A federal California court this week ruled trademark and service mark protections did not apply to generic domain extensions.
The decision clarifies the issues raised last October when domain name
registrar Image Online Design Inc.
filed suit claiming that it possessed service mark rights for domain name
“.web,” and that the CORE Association (Internet Council of Registrars) and
its chairman, Ken Stubbs, infringed on its service mark because CORE’s
domain registrar members allegedly took preregistrations of domain names
using .web.
The court ruled that .web is not protectable as a trademark and dismissed
all claims, saying that “.web” is a “generic top-level domain” (gTLDs) and
not protectable.
Pleased by the ruling, Stubbs said the court’s decision reinforces CORE’s
position that a top-level domain is a public trust as opposed to a private
property interest. CORE is a non-profit membership association of Internet
domain name registrars based in Geneva, Switzerland.
“I’m sad that it had to come to this,” Stubbs told InternetNews.com.
“By that I mean I’m sad
we had to go through expense litigation over a period of almost one year to
arrive at something that in my opinion is quite clear. This is not a
trademark case as much as it is the idea that some organization can’t just
appropriate a TLD and claim that they own it. No gTLD is property.”
CORE’s lawyer also applauded the decision.
“The court’s decision clarifies that the Internet community can consider the
adoption of new top-level domain names without concern that names under
consideration will be pirated and held hostage by one or more enterprising
entities somewhere in the world,” said Don Daucher of Paul, Hastings,
Janofsky & Walker LLP.
David J. Loundy, a trademark and domain law expert at D’Ancona &
Pflaum, LLC in Chicago, discussed the decision.
“If they’re saying that because of the use of a top level domain it is by definition not protectacble than Network Solutions has probably got its lawyers drafting the amicus briefs and ready to fund the appeal,” Loundy said.
“And for a judge to say ‘you have no possible property right in a top-level domain’ is going to spoil the dot-com branding that NSI has been trying in order to show that they are the preferred provider of dot-com domain names rather than going to their existing competitors.”
Continually plagued by such issues, the Internet Corp. of Assigned Names and
Numbers (ICANN) has a meeting scheduled for July 16 in Japan to discuss
the additions of new gTLDs.
Accredited by ICANN, CORE provides a directory of member entities that a
prospective registrant may use to register its domain name and has more than
85 registrar members worldwide.
