Latest news of the domain name industry

Recent Posts

New US trademark rules likely to exclude many dot-brand gTLDs

Kevin Murphy, August 13, 2013, Domain Policy

The US Patent and Trademark Office plans to allow domain name registries to get trademarks on their gTLDs.

Changes proposed this week seem to be limited to dot-brand gTLDs and would not appear to allow registries for generic strings — not even “closed” generics — to obtain trademarks.

But the rules are crafted in such a way that single-registrant dot-brands might be excluded.

Under existing USPTO policy, applications for trademarks that consist solely of a gTLD cannot be approved, because they don’t identify the source of goods and services.

If “.com” were a trademark, one might have to assume that the source of Amazon.com’s services was Verisign, which is plainly not the case.

But the new gTLD program has invited in hundreds of gTLDs that exactly match existing trademarks. The USPTO said:

Some of the new gTLDs under consideration may have significance as source identifiers… Accordingly, the USPTO is amending its gTLD policy to allow, in some circumstances, for the registration of a mark consisting of a gTLD for domain-name registration or registry services

In order to have a gTLD trademark approved, the applicant would have to pass several tests, substantially reducing the number of marks that would get the USPTO’s blessing.

First, only companies that have signed a Registry Agreement with ICANN would be able to get a gTLD trademark. That should continue to prohibit “front-running”, in which a gTLD applicant tries to secure an advantage during the application process by getting a trademark first.

Second, the registry would have to own a prior trademark for the gTLD string in question. It would have to exactly match the gTLD, though the dot would not be considered.

It would have to be a word mark, without attached disclaimers, for the same types of goods and services that web sites within the gTLD are supposed to provide.

What this seems to mean is that registries would not be able to get trademarks on closed generics.

You can’t get a US trademark on the word “cheese” if you sell cheese, for example, but you can if you sell a brand of T-shirts called Cheese.

So you could only get a trademark on “.cheese” as a gTLD if the class was something along the lines of “domain name registration services for web sites devoted to selling T-shirts”.

Third, registries would have to present a bunch of other evidence demonstrating that their brand is already so well-known that consumers will automatically assume they also own the gTLD:

Because consumers are so highly conditioned and may be predisposed to view gTLDs as non-source indicating, the applicant must show that consumers already will be so familiar with the wording as a mark, that they will transfer the source recognition even to the domain name registration or registry services.

Fourth, and here’s the kicker, the registry would have to show it provides a “legitimate service for the benefit of others”. The USPTO explained:

To be considered a service within the parameters of the Trademark Act, an activity must, inter alia, be primarily for the benefit of someone other than the applicant.

While operating a gTLD registry that is only available for the applicant’s employees or for the applicant’s marketing initiatives alone generally would not qualify as a service, registration for use by the applicant’s affiliated distributors typically would.

In other words, a .ford as a single-registrant gTLD would not qualify for a trademark, but a .ford that allowed its dealerships around the world to register domains would.

That appears to exclude many dot-brand applicants. In the current batch, most dot-brands expect to be the sole registrant as well as the registry, at least at first.

Some applications talk in vague terms about also opening up their namespace to affiliates, but in most applications I’ve read that’s a wait-and-see proposition.

The new USPTO rules, which are open for comment to people who have registered with its web site, would appear to apply to a very small number of applicants at this stage.

ICANN freezes “closed generic” gTLD bids

ICANN has temporarily banned “closed generic” gTLDs in response to Governmental Advisory Committee demands.

The ban, which may be lifted, affects at least 73 applications (probably dozens more) for dictionary-word strings that had been put forward with “single registrant” business models.

ICANN’s New gTLD Program Committee on Tuesday voted to prevent any applicant for a closed generic gTLD from signing a registry contract, pending further talks with the GAC.

In order to sign a registry agreement, applicants will have to agree to the following Public Interest Commitments:

1. Registry Operator will operate the TLD in a transparent manner consistent with general principles of openness and non-discrimination by establishing, publishing and adhering to clear registration policies.

