Should generic .com domain names never be entitled to trademark protection? When a domain name like booking.com is identified as a brand by the public, should it still be denied trademark protection as a matter of law? The ICA takes a position on this difficult question in an amicus brief submitted to the U.S. Supreme Court of the United States through its counsel, Wiley Rein LLP.
The brief asks the Supreme Court to affirm the current legal status quo as per the decision of the U.S. Court of Appeals for the Fourth Circuit holding that the addition of a top-level domain such as “.com” to an otherwise generic term may result in a protectible trademark where evidence demonstrates that the trademark’s primary significance to the public as a whole is the source of a product or service and not the product or service itself.
Many domain name owners have heavily invested in generic domain names which through extensive use and promotion, whether by domain name investors or a subsequent purchaser, are sometimes capable of acquiring distinctiveness and thereby affording trademark protection. Denying generic domain names the opportunity to ever be registered as a trademark would devalue otherwise valuable intellectually property assets by making them unappealing to companies seeking to develop brands that could be registered as trademarks. Denying the possibility of trademark protection to generic domain names would not benefit domain name investors, but would rather harm them, by severely limiting the commercial potential of such generic domain names.
Additionally, new top-level domains – like “.homes,” “.inc,” “.doctor,” “.law,” “.bank,” “.cars,” “.news,” “.cpa,” “.ngo,” and “.organic” – hold great promise for improved e-commerce and online security, but their adoption will be stunted if the Government succeeds in foreclosing trademark protection for domain names in all cases, regardless of the degree of use and promotion.
The ICA’s Code of Conduct enshrines protection for intellectual property rights. The ICA’s brief explains how enabling trademark protection where warranted can help prevent two of the most common malicious activities involving the domain names, namely typosquatting and domain name theft. The ICA’s amicus filing supports intellectual property rights where warranted and stands against cybersquatting and malicious domain name theft.
To read the ICA’s amicus brief, please click here: Booking.com Amicus Brief
The ICA wishes to express its great appreciation to Wiley Rein LLP and attorney David Weslow (the winner of the inaugural ICA Lonnie Borck Memorial Award) for submitting such a well-argued brief on issues of importance to the domain name investment community.
The ICA participated in responding to the United Nations, who had written a letter to the ICANN Board complaining about the IGO Working Group Final Report. The ICA was extensively involved in this Working Group and took issue with the UN’s complaints about the outcome. This Working Group spent four years examining the UDRP and how IGO’s and INGO’s could fairly access it. The response to the UN letter, submitted on August 16th, illustrates that the Final Report received support from a variety of stakeholders and that no new special dispute resolution system was required for IGOs and INGOs. For more information and to read full versions of the documents mentioned here, use the following links: Final Report, UN Letter and the Response: Group Letter to ICANN August 16 2018
Two recent ICANN announcements caught our eye because of their relevance to domain investors.
The first was ICANN’s placement of a notice that it was seeking to hire its first ever Registrant Services Director-Consumer Advocate. The Job Description states that the position “involves participation in a number of cross-organizational projects in areas such as registrant rights, contract interpretations and compliance, operations, legal policy definitions and implementation with a strong focus on multi-stakeholder collaboration” and that, among other tasks, the selected individual will “become the Registrant Community advocate within ICANN and represent their needs to other teams across the organization.” The Director will report to the President of the Global Domains Division, the separate business unit established within ICANN last year. Consistent with CEO Fadi Chehade’s statement during the London meeting that future staff growth would occur in locations outside ICANN’s Los Angeles headquarters, this position is to be based in Istanbul, Turkey – although applicants must be willing to travel 40% of the time. Curiously, despite the job’s focus on registrant rights, contractual interpretations, and legal policy, the educational experience sought is “BA or BS degree, MS or MBA preferred. Advanced degree in engineering or systems is highly desirable” – and not a law degree.
The creation of this position finally puts some meat on the bones of CEO Chehade’s June 2013 declaration that domain registrants are ICANN’s primary customer. As a trade organization representing the interests of registrants who are professional domain investors and developers we have been critical of ICANN’s failure to “walk the walk” on that verbal commitment in the past. ICA now looks forward to working with this new ICANN staffer on issues of importance to registrants, while recognizing that in certain situations involving registrant grievances against ICANN there will be constraints against biting the hand that pays him, or her.
Separately, ICANN’s GNSO is soliciting volunteers for the just-launched GNSO New gTLDs Subsequent Rounds Discussion Group. This Group will review the first round of new gTLDs and report findings to the GNSO Council “that may lead to changes or adjustments for subsequent new gTLD application procedures”. With Initial Evaluation just having been completed on all applications submitted in the first round of the new gTLD program, ICANN is putting in place the first step in meeting its commitment to review it thoroughly before a second round commences.
From what we have heard, when it does launch down the road the second “round” may not be a round at all, in terms of having a set time window in which applications must be submitted. Rather, once any adjustments in the program are made based upon first round experiences the application window may simply stay open indefinitely, with applicants free to submit a bid for any string at any time.
The new gTLD program of course included the new rights protection mechanisms (RPMs) of Uniform Rapid Suspension (URS) and the Trademark Clearinghouse (TMCH), and we expect both to be the subject of discussion and possible suggestions for modification within the new Discussion Group. That’s one major reason why ICA shall be participating. Perhaps once the Registrant Services Director is hired he or she will participate as well — to help assure that registrant rights receive adequate due process as the new gTLD program evolves.
