Steve Levy ⬥ 17 May
Google Inc. recently filed a UDRP Complaint with the National Arbitration Forum over 763 domain names that all contained its trademark, “Google” followed by another word or phrase, including generic terms, celebrity names, geographic terms, and other brand names. The Respondent, Chris Gillespie, argued that the word “google” has become a generic verb meaning “to search the Internet,” and as such, the dispute over these domain names was outside the scope of the UDRP.
When someone goes and registers 763 domains that contain one of the world’s most famous trademarks, you have to wonder what exactly was going through that person’s head. Here, Gillespie claims that the term “Google” has become a generic synonym for the concept of searching for something online. He even went so far as to file an unspecified action at the Trademark Trials and Appeals Board (TTAB) to have the word declared to be generic. However, like all plans that “seemed like a good idea at the time,” Gillespie got over-confident and grabbed a number of domains that can be described as double squatting, including GoogleDallasCowboys.com, GoogleStateFarm.com, and GoogleWellsFargo.com.
This puts Gillespie in the highly awkward of having to argue that i) the word “google” is being used generically and that ii) the second famous trademark is being used nominatively. This pretzel logic was simply too much for the UDRP Panel, who found the domains were registered for the purpose of selling, renting or otherwise transferring them to Google or its competitors, and that the registration of such a large number of domains in such a short period of time amounted to a pattern of bad faith conduct. As for the TTAB case, the Panel found that it wouldn’t affect other Google trademark registrations in the U.S. and around the world, and so was of minimal relevance to this case.
It can seem like an incredible win when a brand is able to recover a large volume of domain names from a single squatter, but it also raises questions about what the brand in question is to do with the domain names after the fact. For every domain name in a company’s portfolio, that company must pay an annual renewal fees. So when a company suddenly adds hundreds of new domains in one fell swoop, it can see its annual costs jump significantly. While it was definitely a smart move for Google to take these domains out of the hands of a squatter, it will now have to determine which are worth keeping, and for how long.