The emerging law of domain names has been thrown a curve by a federal judge in Wisconsin who has ruled that the owner of eReferee.com cannot use the word "referee" in connection with its site. The ruling is a surprise in at least two respects. First, it reverses the prior decision of an arbitrator from the dispute resolution arm of the Internet Corporation for Assigned Names and Numbers (ICANN). To date, almost all ICANN arbitrators’ rulings have been affirmed by courts in the rare instances in which litigation has ensued.
Second, the judge’s ruling appears to grant Referee Magazine, the plaintiff, exclusive right to use the word "referee" in connection with online activities. Heretofore, arbitrators and courts typically have held that commonly used words are not exclusive even to parties who have trademarks on those words in connection with other activities. Although the magazine owner has a trademark protecting the word "referee" in connection with its paper publication, the court’s ruling would appear to provide it with exclusive rights to the English word "referee" for online use.
Domain name arbitrators have generally given protection to trademark holders with distinctive names and to celebrities, even if online users have added an "e" prefix. For example, unauthorized use of "eNike.com" has been prohibited. On the other hand, uses of generic names have not been blocked, even in instances where the name is trademarked for another use.
The case is likely to be appealed. Watch for more developments as laws relating to trademarks and domain names continue to evolve.
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