Company claims ownership of 482 new gTLDs

Kevin Murphy, March 22, 2012, 15:51:26 (UTC), Domain Registries

A small New York company has warned new gTLD applicants that it owns 482 top-level domain strings and that ICANN has “no authority” to award them to anybody else.

Name.Space claims it has ownership rights to potentially valuable gTLDs including several likely to be applied for by others, such as .shop, .nyc, .sex, .hotel and .green.

It’s been operating hundreds of “gTLDs” in a lightly-used alternate DNS root system since 1996.

Now the company has filed for trademark protection for several of these strings and has said that it will apply for several through the ICANN new gTLD program.

But Name.Space, which says it has just “tens of thousands” of domain registrations in its alternate root, is also claiming that it already owns all 482 strings in the ICANN root too.

“What we did is put them on notice that they cannot give any of these 482 names to anyone else,” CEO Alex Mashinsky told DomainIncite. “These names predate ICANN. They don’t have authority under US law to issue these gTLDs to third parties.”

“We’re putting out there the 482 names to make sure other people don’t risk their money applying for things ICANN cannot legally give them,” he added.

I could not find a comprehensive list of all 482 strings, but Name.Space publishes a subset here. Read the company’s full list here (pdf).

It’s a slightly ridiculous position. Anyone can set up an alternative DNS root, fill it with dictionary words and start selling names – the question is whether anyone actually uses it.

However, putting that aside, Name.Space may have a legitimate quarrel with ICANN anyway.

It applied for a whopping 118 gTLDs in ICANN’s initial “test-bed” round in 2000, which produced the likes of .biz, .info, .name and .museum.

While ICANN did not select any of Name.Space’s proposed names for delegation, it did not “reject” its application outright either.

This is going to cause problems. Name.Space is not the only unsuccessful 2000 applicant that remains pissed off 12 years later that ICANN has not closed the book on its application.

Image Online Design, an alternate root provider and 2000 applicant, has a claim to .web that is likely to emerge as an issue for other applicants after the May 2 reveal date.

These unsuccessful candidates are unhappy that they’ve been repeatedly told that their old applications were not rejected, and with the privileges ICANN has given them in the current Applicant Guidebook.

ICANN will give any unsuccessful bidder from the 2000 round an $86,000 discount on its application fees, provided they apply for the same string they applied for the first time.

However, like any other applicant this time around, they also have to sign away their rights to sue.

And the $86,000 discount is only redeemable against one gTLD application, not 118.

“We applied for 118 and we would like to get the whole 118,” said Mashinsky.

ICANN is not going to give Name.Space what it wants, of course, so it’s not clear how this is going to play out.

The company could file Legal Rights Objections against applications for strings it thinks it owns, or it could take matters further.

While the company is not yet making legal threats, any applicants for gTLDs on Name.Space’s list should be aware that they do have an additional risk factor to take into account.

“We hope we can resolve all of this amicably,” said Mashinsky. “We’re not trying to throw a monkey wrench into the process.”

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Comments (26)

  1. Jean Guillon says:

    Lucky .wine is not one of them
    :-)

  2. Gene says:

    Look for more of this sort of thing to continue to muddy the waters for the gTLD rollout(s).

    Prospective buyers who can afford $185K for an application (alone) can also afford some trademark advice from counsel. And I’d find it hard to believe that a TM attorney wouldn’t point out these types of risks to their would-be applicant clients.

  3. RAYY says:

    Looks like very great prospects for TM lawyers to make big money….

  4. Mike says:

    Great article, thanks for the awesome insight. I wonder how many similar stories like this are laying in the weeds. It’s going to be amazing to see how these play out in court, and what effects the verdicts will have on businesses who unbeknowingly spent hundreds of thousands of dollars on a gTLD app.

  5. Ron says:

    Bring it on, this could tie things up for a year or two, they probably have enough case to force a trial, delaying things…

  6. Tom G says:

    I was wondering when name.space was going to come out. . .

