A California lawsuit that threatened to scupper all seven applications for the .web new gTLD has been thrown out.
The judge in Image Online Design v ICANN yesterday granted ICANN’s motion to dismiss the case, saying that IOD had no claim for breach of contract and, significantly, that “.web” is too generic to be a trademark.
Here’s the money quote:
This court agrees with ICANN that the mark .WEB used in relation to Internet registry services is generic and cannot enjoy trademark protection.
IOD applied for .web during ICANN’s proof-of-concept new gTLD round in 2000, but was not approved.
It sued ICANN last October, claiming breach of contract and trademark infringement and interference with its business.
The company has been running .web in an alternate DNS root, where hardly anyone uses it, since the 1990s.
Unfortunately for IOD, when it applied in 2000 it signed a document releasing ICANN from all legal liability in relation to the application, so the judge yesterday ruled that it could not sue for breach of contract.
The court also upheld the longstanding position of the US courts that top-level domains cannot be trademarks.
The US Patent & Trademark Office is of the view that TLDs do not indicate the source of goods or services; only the second-level domain does.
IOD had argued in court that, with the imminent introduction of dot-brands, the USPTO expects to modify its position. The judge in this case, Dean Pregerson, agreed in part, stating:
For instance, if ICANN were to introduce the TLD .APPLE, the user would arguably expect that that TLD is administered by Apple Inc. In such a case, the TLD might be considered a source indicator. If Sony tried to administer the TLD .APPLE, Apple Inc. would likely argue and possibly prevail on a trademark infringement claim.
This said, it appears to the court that today only the most famous of marks could have a source indicating function as a TLD. Some marks, such as .WEB, might remain generic even if they were famous, since .WEB in connection with registry services for the World Wide Web appears to refer to the service offered, rather than to only a particular producer’s registry service.
the mark .WEB is not protectable under traditional trademark analysis because it “seems to represent a genus of a type of website” and thus answers the question “What are you?” rather than “Who vouches for you?”
IOD’s other claims were also thrown out. Read the court’s order here.
The ruling means that a similar lawsuit filed by fellow 2000-round new gTLD applicant Name.Space, which is looking for an injunction against 189 gTLD applications, may be on shaky ground too.
Long-time Demand Media software architect Chris Ambler claims he was fired when his own company, Image Online Design, sued ICANN over the .web gTLD.
Ambler says he was canned by Demand October 26, eight days after IOD sued ICANN over its unsuccessful 2000-round application for .web.
He told DI on Friday that he believes he was fired unfairly and illegally and, after negotiations with Demand Media broke down last week, has retained a lawyer to explore his options for redress.
“You can’t say you’re firing somebody because they’re suing somebody,” he said. “There are legal options open to me and I am pursuing them.”
Ambler says he was hired by eNom’s then-CEO Paul Stahura in 2003 as its chief software strategist, a role in which he took a lead role in creating NameJet’s proprietary domain name drop-catching software.
When the company was acquired by Demand Media, he took the role of senior software architect.
But in the 1990s, as founder of IOD, he ran .web in an alternative DNS root system. His application to move the gTLD into the official ICANN root in 2000 was not approved.
In October he sued ICANN claiming it was “improper, unlawful and inequitable” for ICANN to solicit more applications for .web while IOD’s bid was still “pending” and unrejected.
While Demand Media is not directly applying for .web, it has an extremely tight relationship with Donuts — the portfolio gTLD applicant founded by Stahura and other former Demand executives — which is.
Demand is Donuts’ back-end registry provider and is believed to have an interest in Covered TLD LLC, the parent company of about 100 of Donuts’ new gTLD applicants, including .web.
Ambler’s contract with Demand Media acknowledged his IOD work and allowed him to pursue it, he claims.
“They’ve known for the past ten years that I was working on this,” he said.
A Demand Media spokesperson said the company does not comment on legal matters.
Image Online Design, which unsuccessfully applied for the .web gTLD all the way back in 2000, has sued ICANN, alleging trademark infringement and breach of contract.
IOD, which says it has over 20,000 .web domains under management in an alternate root, says ICANN never officially rejected its .web bid, and that it should not have allowed other companies to apply for it.
It’s looking for an injunction preventing ICANN awarding .web to any other company, as well as seeking ICANN’s “profits” resulting from the alleged infringement of its mark.