2. Registry Operator of a “Generic String” TLD may not impose eligibility criteria for registering names in the TLD that limit registrations exclusively to a single person or entity and/or that person’s or entity’s “Affiliates” (as defined in Section 2.9(c) of the Registry Agreement). “Generic String” means a string consisting of a word or term that denominates or describes a general class of goods, services, groups, organizations or things, as opposed to distinguishing a specific brand of goods, services, groups, organizations or things from those of others.

The effect of this is that applications for closed generics are on hold until ICANN has figured out what exactly the GAC is trying to achieve with its advice, which emerged in its Beijing communique (pdf).

Closed generics have not to date been a specific category of gTLD. They’re basically bids like Symantec’s .antivirus, L’Oreal’s .beauty and Amazon’s .cloud, where the gTLD is not a “dot-brand” but every second-level domain would belong to the registry anyway.

The two main reasons the new gTLD program has allowed them so far are a) ICANN decided that coming up with definitions for categories of gTLD was too hard and prone to abuse, and b) ICANN didn’t want to overly restrict registries’ business models.

Apparently all it needed was a nudge from the GAC and a change of senior management to change its mind.

ICANN now has a definition of “generic”, which I believe is a first. To reiterate, it’s:

a string consisting of a word or term that denominates or describes a general class of goods, services, groups, organizations or things, as opposed to distinguishing a specific brand of goods, services, groups, organizations or things from those of others

If the proposed PIC stands after ICANN’s talks with the GAC, nobody will be able to operate a generic string as a single-registrant gTLD.

But there may be one massive loophole.

Let’s say Volkswagen had applied for .golf (it didn’t) as a single-registrant dot-brand gTLD.

In that context, “golf” is a word used to label one model of car, “distinguishing a specific brand of goods, services, groups, organizations or things from those of others”.

But the word “golf” is also indisputably “a word or term that denominates or describes a general class of goods, services, groups, organizations or things”.

So which use case would trump the other? Would Volkswagen be banned from using .golf as a dot-brand?

It’s not just hypothetical. There are live examples in the current round of single-registrant applications that are both generic terms in one industry and brands in others.

Apple’s application for .apple is the obvious one. While it’s hard to imagine apple farmers wanting a gTLD, we don’t yet know how crazy the gTLD landrush is going to get in future rounds.

What of Bond University’s application for .bond? It’s a brand in terms of further education, but a generic term for debt instruments in finance.

Boots’ application for .boots? A brand in the high street pharmacy game, a generic if you sell shoes. Google’s application for .chrome is a brand in browsers but a generic in metallurgy.

None of the examples given here (and there are many more) are on the GAC’s list of problematic closed generics, but as far as I can see they would all be affected by ICANN’s proposed PIC.

The affected applications are not dead yet, of course. ICANN could change its view and drop the new PIC requirement a few months from now after talking to the GAC.

But the applications do appear to be in limbo for now.

Mystery gTLD applicant to take Google fight to lawmakers

Kevin Murphy, February 13, 2013, Domain Policy

An as-yet unidentified new gTLD applicant plans to lobby Washington DC and Brussels hard to get dozens of Google’s new gTLD bids thrown out of ICANN on competition grounds.

Phil Corwin of the law firm Virtuallaw, who is representing this applicant, told DI yesterday that his client believes Google plans to use new gTLDs to choke off competition in the web search market.

“They’re trying to use the TLD program to enhance their own dominance and exclude potential competitors,” Corwin said. “We think this should be looked at now because once these TLDs are delegated the delegations are basically forever.”

He’s planning to take these concerns to “policy makers and regulators” in the US and Europe, in a concerted campaign likely to kick off towards the end of the month (his client’s identity will be revealed at that time, he assured us).

