Advertise.com, Inc. v. AOL Advertising, Inc., Nos. 10-55069, 10-55071 (9th Cir. Aug. 3, 2010)

AOL owns trademark registrations covering various stylized representations of the mark “ADVERTISING.COM.” On August 17, 2009, AOL filed a complaint against Advertise.com, followed by a motion for a preliminary injunction, alleging that the Advertise.com domain and name were infringing upon the ADVERTISING.COM mark held by AOL. The district court granted AOL’s motion for a preliminary injunction and enjoined Advertise.com from using “any design mark or logo that is confusingly similar to the stylized forms of AOL’s ADVERTISING.COM marks” and from using the designation and trade name Advertise.com, but not from using the existing domain. The district court’s decision was based upon a finding that AOL was likely to show that the ADVERTISING.COM marks are descriptive and therefore protectable under trademark law. Advertise.com appealed the decision and the grant of the preliminary injunction with an argument that AOL’s marks are generic; the Court of Appeals agreed with Advertise.com and reversed the lower court’s decision and vacated the preliminary injunction.

Because ADVERTISING.COM is a registered trademark, there is “a presumption of validity,” which “places the burden of proving genericness upon the defendant,” Advertise.com. Filipino Yellow Pages, Inc. v. Asian Journal Publ’ns Inc., 198 F.3d 1143, 1146 (9th Cir. 1999). In order to show that the associated marks are generic, Advertise.com is required to show that the terms refer to “the genus of which the particular product or service is a species,” i.e., the name of the product or service itself. The services offered by AOL under the ADVERTISING.Com marks are (1) developing relationship with web publisher for the placement of third-party ads on publisher’s sites, and (2) selling online advertising space and marketing campaigns to web marketers. According to the court, “advertise” is concededly generic and the term “.com” refers generically to an online organization or any internet component of an existing business. The two components of AOL’s marks therefore are generic by themselves. While two generic terms brought together may create a distinctive mark, the court went on to find that this was not the case for AOL after applying the “who-are-you/what-are-you” test.

A valid and protectable trademark answers the buyer’s questions “Who are you?” and “Where do you come from?” Alternatively, a generic mark answers the question “What are you?” In applying this test the court determined that AOL’s marks were largely generic. If any of AOL’s competitors

Domain Names Are “Located” Where the Registrar is Located
Office Depo, Inc. v. Zuccarini, 2010 WL 669263, No. 07-16788 (9th Cir. Feb. 26, 2010).

Appellant Zuccarini registered the domain name “officdepo.com” and Office Depot subsequently brought, and won, an action against Zuccarini under the Anticybersquating Consumer Protection Act of 1999 (“ACPA”). Office Depot obtained a judgment against appellant, which it assigned to DSH. DSH sought to levy upon some of the other 248 domains owned by appellant and registered the judgment in the district court for the Northern District of California. The district court denied DSH’s request to compel the domain registrars to transfer Zuccarini’s property, holding that under California Code of Civil Procedure § 699.040, it could not order a third party to turn over property. DSH then moved for the appointment of a receiver who would obtain and sell the domains to satisfy the judgment. The district court granted the motion and Zuccarini appealed.

A district court can obtain quasi in rem jurisdiction over property held within its geographical borders, including intangible property. Under §§ 695.010(a) and 699.710 of the California Code of Civil Procedure, all property of a judgment debtor can be used to satisfy a writ of execution. The applicable state and federal provisions declare that if the domain names are property subject to execution, and if they are located in the Northern District of California, then the district court is an appropriate location to execute judgment on them through the appointment of a receiver.

“[A]ttaching a situs to intangible property is necessarily a legal fiction; therefore, the selection of a situs for intangibles must be context-specific, embodying a ‘common sense appraisal of the requirements of justice and convenience in particular conditions.’” Af-Cap Inc. v. Republic of Congo, 383 F.3d 361 (5th Cir. 2004). While California law does not specifically address the location of domain names, the ACPA states that a trademark owner in a cybersquatting action can proceed in rem against a squatter “in the judicial district in which the domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain is located . . . “ 15 U.S.C. § 1125(d)(2)(A).

The court found the language of the ACPA persuasive and concluded that under California law, domain names are located where the registry is located for the purpose of asserting quasi in rem jurisdiction.