Image Online Design v. CORE Associates

Citation: Image Online Design, Inc. v. CORE Assoc., 120 F.Supp.2d 870 (C.D. Cal. 2000)(full-text).

Factual Background
In anticipation of the generic top-level domain (“gTLD”) “.web” possibly being approved by ICANN, plaintiff used the mark “.web” in connection with domain-name registry services relating to the “.web” gTLD. All of plaintiff’s activities involving the “.web” gTLD were done on a preregistration basis only because that gTLD had not been approved. When defendant began providing domain-name registry services in connection with the anticipated gTLD “.web,” plaintiff brought suit alleging, among other things, false designation of origin.

At issue here was defendant’s motion for summary judgment on the ground that plaintiff lacked enforceable rights in the term “.web.” In granting defendant’s motion, the court first found that “.web” did not function as a trademark, i.e., a source indicator, to the relevant consumers &mdash; domain name registrants and website visitors. Potential registrants were not likely to believe that all domain names ending in the anticipated gTLD “.web” were registered by or emanated from a single source because numerous registrars can register domain names. Regarding website visitors, the court noted that unlike second-level domain names, a gTLD “does not communicate information as to the source of the domain name’s registrar.”

The court also noted that (1) courts ignore gTLDs when analyzing trademark-infringement claims, (2) the PTO specifically provides that gTLDs do not have any source indicating significance, and (3) “.web” indicates a type of website, not the source of a website. In any event, the term “.web” would be generic for websites relating to the World Wide Web and thus not protectable as a trademark.

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