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First string confusion decisions handed down, Verisign loses against .tvs

Kevin Murphy, August 13, 2013, Domain Policy

The International Centre for Dispute Resolution has started delivering its decisions in new gTLD String Confusion Objections, and we can report that Verisign has lost at least one case.

ICDR expert Stephen Strick delivered a brief, five-page ruling in the case of Verisign vs. T V Sundram Iyengar & Sons yesterday, ruling that .tvs is not confusingly similar to .tv.

TVS is a $6-billion-a-year, 100-year-old Indian conglomerate, while .tv is the ccTLD for Tuvalu, which Verisign manages because of its similarity of meaning to “television”.

It’s impossible to glean from the decision (pdf) what Verisign’s argument comprised. The summary is just two sentences long.

But TVS, in response, appears to have relied to an extent on the “DuPont factors” a 13-point test for trademark confusion that came out of a 1973 case in the US.

That’s the same precedent that has been found relevant in many Legal Rights Objections in cases handled by WIPO.

The “discussion and reasons for determination” section of the .tvs decision, in which Strick found that confusion was possible but not “probable”, amounts to just four sentences.

Here’s almost all of it. Emphasis in original:

in order for the Objector to prevail, Objector must prove that the co-existence of the two TLDs in question would probably result in user confusion. Given the analysis of the thirteen factors cited by Applicant derived from the DuPont case cited above, I find that Objector has failed to meet its burden of proof regarding the probability of such confusion. I note that while the co-existence of the two TLDs that are the subject of this proceeding may result in confusion by users, Objector has failed to meet its burden of proof to establish the likelihood or probability that users will be confused.

In considering parties’ arguments, I was persuaded, in part, by Applicant’s arguments relating to the commercial impression of the TVS TLD, including the proof offered by Applicant as to the longevity of the TVS brand, the limited nature of the gTLD’s intended use, the dissimilarity of the goods or services associated respectively with the two strings, ie TVS’s association with automobile products, the fact that TVS’s brand is associated with capital letters (whereas Objector’s .tv is in lower case), the fact that TVS is well known and associated with its companys’ [sic] brands, the lengthy market interface and the long historical co-existence of TVs and tv without evidence of confusion in the marketplace.

The geeks among you will no doubt be screaming at your screen right now: “WTF? He thought CASE was relevant?”

Yes, apparently the fact that the TVS trademark is in upper case makes a difference, despite the fact that the DNS is completely case-insensitive. Bit of a head-scratcher.

I understand several more decisions have also been sent to applicants and objectors, but they’re not yet pubicly available.

The ICDR’s web site for new gTLD decisions has been down for several days, returning 404 errors.

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.

TLDH commits to four private gTLD auctions

Kevin Murphy, August 12, 2013, Domain Registries

Top Level Domain Holdings has committed four of its applied-for gTLDs to private auctions due to kick off tomorrow.

The four strings are .guide, .casa, .网址 (“web address” in Chinese) and .fishing, each of which has only one competing applicant.

The company will bid against Donuts on .casa and .guide, Demand Media on .fishing and Hu Yi Global Information Resources on .网址.

Results of the auctions, managed by Innovative Auctions, are expected to be announced next week.

TLDH was initially cautious about the idea of private auctions, but later decided to participate, for reasons CEO Antony Van Couvering explained in this June article.

Over 100 strings, including 68 from Donuts, are expected to be hitting the block with Innovative this week. The first six strings to be auctioned this way raised an average of $1.5 million per string.

TLDH has 49 strings in active contention.

dotShabaka Diary — Day 2

Kevin Murphy, August 11, 2013, Domain Registries

This is the second in DI’s series following the progress of شبكة. applicant dotShabaka Registry as it prepares to be one of the first new gTLD registries to launch.

The following journal entry was written by dotShabaka general manager Yasmin Omer:

Date: Saturday 10 August 2013

It has been nearly a month since we signed our Registry Agreement with ICANN and we are still confused about TMCH Integration Testing, which is a concern given it’s now seven weeks out from ICANN’s first delegation date.

Whilst we have access to the Sandbox LORDN file test environment, ICANN happened to mention that the ‘OT&E environment’ is available in this week’s webinar. That’s new information.

We still have no idea what the process is for TMCH integration testing or how we access the environment. Are there test cases? What’s the schedule?

The lack of information is a concern as we need to pass TMCH Integration to provide Sunrise notice. Let’s hope it’s not as complicated as PDT.

In other news, we received an email from Wendy Profit (Registry Product Manager) yesterday. It’s the first formal email we have received since signing our contract nearly a month ago.

The email contained a copy of the contract and a spreadsheet for contact details. Not sure if Wendy is indeed our account manager or if we even have one. We have sent an email asking her the same. Clearly we have a few questions for an Account Manager once we get one.

You can read past and future entries in this series here.