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The Death of TLD Front Running

In an article published over two years ago, I cited a disturbing trend of third parties seeking to obtain national trademark registrations in an apparent attempt to game ICANN's new gTLD process. While many of these applications have withered and died on the vine some have sneaked through. However, it appears that the United States Trademark Trial and Appeal Board (TTAB) has issued a very well-reasoned and articulate opinion rejecting the attempt by theDot Communications Network LLC to register the mark .MUSIC in several classes of goods and services.

While it is worth the time to read the entire 22 page decision, the following excerpts are particularly insightful:

Finally, the question of whether a mark is merely descriptive must be determined based on the evidence of record at the time registration is sought. In re Sun Microsystems Inc., 59 USPQ2d 1084, 1088 (TTAB 2001). See also In re Thomas Nelson Inc., 97 USPQ2d 1712, 1717 (TTAB 2011). In the applications at issue, this last principle is particularly important, as the evidence and arguments involve consideration of the question of consumer perception of domain names and internet addresses, a field which the record shows to be changing.

* * *

In view of the foregoing, we find that applicant's proposed mark .music conveys the commercial impression of a top-level domain name similar to .com, .net, etc., and not merely the word "Music" featuring nondistinctive punctuation. Moreover, consumers would understand it to be a top-level domain in the field of music. This finding is based on the current marketing environment which is different than the marketing environment when many of the third-party registrations relied upon by applicant were issued. When many of the third-party registrations were issued, ICANN was not considering expansion of the roster of domain name extensions. FN21 Nor does the record reveal active campaigns to obtain TLD status for the marks in those registrations as there is for the .music top-level domain. Therefore, the third-party registrations submitted by applicant for marks consisting of "dot ____________" or ".__________" have very limited probative value, especially if those registrations were not supported by evidence of actual use in this record. FN 22

Footnote 22: Our finding that .music engenders the commercial impression of a top-level domain name is limited to the facts in this case. For example, as indicated above, Canon, Inc. has announced that it is seeking a top-level domain for .canon which, depending on the record developed in a trademark application, may or may not engender the commercial impression of a top-level domain name.

* * *

Having determined that .music engenders the commercial impression of a top-level domain in the field of music, we now analyze whether someone who knows the goods or services listed in the applications will understand the mark to directly convey information about them.

By Michael D. Palage, Intellectual Property Attorney and IT Consultant

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Comments

Not quite, Mike By George Kirikos  –  Dec 01, 2011 10:47 am PDT

It's not quite true, Mike, that these front-running games are over, since there are many banana republics out there that can be used.

It's amusing to see that theDot Communications is represented by active ICANN participant Mike Rodenbaugh, who is also listed as being a Managing Member of that LLC. Folks within the ICANN community have had to suffer his weak arguments in working groups, with ill-conceived ideas relating to the UDRP (see also here), for example.

Unfortunately the ICANN community doesn't have unbiased and thoughtful boards like the TTAB that can reject these weak, unsound and self-serving arguments.

All I can say is this is By Constantine Roussos  –  Dec 01, 2011 12:30 pm PDT

All I can say is this is fantastic news. Mike Rodenbaugh should have known better especially since my Initiative has been the only one using ".music" in commerce and building a brand out of it in the music community for years. What was the thinking of theDOT anyways? Was the goal to threaten us with a fake trademark that was never used in commerce? We are prepared for all that and assure you the gamers will not win. I will see great pleasure to see them lose money wasted in application fees because they will see none from me. I would rather give the money to ICANN if this ever ends up in an auction scenario. Short term losses, long term gains and satisfaction of not being a victim of this type of behavior.

Not sure if this is the end of TLD gaming though. I expect gaming for TLDs to run wild and expecting many bad actors to pursue this ill-advised opportunity. Personally, I will not stand for this type of "extortion" behavior and will do my best to fight this kind of activity. "Fake" applicants who will be applying merely for the hope of being payed off will get what is coming to them: lose their money and tarnish their reputation for trying to game the system to make a quick buck.

I think we all have heard the quote: "We will not negotiate with terrorists." The quote for the war against TLD extortionists should be no other than "We will not negotiate with extortionists." That is fair warning for those contemplating entering the new TLD program merely to game the system and extort money from applicants. Like I said earlier, I would rather give money to ICANN in auctions. Whatever it takes to win and expose the bad actors. I would rather lose money in the short term than have a few bad actors congratulate themselves for "playing the game" and exploiting the ICANN applicant guidebook. I can not possibly live with the knowledge that I was exploited.

Michael there is a huge difference between frontrunning and gaming/extorting. Legitimate frontrunning in my opinion is real outreach to your respective community, building the TLD brand, creating partnerships, developing innovative technology and lastly building a brand with not only members of your community but also the media that associates you with that name. I am assuming your word for building a TLD brand is frontrunning? It is merely doing business the right way and putting in the work. Using unethical means to gain an unfair advantage is unacceptable.

