Recent Case Notes & Commentary

Greenberg Traurig Win on Generic Expression Added to its Name to Create Domain Name

First, it is an interesting decision on the CONFUSINGLY SIMILAR issue when a trademark has a generic expression added to it. Secondly, what looked like a potentially interesting ‘SUCKS CASE’ disappeared and the case was easy to resolve on general principles.


The Complainant, of course, is the well known international law firm in New York. The Respondent registered the domain name <greenbergtraurigharassment.com> and linked it to law firms in competition with the Complainant. There was nothing on the record to show if the Respondent was a former client of the firm and the case was undefended.


The panellist held, first, that the expression word ‘harassment’ ‘… refers to employment law and harassment lawsuits and thus, is descriptive of Complainant’s business.’ Accordingly, the case fell into the same category of cases as Allianz of Am. Corp. v. Bond  (NAF case no.FA 680624) (2 June 2006), where the addition of the generic term “finance,” which described the complainant’s financial services business, enabled a finding of confusing similarity to be made.


The location of the word ‘harassment ‘after the firm name suggested that this might be a criticism case similar to Ginn Real Estate Company LLC v Hilton Wiener (NAF case no. FA 1211342) (20 Aug 2008) where the domain name ‘ginnlawsuit.com’ was being used to promote an action against the Ginn company, although it was open to the interpretation that it led to a website where a law suit by the company was featured. However, the Greenberg Traurig case turned out to be far more mundane and the fact that the domain name was being used to divert traffic to competitors of the Complainant had the usual consequence and led in turn to the Complainant succeeding.