question Generic 1 word .tv domain matches name of a TV channel. Any issues?

For some reason I can't edit my previous post.

Forgot the question mark? in the following phrase. I'm actually asking about this, not stating as a fact:

Generally something in the same industry/domain is a NO NO but in this case since it's extremely generic I'm in the clear?

ngignac said:

The term in my domain is VERY generic.

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Generic for what use?

Generic for televisions?

If you take something like "consume" in your example, it would be a generic term in the context of, say, eating. So, something like consume.food itself is a generic phrase. People consume food.

But if you are looking at something like "consume.tv" in the context of a television channel about food, then "consume" in that context is not generic. It's descriptive of the content of programming on the channel. There's a difference between generic and descriptive. Descriptive terms can become distinctive of the goods/services if there is longstanding and substantially exclusive use. What you might consider to be "generic" in the manner that term is casually tossed around by domainers, may or may not be generic. Since that's a legal distinction in the first place, you have already answered your question.

In assessing whether the domain name was or was not abusively registered, one consideration with what are more accurately generalized as "dictionary words" is HOW IS THE DOMAIN NAME BEING USED? Is the domain name being used for purposes which are consistent with its dictionary definition or not?

ngignac said:

in this case since it's extremely generic I'm in the clear?

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While I don't know what "extremely generic" means, this is kind of like saying to your doctor, "since I don't think there's anything wrong with my appendix, then I don't need an appendectomy?" Your doctor is going to have something of a quandary with that question if the doctor has not had a look at your appendix or whatever, since deciding whether or not there is something wrong with your appendix is what the doctor is going to determine in the course of examining you, instead of taking your word for it.

When we say things like "a generic term can't be a trademark", the point is that it can't be a trademark for whatever that term is generic FOR.

Is "Apple" a generic term, in your opinion?

Well, yeah, sure, it is a generic term for apples. It is not a generic term for computers.

"Generic" is not some kind of immutable property of a word. It depends on context. Here are some words which are generic for one thing or another:

Bravo, Showtime, Fox, Sky, Lifetime, Bet, Nickelodeon

In your opinion, which of those words, if any, is "generic" and which are not? All of them are well-known trademarks for cable television networks. All of them are "dictionary words". All of them have a generic meaning.

Is FOX "extremely generic"? Heck, I've got a den of them about a quarter mile from my house and on some nights they really make a racket. They regularly wander through the area at night, and sometimes you find them right outside the door.

So, hey, I thought the little guys might like their own YouTube channel, and I set up a night vision camera in my backyard to catch them on their nightly jaunts. I've decided to call it "Fox Television" and I registered fox.tv for it.

Do you think I might run into a problem with that plan to use an "extremely generic" word for a common woodland animal?

have you conducted a trademark search?

Cheers
Corey

There is not much clear information about your name.
Think about it from their point of view. Would you be concerned as a trademark holder if someone uses your mark + .tv ? If tld (.tv) corresponds to the trademark holders area of trade its just one more reason to be concerned.

These cases can help you better understand the issue:
https://www.dndisputes.com/case/dtv2000-0004/ (everyday.tv) - TRANSFERRED
https://www.dndisputes.com/case/dtv2011-0020/ (zip.tv) - TRANSFERRED
https://www.dndisputes.com/case/dtv2013-0007/ (figaro.tv) - COMPLAINT DENIED
https://www.dndisputes.com/case/dtv2015-0004/ (me.tv) - COMPLAINT DENIED

An Australian trade mark provides protection only within Australia. There are two ways Australian trade mark owners can seek trade mark protection overseas:

• Via an application filed directly to each country

• Via a single international application filed through the World Intellectual Property Organization (WIPO) nominating the Madrid Protocol countries in which protection is sought

IP Australia | Trade Mark Search

Cheers
Corey

Corey said:

An Australian trade mark provides protection only within Australia.

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This is somewhat misleading in the domain dispute context.

In a UDRP, the complainant has to prove three things:

1. The domain name is identical or confusingly similar to a mark in which it has rights.

2. The registrant has no legitimate interests - generally premised on use for some bona fide purpose.

3. The name was registered and used in bad faith - this is something of a grab bag of possible issues, but again, the important point is how the domain name has been used and whether that use relates to the TM owner (or, often, the domain name is not used, but the registrant is trying to sell it to the TM owner in particular).

So, forgetting about points 2 and 3 for a minute, the UDRP does not care WHERE the complainant's trade or service mark rights are, nor does the UDRP care whether the mark is registered or unregistered. If the complainant could show sufficient evidence of common law rights in Australia, then it really doesn't matter whether or not something is in the AU registered TM database. The first numbered item above is usually an easy hurdle to get over, making the meat of the dispute about how the domain name is being used, and why the respondent registered the domain name.

