Microsoft’s Plans For gTLDs

There is a certain irony in hearing Microsoft argue about “anti-competitive” rules and competitor activities. At any rate, Microsoft applied for eleven (11) new gTLDs in the first round, some of which are unique brand names. However, others are descriptive terms that also function as “arbitrary” trademarks – i.e., marks that have common meanings that can be used in multiple contexts. Microsoft’s applied for extensions are: .microsoft, .windows, .xbox, .office, .docs, .bing, .skype, .live, .skydrive, .hotmail and .azure.

So what is Microsoft going to do with these extensions if it gets them? Craig Mundie, Microsoft’s Chief Research and Strategy Officer posted on the company blog in June 2012 that Microsoft’s strategy for the new gTLDs is still developing:

Our goal for our new TLDs is to promote responsible utilization of the Web and ultimately better experiences for consumers. Although we’re not yet talking about specific plans for the TLDs for which we’ve applied, we believe that – properly used – this expansion of domains can help deliver new services and capabilities to consumers and the Internet community as a whole. Appropriately utilized, the new TLDs can also protect the rights of trademark holders and brand owners, while promoting a safer and more secure computing experience.

This is pretty bland stuff, though I am going to bet the last line about protecting trademark holders and a more “secure computing experience” means that Microsoft is not going to become the “.CO” of the new gTLD world and open up its extensions and allow the public to register domains – domains that could easily corrupt Microsoft’s stated goals and sully its own marks. But that should not be a problem. How Microsoft chooses to utilize its registries is up to Microsoft – simply selling domain names in a given registry is but one of many ways to utilize a registry – so it seems odd that Microsoft would object to other companies doing the same thing.

The case is timely for a number of different reasons, one of which is because ICANN has opened the time period for commenting on the subject of “closed generic” TLD applications and whether there should be specific requirements for this type of an application. So far there have been seven (7) comments filed, including one from Microsoft.  Microsoft filed an objection on the basis that it believes allowing entities to own terms like .song, .book, .blog, or .jewelry and close them off to the public will be harmful and anti-competitive creating Internet “walled gardens”.

However, if new gTLDs are considered “generic” for trademark purposes as well, is there any reason for Microsoft or others to argue against closed spaces when they can create nearly identical registries on their own without concern about trademark infringement?

The “Arbitrary” Trademark Perspective

From a trademark perspective the Microsoft argument is a very slippery slope. If you are going to stop individual companies from owning (and closing) generic TLDs what about common terms that also function as arbitrary trademarks? Arbitrary trademarks are those marks that are common terms that can be used in different contexts. Should those be kept out of the new registry space because those terms have descriptive meanings? Let’s look at how this might work.

Microsoft is looking to get .windows, .office, .docs, .live and .azure – all of which have normal descriptive meanings, but are also part of the Microsoft family of marks. Even so, if Anderson Windows, or the U.S. Window Manufacturing Association were to file an application for .windows they would NOT have to assert trademark rights they use the gTLD within its ordinary meaning. Microsoft could not plausibly object to such use – it does not own the term “windows” for every manner of use.

Furthemore, gTLD owners are not going to be able to stop subsequent applicants from registering variants of generic or descriptive terms. For example, Amazon may end up owning .book and .store but Walmart could apply for .ebooks, .bookstore, or .jeweleryshop. If this happens, could Amazon object to Walmart’s application on the basis of “string confusion”? The New gTLD User Guidebook adheres to basic principles of trademark law and requires, as a threshold matter, that the objecting party have actual trademark rights. Thus, the first question would be whether the owner can have trademark rights in that gTLD? The answer until now has been a resounding NO. See In re Oppedahl & Larson LLP, 373 F.3d 1171,1173 (Fed. Cir. 2004) (“the term ‘.com’ is a top level domain indicator (TLD) without any trademark significance” and “‘.com’ has no source-identifying significance.”).Buy Depakote XR 500mg online at lowest discount price. Free shipping on many products buy depakote. Buy Depakote 500mg online at lowest discount price. Free shipping on many products. Licensed and certified Canadian pharmacy. Why should you buy Depakote online? You save time and money by shopping online pharmacy. You can order Depakote without prescription with home, order depakote online cheap. Buy Depakote online from our drug store, useing your Visa or MasterCard. We have safe and secure billing….