ICA Member’s Dispute With mTLD

Philip CorwinBlog

At our Annual meeting in Brooklyn, Lori Anne Wardi, CEO of Dream Big Media requested ICA assistance in regard to an ongoing trademark dispute she has with mTLD, operator of the .mobi registry. In mTLD’s various responses to US Trademark Office, it takes the position that the public can use the term “.Mobi” as a domain extension; but should not be able to use the broad term “Mobi” to the left of the dot.

ICANN recently approved a proposal to create an unlimited number of top-level domains. Under the plan, ICANN will allow organizations to apply for any top-level domain it chooses. It will be possible for organizations to apply to use generic terms, such as ".news" or ".sports," similar to the way “.mobi” is used to refer to “mobile.” It would turn trademark law on its head if an award of a TLD registry contract could somehow “create” intellectual property rights in a generic word where such rights did not preexist the award of the contract – which is exactly what mTLD is attempting to claim.

ICA Members and the Board agreed with Ms. Wardi that this situation has import as a potentially adverse precedent for domain investors far beyond the domain in question. Permitting mTLD to claim trademark rights by mere virtue of being awarded a registry contract from ICANN is an unprecedented act that would set an extraordinarily dangerous precedent. ICA will send a letter of complaint to ICANN and a formal Letter of Protest to the United States Patent and Trademark Commissioner supporting Dream Big Media in this precedent setting dispute. Members and other domainers may want to share their concern about this overreaching trademark action by mTLD with its company managers and with ICANN staff and Board.