Tiny start-up secures .bank gTLD trademark

Kevin Murphy, January 12, 2012, 18:29:24 (UTC), Domain Registries

A likely new gTLD applicant has secured a US trademark on the term “.bank”.

Asif LLC, a Wisconsin start-up with an undisclosed number of employees, won approval for the trademark 4,085,335 on Tuesday, for use in “domain name registration services”.

(UPDATE: Asif actually does business now as Domain Security Company LLC, but the trademark application was filed under its former name.)

As Domain Name Wire reported last year, Asif became a Go Daddy reseller in order to provide the US Patent & Trademark Office with proof it was using the brand.

It appears the gambit was successful, and the company now has a card to play in its inevitable battle with other .bank applicants, such as the BITS/American Bankers Association project.

Mary Iqbal, Asif’s CEO, told DomainIncite today that the company also has a trademark pending in Pakistan, where it has existing business connections.

Iqbal says she’s serious about her .bank application. It’s an idea she’s been working on for a few years.

Asif has been talking to security companies about providing the security infrastructure for the gTLD and has already signed up with a registry back-end provider, she said.

All she was prepared to disclose at the moment is that one of these partners has “ground-breaking encryption technology” and that the company has solid plans for its security profile.

The .bank gTLD would of course be limited to manually verified financial institutions, Iqbal confirmed.

Explaining the reseller site used to get the trademark, Iqbal said: “We intend to use that in future to sell .bank domain names but for now we’re selling names in other TLDs.”

Asif also has a pending US trademark on “.secure”, which it also plans to apply for as a gTLD.

Iqbal said that the company plans to offer small and medium sized e-commerce businesses extra security services if they redirect their customers to their .secure domain at the checkout.

While I am unaware of any other public .secure applicants, the .bank gTLD is expected to be contested.

A joint project of the American Bankers Association and BITS, part of the Financial Services Roundtable, has already essentially confirmed that it plans to apply for .bank and possibly two other financial gTLDs, using Verisign as its back-end.

“We don’t know for sure if they’re going to apply for .bank,” Iqbal said, however. “If somebody else does apply, all I can say that we are the legal rights holder for .bank.”

Holding a trademark on a term gives companies the right to file a Legal Rights Objection against new gTLD applicants.

However, as much as I love an entrepreneur, I estimate the chances of Asif getting its .bank application approved at roughly zero, trademark or not.

There are about half a dozen different reasons Asif would probably not pass the Legal Rights Objection test, which would leave it in a contention set with other .bank applicants.

The final mechanism offered by ICANN to resolve contested gTLDs is an auction, and nobody goes into an auction against the American Bankers Association expecting to win.

ICANN also encourages applicants in contention sets to talk it out amongst themselves before resorting to auction. If Asif is lucky, a rival .bank applicant will pay it to go away before the string goes to auction.

If it’s very lucky, somebody will acquire the trademark before the company – which Iqbal said is already funded but would welcome additional investment – splashes out $185,000 on its application fee.

The Asif .bank application also stands a substantial chance of being objected to by governments.

ICANN’s Governmental Advisory Committee, and in particular the influential US representative, has very strong views on gTLDs purporting to represent regulated industries.

If the GAC is faced with a choice between a .bank backed by the ABA and BITS with a Verisign back-end, and one backed by a tiny Wisconsin start-up, I believe there’s a pretty good chance the Wisconsin start-up is going to find itself on the receiving end of a GAC Advice objection.

Just a hunch.

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Comments (3)

  1. Andrew says:

    Much like the .secure trademark Asif got, this .bank trademark is on the supplemental register.

    • Kevin Murphy says:

      True, but I don’t think that matters too much when it comes to ICANN’s rules, where holders of unregistered rights are even eligible to file objections.

      If it were to go to court, however…

  2. Andrew says:

    Also worth noting the .bank trademark is for “Domain name registration services” rather than registry services. If they chose registry services the USPTO would have denied it.

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