image1-150x140On October 10, 2012, Name.Space, Inc. filed a lawsuit in federal court against the Internet Corporation for Assigned Names and Numbers (“ICANN”). The suit challenges ICANN’s plan to rollout its generic Top Level Domain Name (“gTLD”) program based on Name.Space’s claim that it already owns hundreds of existing TLDs and that ICANN’s actions have violated U.S. anti-trust and trademark law.

Name.Space’s TLDs and the DNS Root Zone:
Name.Space’s claims are based on ICANN’s control over the Domain Name System (“DNS”), and specifically the “Root” (or “A Root Server”) file that acts as the equivalent of the Internet’s Yellow Pages, routing users that type in domain names, like www.domainskate.com, to web addresses comprised of lengthy, numerical IP addresses. Name.Space alleges that it’s “TLDs have been shut out of the DNS by ICANN and its 
predecessors, and forced to operate its own network of TLDs.” The difference, from the user perspective, really boils down to the default network settings people’s devices download from their office or ISP automatically – default settings that do not recognize Name.Space’s TLDs. Thus, since 1996 Name.Space has been operating a number of TLDs like .art, .blog, .book, .design, .home, .inc. and .sucks, but the only way to get to those sites is to make some technical adjustments to your computer’s browser settings – something most people will never do or simply can’t. Search engines like Bing and Google do not appear to index the websites in the Name.Space TLDs as part of their search protocols.

Nevertheless, Name.Space, its TLDs, and its cordoned-off DNS have existed for over a decade — in fact, longer than ICANN — and while it may not be the most popular kid on the block, its continuous operation may constitute a “use in commerce” for Lanham Act purposes. What this means is that Name.Space may have trademark rights in the TLDs accessible from its DNS, e.g. .art, .blog, .book, .design, .home, .inc. and .sucks, to the exclusion of any TLD’s that ICANN would seek to rollout out on the A Root Server. Accordingly, Name.Space argues that ICANN’s intention to roll out new TLDs is likely to cause confusion (the focal point of trademark law) amongst users, who will mistake the gTLD’s found on the Root as Name.Space gTLDs. Name.Space also asserts contributory and vicarious liability theories against ICANN for allegedly facilitating the infringement of Name.Space trademark rights.

Name.Space’s 1997 Anti-trust Litigation:
Name.Space is no stranger to litigation over its TLDs and the DNS Root Zone. In 1997 it filed a lawsuit against Network Solutions Inc. (“NSI”) charging NSI, under U.S. law, with violation of the Sherman Antitrust Act because of its refusal to reprogram the A Root Server so that it would recognize the Name.Space gTLDs. NSI was the exclusive operator of the DNS Root Zone (by contract with the U.S. government) until the U.S. Department of Commerce (“U.S. DOC”) transferred operations to ICANN in 1998. Name.Space also asserted that Amendment 11 to the Cooperative Agreement, which at the time required NSI to obtain permission from the U.S. DOC before it altered the A Root Server to recognize additional gTLDs, was a prior restraint on protected free speech in violation of the First Amendment.

The District Court rejected Name.Space’s arguments, and awarded NSI summary judgment largely based on its finding that NSI held a broad federal immunity as a result of its relationship with the U.S. DOC. Name.Space appealed and the Second Circuit affirmed summary judgment, but for different reasons than the District Court. Instead, the Second Circuit held that NSI’s refusal to add gTLD’s to the A Root Server was immune from challenge under the Sherman Antitrust Act because it “was compelled by the explicit terms of NSI’s agreement with a government agency and by the government’s policies regarding the proper administration of the DNS.” Thus, the Second Circuit found that NSI held a “conduct-based immunity” (not a broader federal immunity) — “‘[p]rivate parties, to the extent they are acting at the direction or with the consent of federal agencies, also fall outside the pale of the Sherman Act,’ where the complained of acts were specifically directed by the federal government.”

The Second Circuit also rejected Name.Space’s first amendment claim, but again for different reasons. Whereas the District Court held that “Internet alphanumeric addresses are not speech but are ‘rather like telephone numbers…” the Second Circuit reasoned that although the present 3-letter TLDs were not “speech”, it was possible that a TLD could be speech if it were not so limited, stating: “the existing gTLD’s are not protected speech, but only because the current DNS and Amendment No. 11 limit them to three-letter after-thoughts such as .com and .net, which are lacking in expressive content.” Thus, the Second Circuit did not address whether longer/more expressive TLDs could rise to the level of “speech.”

The Second Circuit’s decision will be an interesting part of the newly filed litigation. ICANN could try to use the decision as the basis to have Name.Space’s anti-trust claims dismissed, arguing that ICANN has the same immunity that NSI had (at the very least) as a result of its present contractual relationship with the U.S. DOC.

Name.Space’s Trademark Claims:
Next, with respect to Name.Space’s trademark claims, despite the ingenuity of Name.Space’s arguments, it has several challenges in terms of establishing itself as a “trademark rights holder” in its TLDs. First is the hard reality that while Name.Space has been around for a long time few people know its TLDs even exist. Thus, arguing that there is a likelihood of confusion could be an uphill battle, as common law trademark rights are directly limited by the degree of exposure and brand recognition that a mark possesses.

Further, Name.Space notes in the Complaint that in the past “the U.S. Patent and Trademark Office (“USPTO”) regard[ed] TLDs as generally serving no source-indicating function.” Even so, it argues that the USPTO has evolved from this position, stating: “The USPTO’s prior stance on the function of TLDs as generally not being source indicating is a relic of an essentially exclusive ‘.com’ era, which is rapidly” ending, and that “a]s the number of available TLDs is increased by [ICANN], or if the nature of new TLDs changes, the examining attorney must consider any potential source-indicating function of the TLD and introduce evidence as to the significance of the TLD.” See Pars. 84 and 85, Name.Space Complaint. Regardless, establishing common law trademark rights will not turn on USPTO procedure and it is unclear from the complaint how the Name.Space gTLDs would qualify as a mark when the terms – which are as defined generic – would not seem to point to Name.Space as the commercial source.

Conclusion:
ICANN and Name.Space have had a long and contentious history which goes back before the year 2000 when Name.Space applied to register 118 gTLDs with ICANN on the A Root Server only to have its application allegedly kept in limbo. At that time the application fee for multiple TLD strings was U.S. $50,000 and Name.Space applied for 118 strings. The same application fee for those strings in 2012 would be almost U.S. $22 million. Beyond the millions of dollars at stake for Name.Space, the lawsuit also raises fundamental questions about ICANN and its control over access to the main “Internet”, the legitimacy of other “parts” of the Internet not controlled by ICANN, and how those “parts” co-exist with the main Root Zone...