  7. Christopher Ambler says:

    We don’t claim 482 domains, we claim just one: .Web

    You are correct, ICANN has gone to great lengths to not turn down any year-2000 applicant. And the “credit” does, indeed, seem like a settlement, doesn’t it? Giving up contractual rights is rarely something that makes sense.

    ICANN needs to address the issue of applicants still pending from the previous exercise, and in a way that does not allow them to say, “Thanks for playing, thanks for your discounted fee, now we’re clear to close the book on this and award the TLD you’ve been patiently waiting-on for over 15 years to someone else.”

    I can’t speak for name.space or their large claim, but for Image Online Design, we have but the one TLD and we’ve been following the ICANN process and procedure for closer to two decades now. And frankly, the way things are rigged this time through, enforcing our contractual rights seems the only way to prevent ICANN from simply ignoring its responsibilities and commitments.

  8. Gnanes says:

    hahaha this story made my day. Long live the king (.com).

  9. Ron says:

    .WEB is the one everyone wants with obvious mention to .games etc… lawyer up buddy…

  10. John Berryhill says:

    “And I’d find it hard to believe that a TM attorney wouldn’t point out these types of risks to their would-be applicant clients.”

    Anything new carries a risk of frivolous nuisance litigation.

    Name.Space root users use the name.space root. Nobody is going to put a stop to that.

    There is something outstandingly hypocritical about alternative root operators saying, correctly on the one hand, “we can run our root any way we’d like” and then turning around and saying that “IANA cannot run their root the way they’d like.”

    I’m a big fan of alternative roots. But if one is of the mindset that people can use any root they’d like – and people certainly can do that – then for consistency one has to recognize that ICANN sets policy for one among many completely voluntary DNS roots that people may use, or not use.

    • Cintra Sooknanan says:

      Agree with you John.

      I would love to know the number of end users on this alternative DNS system. While the names may predate ICANN, I think the real crux has become relevance of the DNS in use, not length of time.

      Maybe I am misreading, but it’s quite oxymoronic that Name.Space, whilst claiming that it already owns all 482 strings in the ICANN root; would seek to apply for those same strings. Why apply for something you already own?

  11. I have been saying for years that the lingering names from year 2000 are an issue.

    I, for example, am a paid customer of IOD and their .web. I’ve had it active in my DNS for well more than a decade. I would object to any ICANN based allocation to displace my well established use of cavebear.web.

    As regards name.space – all of those names weren’t part of ICANN’s year 2000 process.

    However, ICANN isn’t the god ‘o names and it is perfectly legitimate to go into the domain name business without getting ICANN’s blessing – it is just hard, to the point of practical impossibility to do so.

    Neverthless, it is possible that name.space (and most definitely IOD) have established a legally cognizable position in one or more states of the US or elsewhere that might give them right to pre-empt any similarly named product or business in that state.

    Thus, for example, IOD and its .web may be able to pre-empt any use of an ICANN allocated .web in California.

    Below is the list of names shown on their website:

    .AGENCY
    .ART
    .BAND
    .BAR
    .BLOG
    .BOOK
    .BOOKS
    .BUY
    .CAFE
    .CAM
    .CHANNEL
    .CHAT
    .CHURCH
    .CINEMA
    .CITY
    .CLUB
    .COMICS
    .COOL
    .CULTURE
    .DANCE
    .DESIGN
    .DTV
    .DVD
    .FAMILY
    .FASHION
    .FELLOWSHIP
    .FILM
    .FOOD
    .FREE
    .GALLERY
    .GAMES
    .GAY
    .GRAPHICS
    .GREEN
    .GUIDE
    .HELL
    .HOME
    .HOTEL
    .INC
    .LAW
    .LIVES
    .LLC
    .LLP
    .LOVE
    .MAIL
    .MEDIA
    .MEN
    .MOVIE
    .MOVIES
    .MUSIC
    .NEWS
    .NOW
    .NYC
    .ONLINE
    .PEACE
    .PEOPLE
    .PEOPLE
    .PHOTO
    .PICTURES
    .POLITICS
    .PRESS
    .PROPERTIES
    .RADIO
    .REALTY
    .RECORDS
    .REPORT
    .RESTAURANT
    .REVIEW
    .SERVICE
    .SEX
    .SHOP
    .SHOW
    .SOCIETY
    .SOUND
    .SPACE
    .SPORTS
    .SUCKS
    .TALK
    .TECH
    .THEATER
    .TODAY
    .TOYS
    .TRADE
    .TREND
    .UNION
    .VIDEO
    .VOICE
    .WAR
    .WEATHER
    .WOMEN
    .WORLD
    .ZINE
    .ZONE

