Judge Sides With Google In Domain Name Dispute
- by Wendy Davis @wendyndavis, September 12, 2014
People might use the word “google” as a verb, but Google still has a valid trademark in its name, a federal judge has ruled. “The primary significance of the word google to a majority of the public who utilize internet search engines is a designation of the Google search engine,” U.S. District Court Judge Stephen McNamee in Arizona wrote in an opinion issued on Wednesday.
The decision rejected a request to rule that Google's name had become too “generic” to warrant trademark protection.
The ruling stems from a 2012 lawsuit filed by entrepreneurs David Elliot and Chris Gillespie, who sought to invalidate Google's trademark in its name. In March of that year, they purchased 763 domain names that incorporated the word “google” in them, like googledisney.com and googlegeorgeclooney.com.
Elliot and Gillespie said in court papers that they did so to further their online business, which they said “will promote commerce, community, relationships, personal health, charity and more.”
They also said the business venture would initially target the gay and lesbian community, but would later be broadened.
Elliot and Gillespie didn't elaborate in the complaint, but Google said in its court papers that the domains initially took users to TGN.xxx, which promoted sites called “The Gay Network.” The top level domain of “.xxx” indicates the sites would be pornographic. The domains later took users to landing pages populated with pay-per-click ads, according to Google.
Soon after Elliot and Gillespie purchased the domain names, Google brought a complaint under the Uniform Domain Name Dispute Resolution Policy. An arbitrator sided with Google and ordered the domain names transferred to the search company.
Elliot and Gillespie then sued in federal court to invalidate Google's trademark. “The primary significance of the registered marks to the relevant public is that of the generic name and interchangeable with the act of an online search,” they alleged.
They cited a variety of evidence showing that people use the word as a verb, including the American Dialect Society's 2010 declaration that “google” was the word of decade.
Google defended its name by presenting evidence of a survey in which more than 93% of respondents identified Google as a brand and not a common name.
McNamee sided with Google, ruling that the word could serve as a trademark regardless of whether the general public used it as a verb. “It is ... contrary to both the letter and spirit of trademark law to strip a mark of legal protection solely because the mark -- cultivated by diligent marketing, enforcement, and quality control -- has become so strong and widespread that the public adopts the mark to describe that act of using the class of products or services to which the mark belongs,” he wrote.
You7 basically have to fail to police your marks and do nothing to stop people from considering rhem generic to lose protection. These guys should have sued first if they wanted to make money off someone else's name, by first getting a court to say the trademark owner wasn;t policing the maek.