Welcome to our summary for last week – a very interesting week in the world of domains and trademark protection! We are pondering the debate regarding this week’s development from the US Patent and Trademark Office.
Here’s the background:
Trademarks for TLDs
By Mary Iqbal, September 1, 2013
“TLDs today are currently ineligible for Trademark protection on the basis that they do not constitute a source-identifying mark. The USPTO is currently in the process of rectifying this situation … the USPTO is proposing that before a Trademark for a Registry Services provider can be granted, that Registry Services provider must sign a contract with ICANN to provide Registry Services. …
By requiring an ICANN contract before a Trademark can be issued, the USPTO is, in effect, putting a California corporation in charge of determining who is eligible for U.S. Trademarks in this industry. Moreover, ICANN, in the event that two applicants are vying for the same TLD mark, has announced their intention of accepting bids from the competitors, with the brand being given to the highest bidder. Therefore, U.S. Trademarks for one of the most cutting edge industries in the world may soon be sold to the highest bidder.”
The Legal Rights Objection process has made it clear that registering a trademark and then using it to try to gain access to a new TLD (a process called “front-running”) is not looked upon kindly by ICANN and its dispute-governing bodies. However, is this opposite approach an over-correction? What’s the best way to protect intellectual property and internet freedom while assuring a level of consumer trust in the sites they are using? Tell us your thoughts in the comment below!
There were some interesting UDRPs decided as well. In this three-person panel, one of the three dissented, and wrote a long opinion explaining why.
Vertical Axis Loses UDRP On 9 Year Old ParisOpera.com and 7 Year Old OperaParis.com
By Michael Berkens, September 3, 2013
What do you think? Did the Respondent operate in bad faith, or simply use two dictionary words in a way that corresponded to their meaning to build up a business?
American Airlines was a little quicker to respond to this new domain registry with a UDRP—but not quick enough, as it sat un-registered for two years before the Respondent went for it:
American Airlines Files UDRP Over F Bomb Domain Name
By Michael Berkens, September 5, 2013
While we are use to seeing companies going after “sucks” domains its pretty rare to see a company going after a domain containing the F bomb. This appears to be only the 8th UDRP ever filed over a domain containing the F Bomb and only the 2nd since 2007. By contrast there have been 107 UDRP filed over domains containing the word “sucks”.
Meanwhile, ladies and gentlemen, a milestone has been reached:
ICANN Announces Conclusion of New gTLD Initial Evaluations
Major Milestone Reached in New Domain Program
ICANN Press Release, August 30, 2013
Despite all the delays, the new gTLDs are in fact making progress!
And finally, two items to consider: there was an interesting trend of thought-provoking articles on reminding us of the global reach, impact and experience of the internet. On CircleID, Katim S. Touray urges ICANN to actively support developing nations, and John Yunker reminds us of the many internet users who are having to use not just foreign languages but a foreign alphabet to access the internet, predicting that “The Next Internet Revolution Will Not Be in English“.
And in a particularly dramatic story, DotConnectAfrica is refusing to withdraw their application for .Africa.
A delayed evaluation “pass” score for .Africa competition
The Reporter [Ethiopia]
August 24, 2013
Sophia Bekele, whose Company, DotConnectAfrica (DCA) Trust was one of the contenders for the .africa gTLD web address name, said: “A lot of progress has been registered during the past six years, especially managing a global promotional campaign to raise awareness about .africa and new gTLDs and the work of ICANN in general; and to also explain to people and different organizations how Africa and Africans would benefit from the introduction of the new gTLD”. She also said, “a lot of challenges in terms of effort, resources, and communicating the .africa message to enable realignment of fixed mind-sets”, and added that her company was overcoming these various challenges. …
DotConnectAfrica got the credit for propelling the idea worldwide making .africa among the most anticipated domain. From our research after the .africa was introduced, competition set in but unfortunately also came personal interests that have convoluted and infiltrated the entire application and endorsement process.
It will be interesting to see how this one goes...