Corwin’s client — which is in at least one contention set with Google, though in none with Amazon — reckons ICANN’s new gTLD program is ill-suited to pick the best candidate to run a gTLD.

If objections to new gTLD applications fail, the last-resort method for deciding the winner of a contention set is auction. Google obviously has the resources to win any auction it finds itself in.

“On any TLD Google has applied for, nobody can beat them,” said Corwin. “They have $50bn cash, plus the value of their stock. If they want any of the TLDs they’ve applied for, they get them.”

“A string contention process that relies solely on an auction clearly favors the deep-pocketed,” he said.

Google applied for 101 new gTLDs, 98 of which remain in play today. A small handful of the strings are dot-brands (such as .youtube and .google), with the majority comprising dictionary words and abbreviations.

Some of its generic bids propose open business models, while others would have “closed” or single-registrant business models. As we reported on Friday, this has kicked off a firestorm in the ICANN community.

Corwin said that Google appears to be planning to close off not only individual TLDs, but entire categories of TLDs.

For example, Google has applied for .youtube as a brand, but it’s also applied for .film, .movie, .mov, .live, .show and .tube with a variety of proposed business models.

“You can pretty well bet that they’ll exclude those that will pose a competitive threat to YouTube,” Corwin said.

Search will become much more important after the launch of hundreds of new gTLDs, Corwin reckons, as consumers are “not going to know that most of them exist”.

“Generic words are the perfect platform for constructing vertical search engines that can compete against Google’s general search engine,” Corwin said.

“Google is trying to buy up not just one but multiple terms that cover the same goods and services in key areas of internet commerce, and in effect control them so competition cannot arise and challenge Google’s dominance as a search engine,” he said.

Google has not yet revealed in any meaningful way how its search engine will handle new gTLDs.

The US Federal Trade Commission, at the conclusion of an antitrust investigation, recently gave Google a pass for its practice of prominently displaying results from its own services on results pages.

With that in mind, if Google were to win its contention set for .movie, but not for .film, is it possible that .movie would get a competitive advantage from preferential treatment in search?

Corwin reckons that Google anti-competitive intentions are already suggested by its strategy in ICANN’s new gTLD prioritization draw, which took place in December.

Of the roughly 150 applications for which Draw tickets were not purchased, Google is behind 24 of them — including .movie, .music, .tube and .search — 22 of which are in contention sets.

As a result, these contention sets have all been shunted to the back of ICANN’s application processing queue, adding many months to time-to-market and costing rival, less-well-funded applicants a lot of money in ongoing overheads.

“We see Google playing a rather different game here to most other applicants in terms of their motivation, which is not to enter the market but to protect their market dominance,” Corwin said.

Corwin said the game plan is to taken all these concerns to policy makers and regulators in the US and Europe in order to get governments on-side, both inside and outside of the ICANN process.

Corwin is also counsel and front-man for domainer group the Internet Commerce Association, but he said that the new anti-Google drive is unrelated to his work for ICA.

So why is his client only bringing up the issue now? After all, we’ve all known about the contents of every new gTLD application since last June.

My hunch is that Google is playing hard-ball behind the scenes in settlement talks with contention set rivals.

Contention sets can be resolved only when all but one of the applicants drops out, either following an ICANN auction or private buy-outs. Most applicants favor private resolution because it offers them the chance to recoup some, all, or more than the money they splashed out on applying.

That game plan probably does not apply to Google, of course, which is not wanting of funds. The company may even have good reason to prefer ICANN auctions, in order to to discourage those who would apply for new gTLDs in future just in order to put their hands in Google’s pockets.

The topic of closed generics and competition is likely to be a hot-button topic at ICANN’s next public meeting, coming up in Beijing this April.

Members of ICANN’s Governmental Advisory Committee have already expressed some concerns about many “closed gTLD” applications made by Google, Amazon and others.

ICANN’s board of directors is currently mulling over what to do about the issue, and has thrown it open to public comment for your feedback.