept of a word being "generic" is often misunderstood. You cannot consider whether something is "generic" in a vacuum. "Generic" is often used as a synonym for "common word" or "term." A common word is one that is a part of the language. A common word mark is generic only if it is USED to sell the product that is defined by the term. So, one could never get a trademark for the word "apple" to sell apples. That is generic. However, "apple" as applied to computers is arbitrary. Therefore, assuming that the computer maker did not have the domain, one could probably keep apple.com to use for a site about apples, since she would be using it in a generic sense. Now, that I've gotten into the semantics of trademark terminology, allow me to digress just a bit about the classification of trademarks...

There are four basic categories of marks: generic, descriptive, suggestive and arbitrary. Generic is the weakest and you can't even get a trademark for such a term. You can only get a trademark for a descriptive term if you can prove "secondary meaning," i.e. the public comes to associate the term with a single producer. A descriptive mark would be "Same Day Cleaners." Suggestive marks can be trademarked. Suggestive marks call to mind what the product or service is, but require some imagination. "Mr. Klean" is probably a good example of a suggestive mark. An "arbitrary" mark is the strongest mark. It is one that has no inherent mental association with the the product or service, and Apple Computer is a good example of that. These classifications are not hard and fast, and are subject to debate. In particular, it is sometimes hard to draw the line between descriptive and suggestive.

Having said that, all things considered equal and not knowing the existence of any registered or common law trademark rights on the terms contained in your domain names, here are my rankings. Keep in mind, this is only my view with respect to the likelihood of success on the merits, NOT the likelihood that you will be challenged. The latter depends more on the zealousness of any particular trademark holder. Again, I always feel it is best to develop - or have plans to develop - a domain name. While many UDRP decisions hold that an owner has a legitimate interest solely based on the domain being a common word, there are decisions that have not followed this, and the language of UDRP itself does not state this.

Class A: NewOrleans.org; cigars.info; transportation.biz; themeparks.us; pregnancy.info; financing.biz; getaways.us; Broadband.net

Class B: ; EZtickets.com, PanAmNews.com

[Banned: bidawinner]

Originally posted by Ari Goldberger
First, my view is to always play it safe and, at the very least, have a plan for future use of the domain name. Even putting up a basic site related to the domain name with links and some minimal content will help you in the event of a dispute. Moreover, I think it is smart business as well. It will increase the value of the property and, likely, increase the potential return visitor traffic and yield higher search engine ratings. Regardless of whether a domain name is generic, I suggest that you shield yourself with legitimacy by putting something up on the page, even if minimal, along with relevant links that can generate revenue.

Ari,

Thank You ,Thank You, Thank You,

Build , Build ,Build.. it not only gives you a layer of "protection" but increases the value of your domains by virture of search engine inclusion, ranking and increased traffic..

..each domain should support itself .. if it isnt then it's just another dependent..and these you cant write-off !

[pljones]

I agree with Ari on the classes of domains above. I'd add that regardless of what WIPO says about expanding the UDRP to add protections for geographic names, and the troubling recent decision in the Potsdam case, the trend in cases involving city names has been to reject those cases. So, feel safe that you can defend your registration of NewOrleans.org. Plus, there are probably some internet tobacco sites that would be interested in cigars.info, so that could be a valuable name.

[Ari Goldberger]

"I'd add that regardless of what WIPO says about expanding the UDRP to add protections for geographic names..."

The proposed changes to the UDRP, as recently voted on, are only directed to country names, not all geographic names. Also, the mere addition of country names to the UDRP simply would give country names the same status as trademarks. The trademark owner would still need to prove lack of legitimate interest and bad faith registration and use.

[pljones]

While the WIPO recommendations apply to country names, it has not stopped panelists and complainants from citing to these efforts in cases against city names. It will be interesting to see what the 4th Circuit has to say about this issue in the Barcelona case.

WIPO hasn't yet explained how it would amend the UDRP to provide for protection on country names & what language it would insert into the policy. So, we wait.

[Ari Goldberger]

Barcelona.com was a horrible decision, and my fingers are crossed for the 4th Circuit. However, keep in mind that in Barcelona.com, the city counsel did have a registered trademark --even though it was not for the exact term "Barcelona." Thankfully, almost every other city name UDRP decision has gone in favor of the domain name owner. The biggest mistake in the Barcelona.com decision was the owner's failure to elect the case to be decided by a 3-member panel.