October 10, 2018
N.E.3d 859] CIVIL ACTION commenced in the Superior Court
Department on August 2, 2017. A motion to dismiss was heard
by Karen F. Green, J.
Berthiaume (Zachary C. Kleinsasser also present), Boston, for
Prophett, Raynham, for the plaintiff.
Neyman, Ditkoff, & Englander, JJ.
this case we consider whether the Internet domain name
"OrderMyOil.com" is entitled to trademark
protection under Massachusetts common law. On the complaint
before us, we hold that OrderMyOil.com is a generic name that
is ineligible for such protection. Accordingly, this case
presents the rare instance
in which a trademark claim was properly dismissed under Mass.
R. Civ. P. 12 (b) (6), 365 Mass. 754 (1974).
plaintiff, United Oil Heat, Inc., doing business as
OrderMyOil.com, delivers home heating oil to customers in
Massachusetts, southern New Hampshire, and northern Rhode
Island. The plaintiff’s website, using the Internet domain
name OrderMyOil.com, went live in August 2008. As its name
denotes, the website allows customers to order heating oil
online for delivery. As of August 2, 2017, OrderMyOil.com had
over 20,000 registered users, had sold over fifteen million
gallons of home heating fuel, and had "done
approximately $52,000,000 in revenue." The plaintiff
marketed OrderMyOil.com through various media outlets.
OrderMyOil.com also had a Facebook page with over 900
"likes," and delivery trucks displaying
OrderMyOil.com thereon. The plaintiff does not allege that it
registered OrderMyOil.com as a trademark in the United States
or in any other jurisdiction.
February of 2016, the defendants, M.J. Meehan Excavating,
Inc., and Michael Meehan, began using
"OrderYourOil" in connection with their home
heating oil delivery services. OrderYourOil is a supplier of
home heating and diesel fuel. The complaint alleges that the
defendants offer the same goods and services as the
plaintiff, in the same geographic areas. The defendants’
website likewise allows customers to order heating oil online
August 2, 2017, the plaintiff filed its complaint in the
Superior Court, alleging common law trademark infringement,
trademark dilution [129 N.E.3d 860] under G. L. c. 110H, �
13, and violation of G. L. c. 93A, �
11. The defendants moved to dismiss
the complaint under Mass. R. Civ. P. 12 (b) (6). Following a
hearing, the judge issued a written decision and order
allowing the motion. The judge concluded that OrderMyOil is
a generic name that is not entitled to trademark protection,
and that the plaintiff failed to state a claim for trademark
infringement, trademark dilution, or violation of G. L. c.
93A. Judgment entered for the defendants. The plaintiff now