United States: Ereferee.com Decision Proves Controversial

In a recent controversial decision, a Wisconsin federal judge has issued a preliminary injunction ordering the owner of eReferee.com to, among other things, stop using the word "referee" either alone or with other words in its domain names, directory names or other computer addresses.

The ruling has raised the ire of Internet commentators who see it as tantamount to giving one company ownership of a generic word. But a closer look at the decision and the surrounding facts shows that the injunction, while perhaps overbroad, does not signal a sea change in Internet jurisprudence.

The facts, as alleged by the plaintiff are as follows: Referee Enterprises, Inc. ("REI") has sold Referee magazine, a publication directed at referees, umpires and related sports officials, since 1975. REI owns trademark registrations for the mark REFEREE and for a "whistle/stripes" logo, both of which have acquired incontestible status. Referee magazine has 33,000 paid subscribers. REI has also operated a web site at referee.com since 1997, which is mostly used as an advertisement for the magazine, with subscription links, press releases and merchandise for sale.

In 1997, Right Sports, Inc. ("Right Sports") owner Jim Flores -- a subscriber to Referee magazine -- created a subscription based web site with news and other information for sports officials at the domain name cyber-ref.com, and later, planetref.com. In 1999, Flores approached REI about joining forces on a web site associated with Referee magazine, and acquired the domain name ereferee.com, apparently in the hopes that this would be the site of the proposed venture. REI declined.

Shortly thereafter, Right Sports obtained referee.org and dozens of other domain names incorporating the word referee, and changed the name of its web site from planetref.com to ereferee.com. Right Sports also started using a logo which incorporated a whistle and stripes. In July, 2000, Flores again approached REI about bringing Right Sports’ web site under the auspices of Referee magazine, and REI again declined.

REI first instituted a proceeding against Right Sports under ICANN’s Uniform Domain Name Dispute Resolution Policy to cancel or transfer the domain names ereferee.com, ereferee.net, and ereferee.org. The National Arbitration Forum, which handled the case, ruled in favor of Right Sports, saying that the mark REFEREE was a weak mark because the word "referee" was "generic," and that there was no showing of bad faith on the part of Right Sports (demonstrating bad faith is a requirement in an ICANN proceeding, unlike a in trademark infringement case).

REI then brought a federal lawsuit against Right Sports alleging trademark infringement, trademark dilution and unfair competition, among other claims. Right Sports main defense, according to their web site, is that the term "referee" is generic. On January 24, 2001, District Court Judge C.N. Clevert issued a preliminary injunction ordering Right Sports to stop using the word "referee" as a trademark in any form, including in domain names, directories or "otherwise in connection with the retrieval of data or information." The judge also ordered Right Sports to stop using their "whistle/stripes" logo.

Numerous Internet commentators quickly decried the decision. "To just give people rights to the English language and let them own certain words is not what trademark laws are about," said Jamie Love, director of the Consumer Project on Technology, on CNET News.com. "This is just silly pettiness," said a reader of Geek.com. "It’s time to update all copyright/trademark laws. The current situation is ludicrous," said another. "I can understand the magazine’s concern that people might get confused and go to eReferee.com when looking for the print magazine’s Web presence," said a writer on Geek.com, "but I think that’s really an outdated concern -- the days when magazines automatically put an e in front of their brand names to differentiate the website from the print version are long gone. . .. . most surfers now look for magazinetitle.com first."

There are a few who have voiced support for the decision. "Having two sites Referee.com and Ereferee.com is confusing, especially when it comes to things like search engines and so on," wrote one poster to the Slashdot.com web site. "I really can’t see any problems [with the decision]," said another. "If this happened in the physical world, there would be no complaint [about the decision], so why should the internet be any different."

So who’s right? The answer probably lies somewhere in between these extremes.

Part of the problem is that many of the articles written about the decision are misleading, such as Site Banned From Use of Word "Referee" Online, from International Data Group News Service. This headline is not true. Right Sports can still use the word "referee" on its web site as long as that use is a textual one, and not a trademark use. The same goes for the statement in the CNET News.com article that the judge "went beyond even the remedy requested by Referee magazine . . . he also prohibited the company from using the term ‘referee’ at all . . ." This statement, again, is not true.

Furthermore, it should be remembered that the decision is a preliminary injunction. It is not a permanent injunction, which may or may not issue when and if the case goes to trial, where the judge will be able to consider a more fully developed set of facts.

In addition, although a word may have a descriptive meaning, such as "REFEREE" this does not mean it cannot be protected as a trademark. In this case, the mark REFEREE is being used in a descriptive sense -- it is describing the audience and subject of the news, information and other goods and services that were being sold to sports officials. It was not, however, a "generic" use, as the ICANN decision claimed. The mark would have been "generic" if referees' services were being sold. Even if REFEREE is a "weak" mark, as the ICANN decision held, that does not mean that it cannot acquire distinctiveness through extensive use and advertising.

In the end, the strength of the mark does not matter so much as the question of whether the relevant public will be confused by the two uses. Here, the judge clearly believed that a web site called "eReferee.com" was likely to be confused with a web site at "referee.com" which catered to the same niche market.

Where the judge may have erred, however, is in the scope of the injunction. He banned the use of the word "referee" in any domain name or computer address, meaning that Right Sports cannot use domain names such as refereebooks.com, volleyballreferee.com, and referee101.com. It is doubtful that someone would believe that a web site at these addresses was the same as the web site at referee.com. Thus, it is likely that this portion of the injunction may be modified on appeal, or after the trial on the merits.

The parties have continued to do battle. Shortly after the injunction issued, Right Sports redirected traffic at the forbidden domain names to officiating.com. REI challenged this action as being in contempt of the judge’s order. Further, according to reports, REI’s attorneys also threatened to sue Right Sports if the magazine loses revenue due to a boycott threatened by referees angry at the decision. This latter rumor seems only to have further enraged those who thought the decision was unfair to begin with.

In the end, the decision does not appear to be one that will greatly affect Internet or trademark jurisprudence. What this case does show, however, is the difficulty that courts -- and indeed, everyone -- have with trademarks that consist of descriptive terms. It yet again underscores the questionable protection afforded a weak mark, and the enforcement efforts necessary to maintain that narrow protection.