There are seven .web applicants in the current round, but IOD is not among them.
The company paid $50,000 for its application in 2000, but it’s not happy with the $86,000 discount ICANN offered 2000-round applicants on their $185,000 fees if they wanted to resubmit their applications.
The IOD complaint claims:
Allowing other entities to file applications for a .web TLD while IOD’s .WEB TLD application was still pending is improper, unlawful and inequitable.
The complaint cites the November 2000 ICANN meeting in Marina Del Rey, during which the first proof-of-concept gTLDs were approved by ICANN’s board of directors.
It notes that then-chair Vint Cerf steered the board away from approving .web applications filed by Afilias and others because IOD was already operating .web in an alternate root at the time.
You can watch a video of that meeting here.
The complaint also alleges tenuous conflicts of interest between two .web applicants (Afilias and Google) and members of ICANN’s board of directors (current chair and vice-chair Steve Crocker and Bruce Tonkin in the case of Afilias, and long-gone chair Vint Cerf in the case of Google).
The suit comes just a few days after IOD’s fellow 2000 applicant and alternate root player, Name.Space, sued ICANN on similar grounds, trying to prevent 189 gTLDs being approved.
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.
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.”
With all the excitement about ICANN’s weekend publication of the new top-level domain Applicant Guidebook, it’s easy to forget that “new” TLDs have been around for a decade.
Tomorrow, November 16, is the 10th anniversary of the ICANN meeting at which the first wave of new gTLDs, seven in total, were approved.
The recording of the 2000 Marina Del Rey meeting may look a little odd to any relative newcomers to ICANN.
The open board meeting at which the successful new registries were selected took well over six hours, with the directors essentially making up their selection policies on the spot, in the spotlight.
It was a far cry from the public rubber-stamping exercises you’re more likely to witness nowadays.
Take this exchange from the November 2000 meeting, which seems particularly relevant in light of last week’s news about registry/registrar vertical integration.
About an hour into the meeting, chairman Esther Dyson tackled the VI idea head on, embracing it:
the notion of a registry with a single registrar might be offensive on its own, but in a competitive world I don’t see any problem with it and I certainly wouldn’t dismiss it out of hand
To which director Vint Cerf, Dyson’s eventual successor, responded, “not wishing to be combative”:
The choices that we make do set some precedents. One of the things I’m concerned about is the protection of users who register in these various top-level domains… If you have exactly one registrar per registry, the failure of either the registrar or the registry is a serious matter those who people who registered there. Having the ability to support multiple registrars, the demonstrated ability to support multiple registrars, gives some protection for those who are registering in that domain.
Odd to think that this ad-hoc decision took ten years to reverse.
It was a rather tense event.
The audience, packed with TLD applicants, had already pitched their bids earlier in the week, but during the board meeting itself they were obliged to remain silent, unable to even correct or clarify the misapprehensions of the directors and staff.
As a rookie reporter in the audience, the big news for me that day was the competition between the three registries that had applied to run “.web” as a generic TLD.
Afilias and NeuStar both had bids in, but they were competing with Image Online Design, a company that had been running .web in an alternate root for a number of years.
Cerf looked like he was going to back the IOD bid for a while, due to his “sympathy for pioneers”, but other board members were not as enthusiastic.
I was sitting immediately behind company CEO Christopher Ambler at the time, and the tension was palpable. It got more tense when the discussion turned to whether to grant .web to Afilias instead.
Afilias was ultimately granted .info, largely due to IOD’s existing claim on .web. NeuStar’s application was not approved, but its joint-venture bid for .biz was of course successful.
This was the meat of the resolution:
RESOLVED [00.89], the Board selects the following proposals for negotiations toward appropriate agreements between ICANN and the registry operator or sponsoring organization, or both: JVTeam (.biz), Afilias (.info), Global Name Registry (.name), RegistryPro (.pro), Museum Domain Management Association (.museum), Société Internationale de Télécommunications Aéronautiques (.aero), Cooperative League of the USA dba National Cooperative Business Association (.coop);
If any of this nostalgia sounds interesting, and you want to watch seven hours of heavily pixelated wonks talking about “putting TLDs into nested baskets”, you can find the video (.rm format, that’s how old it is) of the MDR board meeting buried in an open directory here.