If you think that there will be no gaming during the process and it is the death of it all you should know better. I hope you are right though. I will be fighting it until the end that should be expected. Many others will not tolerate it either.

I have to admit though, I am pleased with the theDot findings result and your post. Thanks for posting this.

Constantine Roussos
.MUSIC / MyTLD

Top Level Domains are Not Brands By Thomas A Gilles  –  Dec 01, 2011 7:12 pm PDT

It may be important to recognize the implications of this decision beyond the application phase.

To this point, the discussion of trademarking in context of New gTLDs has been confined to gaming the application process.

But this precedent will have impacts on the future branding and marketing of TLDs as well.

In your post Constantine, you used the phrase 'Building a Brand' for .MUSIC several times. But this Appeals Board decision has made it clear - .MUSIC is not a brand, is not trademarkeable. Not now, and not after the .music TLD is awarded and delegated.

It is almost certain then that 'DotMusic' will be deemed virtually identical and also not trademarkeable.

All potential new gTLD applicants should now be aware that their product is not a brand, is not intellectual property.

.MUSIC, DotMusic, .WEB, DotWeb,.GAME, DotGame, .POKER, DotPoker, .NYC, DotNYC - None can be trademarked for use in a classification related to domain names.

Potential New gTLD applicants should be thoughtful of this when designing their marketing plans.

Thomas,You claim that ".MUSIC is not a By Constantine Roussos  –  Dec 01, 2011 8:07 pm PDT

Thomas,

You claim that ".MUSIC is not a brand and is not trademarkeable"

I would like to ask you some questions. Our dotMusic (.MUSIC) Initiative has branded itself as ".MUSIC" to the music community for years now. We can start talking numbers alone. In a recent Adage article, it was noted that the worth of a Facebook fan/like was accounted at nearly $10 (study by SocialCode). Some others have put the number at just below $4 (Vitrue study). Another company called Syncapse assessed the lifetime value to be around $140. The same applies to Twitter as well. The cost of acquiring a follower. Other similar social networks are worth less or more depending on their audience. For us, the biggest network is Myspace. It is mostly composed of artists and nearly all our followers are artists. I will go one step further. What is an opt-in email worth?

That said, let me give you some numbers: Facebook (100,000), Twitter (500,000+), Myspace (4,300,000) and our .MUSIC email list from our .MUSIC Initiative campaign: over 1,500,000. These are highly targeted campaigns by the way. Furthmore, our marketing branding efforts over the last half a decade have included outreach, partnerships and support from constituents from the music community. How much money is this all worth. I can tell you one thing, I have spent a significant amount of money to build this brand equity. So what is the definition of branding? It is the process involved in creating a unique name and image for a product in the consumers' mind, mainly through marketing and word of mouth campaigns with a consistent theme.

Your hypothesis is entirely untrue to claim that the .MUSIC Initiative has no intellectual property, goodwill or a brand. How much do you think all our work is worth? If you think it is worth zero, then we have no brand. Our work has been branded using ".MUSIC." The problem with your post and comments is that it is consistent with why most new generic TLDs have failed. They have built no brand, no loyalty, and no differentiation. I agree, an application for a .ANYTHING alone is not a brand. Brands are built and not born.

Let us pretend my company name was called "XYZ" not .MUSIC, with the exact same marketing efforts, emails, goodwill and verifiable social media numbers (without including partnerships and other support/technology). Would the company "XYZ" be worth something in the marketplace? I think the answer is pretty obvious.

Furthermore, a decision from the U.S-based USPTO covers the U.S.A. Are you claiming U.S trademark law is the king of all global territories? It is not. The world is not just the U.S.A and this U.S decision will have zero impact on the future branding of TLDs. Brands are built, not born.

It is quite amusing to hear someone say that a TLD can not be a brand. If a TLD is not a brand why is it that .COM domains are worth more money than .NET? The answer: It is a stronger brand. Couldn't .MUSIC be a stronger brand for the music community than .COM? It depends if you built the brand. For example, the .EDU extension is a stronger brand for U.S-based accredited educational institutions than .COM. But overall doesn't .COM have a stronger brand? Yes, but it depends on the application and if another TLD has created differentiation in a niche category where the brand category TLD is stronger under that specific industry sector. Easier said than done though.

Sorry Thomas but your points on branding are obviously wrong unless you can prove to me that a .COM domain name is worth less than a .NET domain name in the current marketplace. Branding is about awareness. Branding is how others perceive your product and you can certainly attach a financial number to its value.

Constantine Roussos
.MUSIC / MyTLD

brand vs. trademark By Paul Keating  –  Dec 06, 2011 2:28 pm PDT

A trademark is a trademark.  A "brand" may or may not be but it is still a "brand"

Constantine,My definition of brand was meant to By Thomas A Gilles  –  Dec 01, 2011 10:32 pm PDT

Constantine,

My definition of brand was meant to be limited to what rights a new TLD registry will have over their .NAME. A poor word choice on my part, as there is obviously more involved in branding as a concept.

