How can generic names be used in filing trademarks?
Monte: Now, in this particular case, you know, this is a good interesting thing to let people know about, when there is such a blatant case of misuse of a panel like this, what kind of penalty can the complainant receive for, you know, a clear violation of, you know, this particular protocol.
Ari: That’s a good question. Unfortunately, the ICANN doesn’t empower anyone under the UDRP to issue any type of penalty against the domain name owner or against the trademark owner. The only power they have is to transfer a domain name. It is possible to file a case afterwards, under the Anti Cyber-Squatting Consumer Protection Act, seeking damages for reverse domain name hijacking, but that’s an expensive process for the domain name owner to undertake. And it’s unclear, you know, what sort of damages would be awarded, you know, if the damages are your costs of hiring a lawyer to respond to the UDRP. The damages are probably not going to exceed what your costs of filing the Complaint in court would be.
Monte: Right, right. Now, I’m just interested, and it looks like there’s a couple questions on the chat board, what would give the examiners any kind of--why was this name even approved from a trademark standpoint? I mean, most generic names are not anyway, but were you able to look into why this was, in fact, approved as a trademark?
Ari: Well, you know, when you say most generic names aren’t approved, that’s not--first of all, no generic name can get approved as a trademark. People throw the word generic around rather loosely in the domain channel.
Monte: Right.
Ari: People use generic kind of as a synonym for a common word, and mess is a common word, too, but mess in trademark terms is only generic if it’s used in a way--
Monte: If it’s--
Ari: --to describe a product or service--
Monte: --[inaudible]--
Ari: --that means mess.
Monte: Right, right.
Ari: So for example, apple is a generic word if it’s used as a trademark to sell apples.
Monte: Right.
Ari: But, in fact, the way that Apple Computer uses it is, because the computer has nothing to do with apples. It’s a very strong trademark, it’s an arbitrary trademark, it’s not generic at all. So in this particular case, the web designer, I would say, was using Mess not in a generic fashion, they were using it in an arbitrary, fanciful fashion, which is easily granted as a trademark. The trick was, well Mess.com--the trademark offices should have been alert to the fact that, well Mess.com looks like an address and what’s happening at that address, and they should have looked into that. They didn’t and that’s why the trademark was granted. I think, you know, it would be nice if there was an understanding at the trademark office that you don’t get a trademark for something-com if you don’t own that domain name, ‘cause it’s unfair to the domain name owner.
Monte: Right.
Ari: But--
Monte: Now, you’ve had a lot of interesting cases, though. What’s like the--one of the top cases that you were able to win, and, you know, some of the more interesting cases that you’re able to win out of your list of decisions?
Ari: That’s a good question; let me think about that.
Monte: Well, heck, I--
Ari: Well, one is--
Monte: --see one is your own name, which is--
Ari: Oh, yeah.
Monte: -- EsqWire--
Ari: Yeah, EsqWire was an interesting one.
Monte: --.com, so that’s got to be interesting.
Ari: Well, EsqWire, you know, that’s a phenomenal case, because that is the case that got me into this whole industry. You know, prior to--I was not an intellectual property or Internet lawyer to start, I was just a basic litigation attorney in a big firm in Philadelphia, called Pepper Hamilton.
Monte: You mean one of the types of attorneys that most people don’t like?
Ari: Exactly.
Monte: Oh, I see.
Ari: Exactly. Believe it or not, there’s people that don’t like this attorney, as well, I guess particularly if they’re on the other side. But, yeah, I was working as a defense lawyer, and it was really what I had planned on doing. I always kind of wanted to be the attorney. I wanted to be out on my own, but did well in law school and the big firm was the place to go at the time, and I was just kind of learning there. But all along, I had wanted to go out on my own, and one of the ideas I had was having a network for lawyers, a computer network for lawyers, for other people like myself to operate on their own, but to have an infrastructure, and this was before people knew about the Internet or the information highway. There was CompuServe, there was AOL, and that’s about it, and my idea was to create kind of an AOL for lawyers, and the name that I came up with was EsqWire. At the time, we weren’t really talking wireless, and wire was the thing, you know, you’re wired.
Monte: Right.
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