That's why 99% of the posts here on "Do you think this name is a problem?" are pointless. Sure, in the context of famous or well-known marks, that can be a tractable question. But the "I have a dictionary word domain name, and someone else has a trademark on it" category of question is all about the questions of "How are you using the domain name?" and "Why did you register the domain name?"' which hardly anybody ever seems to want to address.

I was referring to the op statement of Now there is a channel (Australia) that shares the same name

Cheers
Corey

@jberryhill You sir, are awesome.

When you buy a name, you should always have a good reason.
When you are aware of possible TM issues, you should have an even better reason.
In a UDRP the onus is on the respondent to demonstrate the registration was in good faith.
If there are TM issues the name may be harder to sell too. If your intention is to develop it, ask yourself if you want to risk stepping on somebody else's toes.
"When in doubt, get out, and don't get in when in doubt."

Corey said:

Now there is a channel (Australia) that shares the same name

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Yeah, it's kind of open-ended as well. Here's a bender of a .tv dispute I defended.

The name is - get this - channel.tv

Pretty much every TV channel is a channel, since "channel" is clearly a generic term in the television industry.

What made it interesting, though, is that the Complainant is a television channel in the Channel Islands of the UK. So, they are "Channel Television":

http://www.wipo.int/amc/en/domains/search/text.jsp?case=DTV2011-0008

On the first point (identical or confusingly similar):

In the view of the Panel, the Complainant has just got over the threshold for establishing unregistered rights in a name. Given the highly descriptive nature of the name, the scope of those rights will of course be very narrow. Nonetheless, it is unlikely that a competing broadcaster could lawfully trade under and by reference to the name "Channel TV" in the Channel Islands.

The disputed domain name is therefore identical to the Complainant's unregistered trade mark "Channel TV".


The Panel therefore finds that the Complainant has established the first element of paragraph 4 (a) of the UDRP Policy.

So, here we have a situation where (a) there is no registered mark, and (b) the domain name is "generic" in some sense in relation to television. But, sure, could some other broadcaster operate in the Channel Islands and call itself "Channel TV" - unlikely, even though it is geographically descriptive. The Complainant has been doing it long enough that such a situation would be confusing. The point is, their very limited common law rights are enough to satisfy whether or not they have some kind of trade or service mark right somewhere.

As the two other prongs of the UDRP unfold in that dispute, it becomes a matter of likelihood. In view of the limited scope of the Complainant's rights on a few small islands, is it reasonable to believe that someone in Maryland would have thought it was a good name for general interest to a purchaser in the television market more broadly?

For a word like "channel", sure. But for some hypothetical unknown word... who knows.

Now, I've never gone back and checked, but I would guess that in most of the decisions linked in my namepros signature, the question of whether the domain name was or was not similar to the mark in question was pretty much a given. Most of the time, I would suppose that it is. But that's not what these decisions revolve around.

If I had to characterize what I would guess to be the bulk of them, it would be a very few that don't get out of the starting gate with:

No, the domain name is not identical or confusingly similar to the mark.

Most of them are along the lines of:

Yes, the domain name is identical or confusingly similar to the mark, but:

(a) the domain name is senior to the mark, or

(b) the domain name is being used for something for which it is descriptive or generic, and unrelated to the mark.

Then there are other cases in which

(c) the respondent has some other rights in the term - i.e. it is an end-user respondent, as opposed to a domainer respondent.

Maybe someone could crunch the data on that

+ the op is Trying to sell to this Channel/media

what would apply the Australian Trademark law or the governing body of .TV's? @jberryhill

Cheers
Corey

But I never read too much into namepros members' self-assessments of what is or is not "generic".

Is "Fox" a "extremely generic" word for foxes? Sure.

It is also an internationally famous trademark for television network services.

Corey said:

+ the op is Trying to sell to this Channel/media

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Oh, yeah, I missed that.

Hopeless. Simply hopeless. Yeah, these people will be thrilled to hear from someone trying to sell them their own company name as a domain name. Surely, their happiness will overwhelm them and they'll pay twice the asking price, out of sheer delight.

Said no one, ever.

Here's an "extremely generic" television term for you: How about "Channel Five". I mean, hey, there are different television systems all over the world. Whatever is on "Channel Five" on your television tuner sort of depends on where you are. Right?