  12. Joly MacFie says:

    Video of name.space’s Paul Garrin arguing for his prior claim to .nyc can be seen at http://youtu.be/TA1pLg1eM6A?t=1h11m49s

    • Ray Marshall says:

      Joly,

      Thanks for the video link! What I find very interesting is that Paul Garrin indicated that Esther Dyson actually voted for Name.Space back in 2000 during her role as the Chairperson of ICANN. In other words, Esther Dyson was a supporter of Name.Space, thus, a supporter of the concept of adding a large number of new gTLDs. Isn’t this the same person that is opposing the new gTLD initiative? Here’s the video link to the 2000 ICANN meeting for those that want to validate this claim – http://www.youtube.com/watch?v=O2BvRFvz6Ug

  13. Bret Fausett says:

    I’m interesting in reading more about the crystal ball these guys used to put .BLOG on a names list that “pre-dates ICANN.”

  14. Tom G says:

    Wow, big list.

    We need a photoshop of Paul on the Bow of the Titanic.

    “I’m King of the World !”

  15. Acro says:

    They don’t own Namespace.com :D

  16. Bret Fausett says:

    For those of you playing at home, here is Name Space’s original application in 2000 (http://archive.icann.org/en/tlds/ads1/NameSpace-gtld-appBP.html). The string list is in Section E-2. It’s a different string list than the one to which they now claim rights, so some of their strings that “pre-date ICANN” were on a secret list that they didn’t share with anyone.

    • Observer says:

      As I remember it, Bret, Name Space submitted a portion of the domains they were operating, I don’t think there was ever a hidden list. Their website had well over the 100 domains in that link listed as available for purchase for as long as I can remember. I think they just submitted some of them to ICANN and didn’t submit others.

  17. John Berryhill says:

    Actually, Karl, they can litigate their claims in one of these jurisdictions:

    http://en.m.wikipedia.org/wiki/Micronation

  18. Phineas says:

    I, too, want to sponsor a new tld and hereby affirm my committment to the process…

    YES, I am interested in trying to get an unreasonable number of suckers to sign up for my silly gtld and in annually charging them far more than the price of a .com.

    YES, I am interested in creating a new, longtail tld which will leak traffic like crazy and only help its .COM counterpart.

    YES, I am interested in trying to trick investors into believing that hundreds of thousands of idiots (no, wait…millions!!!) will actually want to set up cyber businesses under our .CRAPOLLA tld when history has clearly shown that there is no interest in alternative extensions.

    YES, I am interested in offsetting promotional and advertising efforts of each of the Fortune 500 — all of which exclusively use .COM. I acknowledge that I will also need to offset over 20 years of .COM brainwashing and am willing to certify that I have the trillions of dollars that will be needed to successfully do this.

    YES, I am interested in obligating myself to an ICANN contract that makes no sense and am willing to blindly support this business which will most likely be hemmoraging money forevermore with no possible exit strategy. I am prepared to go down with the ship and sell blood, sperm and my wife’s jewelry if necessary since bankrupcy can not be an option.

    YES, YES, YES…sign me up! I am very interested!

  19. I wrote about this issue a couple of years ago – http://www.domainerincome.com/news/new-tlds-just-remakes-of-80s-pop-songs/

    Well done Name.Space – its going to be interesting to see how ICANN handles this. :-)

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