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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

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Image Online Design, Inc. v. Core Association, et al.

2000 U.S. Dist. Lexis 10259, 120 F.Supp. 2d 870 (C.D. Ca., July 21, 2000)

Court holds that the generic top level domain ".web", when used in connection with domain name registration services, is not a trademark entitled to protection, as it does not identify the source of such registration services, but rather the type of content one may expect to find on a web site containing the ".web" top level domain name.

In 1996, the International Ad Hoc Committee ("IAHC") proposed the creation of seven new generic top level domain names ("gTLDs"). One of the proposed new gTLDs was ".web", which was to be used to identify web sites run by "entities emphasizing activities related to the World Wide Web." To date, however these recommendations have not been adopted, and the seven proposed gTLDs are not operational. As a result, the World Wide Web will not associate domain names containing such gTLDs, including ".web," with a particular host server, or a web site found thereon.

Beginning in late 1996, plaintiff Image Online began performing "preregistration services" for those interested in securing domain names with a ".web" gTLD, which domain names will be of value if the gTLD ".web" becomes universally recognized.

As a result its activities, plaintiff claimed a common law service mark in the ".web" mark.

Defendant Core Association is an association of over 85 domain name registrars. Apparently, defendant CORE began competing with plaintiff by offering similar preregistration services to those seeking a ".web" domain name. Plaintiff responded by commencing this suit, in which plaintiff alleged that defendant's activities constituted unfair competition and false designation of origin. Plaintiff sought injunctive relief, enjoining defendant from further use of the ".web" mark.

Defendant moved for summary judgment dismissing the complaint on the ground that plaintiff had no protectable trademark rights in the ".web" service mark. The court agreed, and dismissed plaintiff's complaint.

As stated by the court: "[t]he purpose of trademark is to aid in the 'identification of the manufacturer or sponsor of a good or the provider of a service'". In other words, a trademark is a source identifier for a product or service. The court held that the mark ".web", when used by a domain name registrar as a gTLD, does not serve that function, as it does not identify the source of such services, either to those seeking to register a domain, or those seeking to visit a web site at a domain containing such gTLDs.

As to those seeking to register a domain name, the court held that they would not associate the ".web" gTLD with any particular registry, such as that operated by plaintiff. Rather, they would assume that any number of competing registers could have registered any given domain name. Said the court:

The relevant question as to the first customer is "Does .web point to Image Online, or any anonymous source, for the potential registrant?" Under the system as presently used, the answer must be "No, no registrant would believe that .web indicated a certain registrar." Under the current registration system, a registrant may obtain a domain name with .com, .net and .org gTLDs from numerous different registrars. Because all the registrars can register domain names using any of the three gTLDs, a gTLD is useless for the purpose of indicating source of registry. Consequently, there is no reason why a registrant would believe that .web provided any information indicating the source of registry.

Similarly, those who visit a web site would not utilize ".web" to determine that site's source. That function was performed by the site's second level domain name. The gTLD instead informed the user of the type of content he or she could expect to find on the site. Thus, by way of example, in the domain name, the user would use the second level domain name "ford", and not ".com" to determine the source of the site.

As a result, determined the court, plaintiff had no protectable trademark rights in the ".web" mark. Said the court:

Taken as a whole, the Court agrees with the PTO in its conclusion that a TLD and other non-distinctive modifiers of a URL like "http://www" have no trademark significance. As it is used in this case, .web does not point to any source, including Image Online. ... There is no trademark protection available for a mark that does not clearly point to a source of a service that may or may not be actually operational.

The court further held that were it to recognize plaintiff's use of ".web" as use of a mark, it would hold that ".web" was a generic mark not entitled to protection.

The court defined a generic mark as:

[t]he name of the product or service itself--what [the product] is, and as such ... the very antithesis of a mark." In determining whether a term is generic, courts have often relied upon the "who-are-you/what-are-you" test: "A mark answers the buyer's questions 'Who are you?' 'Where do you come from? 'Who vouches for you?' but the [generic] name of the product answers the question 'What are you?.'"

When used in conjunction with a web site, ".web" as a gTLD answers the question "What are you" - a web site related to the operation of the World Wide Web -- and not "Where do you come from." It is accordingly in this context generic, and not entitled to trademark protection. As a result of its conclusions, the court dismissed plaintiff's suit.

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