Okay, now, let's say a guy in Indonesia registers that as a domain name, and then gets hooked up with an over-eager domain broker who actively tries to sell the domain name to a particular Channel Five:

http://www.adrforum.com/domaindecisions/98415.htm

There's a lot that got left out of that decision, but these kinds of targeted sales efforts are virtually NEVER a good idea.

Corey said:

what would apply the Australian Trademark law or the governing body of .TV's?

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Domain disputes in .tv are subject to the UDRP. Under the UDRP, it's not a matter of whether "Australian Trademark law" applies. Australian trademark law is relevant to a UDRP simply as a matter of answering the question "Does the Complainant have trademark rights somewhere in this term?" It doesn't matter if the answer to that is "Yes, in Australia" or the US or the UK or anywhere else. The first question in a UDRP is:

1. Is the domain name identical or confusingly similar to a trade or service mark in which the Complainant has rights? WHERE those rights might be held is irrelevant to answering that question.

The next two questions both get to the issue of "has the respondent done anything which looks like it is premised on an intent arising from the Complainant's rights?"

Well, yah, contacting them specifically to ask them if they want to buy it is pretty much a no-brainer answer to that question.

Now, the facts don't always neatly align with that sort of inquiry, which is why questions like "what else has the respondent been up to" can become relevant as in, for example, the Cambridge.com dispute in which the broker had contacted literally hundreds of parties in Cambridge, Mass.; Cambridge, UK; etc., including the one who complained.

http://www.wipo.int/amc/en/domains/decisions/text/2015/d2015-1278.html

This Panel does not disregard that a continued attempt to sell a domain name for a price that indicates that the Respondent was targeting the Complainant may constitute an indication of bad faith by the domain name owner in the sense of paragraphs 4(a)(iii) and 4(b) of the Policy. However, the Panel has to consider all the evidence before it in order to find conclusions about the intentions of the Respondent and the above indication is not sufficient to effectively prove the Respondent’s bad faith.

...


Fourthly, the Respondent could also demonstrate that there is an economic rationale underlying the offer for a possible transfer of the disputed domain name to a third party. Indeed, whereas the term “Cambridge” refers to different and relevant geographical locations, it is plausible that there may be other market players potentially interested in acquiring the disputed domain name. The consequence of this competition for the disputed domain name is the elevation of the price of its transfer.

Another point I skipped over the in the OP is this gem:

ngignac said:

Generally something in the same industry/domain is a NO NO

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The industry is television, right?

It's a .TV domain name, right?

What sort of industry does anyone think a .TV domain name is useful for?

Now, sure .tv is the Tuvalu ccTLD, but there's no mystery about what makes their ccTLD commercially valuable.

So, you'd have a hard time arguing "Um, yeah, I registered a .TV domain name, but I wasn't thinking of anything having to do with television."

Wow. Really happy with the response I've received. Thanks everyone. Haven't read the entire thread yet but I might as well share the name at this point.

Binge.tv

Channel name is Binge.

Should also be noted that there is an app called BingeTV, a developed website called BingeTV (Domain is: myBingetv.com), a TV show called Binge among many other instances. (all different companies)

Another example. nytimes article stating we are in the Binge-TV age



Is it possible a TM becomes unenforceable in scenarios like this?

@jberryhill
@Corey

Corey said:

+ the op is Trying to sell to this Channel/media

what would apply the Australian Trademark law or the governing body of .TV's? @jberryhill

Cheers
Corey

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That's more of a backup plan. As stated in the original post I purchased with the intention of developing. Was just curious where I stood legally with alternatives.

do you have permission or a license from the Trademark holder?

Cheers
Corey

Corey said:

do you have permission or a license from the Trademark holder?

Cheers
Corey

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Can a trademark be enforced on it though.

Yes, particularly in Australia, especially the media.

IMHO you are borrowing trouble with a capital T

Cheers
Corey

Corey said:

Yes, particularly in Australia, especially the media.

IMHO you are borrowing trouble with a capital T

Cheers
Corey

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Could this fall under the fair use doctorine since it's common use (No idea if this is even relavant at all)

For example the following companies/products also operate: BingeTV app (not related), The Website BingeTV (not related), the tv show Binge (not related) are all active.

hard to say without knowing the domain name

Corey said:

hard to say without knowing the domain name

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Included it in Post 16.

Binge.tv

I have. But it's one of those situations where I'm not sure if it could be enforced.

Binge in my eyes is almost on par with the word Watch these days when it comes to television. Ex: I binge watched the new Stranger Things season. I hear it all the time.

There's a channel in the UK called W that was previously called Watch. I don't believe their TM was sufficient to lay claim on watch.tv. That's my belief about the domain I have.