For the third time in six months, ICA has told ICANN that the legally questionable and largely unnecessary attempts of International Governmental Agencies (IGOs) and International Nongovernmental Agencies (INGOs) to secure extraordinary protections for their organizational acronyms at second level domains should be met with a firm and resounding “no”. (Letter available below and at http://forum.icann.org/lists/comments-igo-ingo-crp-prelim-10mar14/msg00006.html )
Early on it looked like concern over the Obama Administration’s proposal to terminate the U.S. counterparty role on the IANA functions contract might be a one-sided partisan affair. That would be very unfortunate, as Internet freedom as well as its security and stability should raise bipartisan questions.
But that is changing. Senator Mark Warner, Democrat of Virginia, last week noted his “serious concerns” and sent a series of pointed questions regarding the NTIA’s announcement to Secretary of Commerce Penny Pritzker. The Dulles airport corridor of Northern Virginia has one of the highest concentrations of technology firms east of Silicon Valley, and the Warner letter may well reflect feedback that his office is receiving from them.
We note in particular that his letter implies that termination of the U.S. role must be accompanied by substantial reforms in ICANN’s fee-based funding as well as greater transparency in ICANN leadership selection, conflicts of interest rules, and policy-making process. All this serves as evidence that any acceptable transition plan will be very complex and that the process might well extend beyond the September 2015 expiration date of the current IANA contract (but, as NTIA and ICANN have both noted, that date is a goal and not a deadline and the contract provides for two two-year extensions at NTIA’s discretion).
Meantime, the House Energy and Commerce Committee has started to post witness testimony for its hearing tomorrow, while the House Judiciary Committee has postponed its hearing from April 3rd to the 10th.
Here’s Senator Warner’s letter —
The calm is over, and the storm may be about to begin. Congress is back from recess and not one but two Congressional Committees are about to hone in on the implications of the NTIA’s March 14th announcement of its intention to surrender its IANA functions contract counterparty status with ICANN by September 2015.
Meantime, an exhausting ICANN meeting has just concluded in Singapore, at which much more was learned about the import of that decision and the complexities of implementing it (more on that in a separate post-jetlag post). Everything ICANN-related, including the Internet governance status of business in general and domainers in particular, is up for grabs and at risk for at least the next eighteen months.
This is ICANN week in Washington. Besides those two Hill hearings, two major think tanks are also holding ICANN-related programs.
Here’s the lineup:
First, on Wednesday, April 2, at 10:30 am ET the Communications and Telecommunications Subcommittee of the House Energy and Commerce Committee will consider “Ensuring the Security, Stability, Resilience, and Freedom of the Global Internet” . This is the Subcommittee with direct NTIA oversight, and the hearing may be contentious. The star-studded witness list consists of:
The Honorable Larry Strickling
Assistant Secretary for Communications and Information Administration
National Telecommunications and Information Administration
U.S. Department of Commerce
The Honorable David A. Gross
Wiley Rein, LLP
Mr. Fadi Chehadé
President and CEO
Internet Corporation for Assigned Names and Numbers
Mr. Steve DelBianco
Ms. Carolina Rossini
Project Director, Latin American Resource Center
Internet Governance and Human Rights Program
New American Foundation
The following day, the Subcommittee on Courts, Intellectual Property and the Internet of the House Judiciary Committee will explore the question of “Should the Department of Commerce Relinquish Direct Oversight Over ICANN?” at 10 am Eastern Time. While the witness list is not yet available, the Subcommittee is likely to focus on whether NTIA has the legal power to make this decision absent Congressional authorization — and the potential fallout for Internet free speech and trademark and copyright protection.
Also on Thursday, at 12 noon the influential Information Technology and Innovation Foundation will hold a program on “Bully or Bodyguard? Assessing the Proper Role of the United States in Internet Governance”. ICA’s Counsel will be one of the presenters. The complete speakers list is:
Robert D. Atkinson
President, Information Technology and Innovation Foundation
Founding Principal, Virtualaw LLC (and ICA Counsel)
Executive Director, NetChoice
Research Fellow, Mercatus Center
Finally, at 11 am on Friday, the respected Hudson Institute will host “A Discussion with the Hon. Lawrence Strickling about the future of ICANN”. Coming just after his Hill appearance, this should be a most interesting session.
Thanks to the wonders of the Internet, all these events will be webcast live so that you can be an eyewitness to history.
ICA Counsel Philip Corwin has been asked to speak at “ICANN and Global Internet Governance: The Road to São Paulo, and Beyond”, a program being held on Friday, March 21st in Singapore just before the start of the first ICANN meeting of the year. The full day program is being sponsored by ICANN’s Non-Commercial Users Constituency (NCUC). Corwin will be a member of the day’s first panel discussion, focused on “Setting the Scene: Overview of Recent Agenda-Setting Initiatives”. Other panelists include ICANN Board member George Sadowsky.
Number one domain name registrar GoDaddy has been hit by another trademark infringement lawsuit.
Earlier this month GoDaddy failed in its efforts to recuse U.S. District Court Judge Audrey Collins from presiding over a case brought against it by the Academy of Motion Picture Arts and Sciences.[i] The litigation alleges that GoDaddy committed cybersquatting trademark infringement when it “parked” more than 100 AMPAS-related domains, including oscarlist.com, academyawardz.com and academyawardsinc.com.
Controversy continues to build in Washington, DC regarding an online campaign against Democratic candidates for the House being conducted by the National Republican Campaign Committee. As just reported by National Journal, the NRCC recently adjusted the arguably misleading series of websites and “changed the donation page to make clearer to potential contributors that their money wasn’t going to the smiling Democrats pictured but instead to the Republicans”. Read more