I would agree that .com is a stronger 'brand' than .net. But, Versign has no legal rights over the use of '.com' or 'dotcom' for domain registration services.

This USPTO decision means that no new tld will have any enforceable intellectual property rights to the use of their '.TLD' or 'DotTLD' in any classification for domain name registration in the U.S. I agree ROW is a different matter. 

Your efforts and passion into the .MUSIC initiative and the New gTLD process as a whole are laudable. I agree you have created a stong early 'brand 'recognition for .MUSIC. I hope you are successful in your endeavors.

But when you are, you will not be able obtain any enforceable rights to the use of '.MUSIC' or 'DotMusic' for domain registration services in the U.S.

Should be interesting to see how everything By Constantine Roussos  –  Dec 01, 2011 10:59 pm PDT

Should be interesting to see how everything pans out. I am looking forward to it and hoping for the best. Thanks for the kind words, I appreciate it.

Constantine Roussos
.MUSIC / MyTLD

Trademarke Frontrunning still alive in the EU By Thomas A Gilles  –  Dec 03, 2011 10:59 am PDT

http://www.visitudt.com/articles/growing_chances_for_udts_gtld_application_dottoday_trademark

Millions of Dogs Eat Dog Food By John Berryhill  –  Dec 06, 2011 10:58 am PDT

The fact that millions of dogs eat "dog food", and millions of people buy "dog food" for their dogs is indicative of a lively market in dog food, and not goodwill in the term "dog food" as a distinctive indicator of the source or origin of any goods or services whatsoever.

The key to the problem is posed right here:

"Sorry Thomas but your points on branding are obviously wrong unless you can prove to me that a .COM domain name is worth less than a .NET domain name in the current marketplace."

Worth less to whom?  Verisign, or the person who registers the name?  When I navigate to Amazon.com instead of Amazon.net, it is not the reputation and goodwill of Verisign that guides me in that choice, anymore than I think more highly of Bell Atlantic when I dial 202 to reach a telephone number in Washington, DC instead of Pacific Bell when I dial 415 to reach a telephone number in San Francisco.

Now, "Dot Foo" can certainly be used as a trade or service mark for plenty of things.  But as a mark for domain registry services, the proposition entirely misses the point.  With the exception of, for example, a chartered TLD being used as a certification mark or collective mark signifying membership in an organization (e.g. "REALTOR"), the entire point of a TLD is not to signify the source or origin of any services offered by the registry whatsoever.  The point is that others can freely use it in connection with their goods and services, over which the registry exercises no control, sponsorship, or authorization whatsoever.

But if you want to insist that these things function as trademarks, why stop at the registry?  The ability to run a TLD in the authoritative root is determined entirely by IANA.  That ability can be revoked.

Are you saying, Constantine, that you will not agree to a registry contract with ICANN under which a TLD can be revoked from your registry and re-assigned by ICANN for non-performance of the registry contract?  After all, in that situation, presumably you would raise your exclusive trademark rights as a barrier to such re-assignment under the ICANN registry contract.

If so, then I hope you make it clear in your TLD application that you have no intention of agreeing to such standard registry terms required by ICANN in your registry contract, so that the application can be evaluated rather promptly.

John,My issues are not with ICANN. Also By Constantine Roussos  –  Dec 06, 2011 11:45 am PDT

John,

My issues are not with ICANN. Also I do not think anyone has any doubt that my team can run a registry effectively in the best interests of the music-entity registrant. Performing is a given and I am pretty certain we will perform really well and benefit the music community. The issue I am posing is 3rd parties applying for TLDs with the main purpose of extorting money from applicants i.e gaming.

In regards to global trademark law (if that term even exists), you are the attorney, you can figure out a solution that works globally. I know we have spent years discussing how to protect trademark holders at ICANN. The bottom line is that there will never be a 100% solution that covers all bases and there is uncertainty. This is good for lawyers such as yourself and Michael Palage i.e good for your business. People can always argue both ways in almost everything but people are pretty good at figuring out who is the bad actor who has little or nothing to contribute. There is no simple answer John. That is the inherent problem. This is a complex system that the whole ICANN community created.

Constantine Roussos
.MUSIC / MyTLD

That's not responsive to the issue By John Berryhill  –  Dec 07, 2011 11:38 am PDT

While there is nary a person or body within the ICANN community which you have not demonized or to which you have imputed ill motivations over the last few years, you really do not address the issue. 

You may be the most wonderful person on earth and, yes, wonderful people do not need contracts.  So, after you are run over by a bus, are no longer in the picture, and your company over the course of ten years succumbs to the management of the ill-motivated, the TLD delegation will reach renewal.

Now, would you kindly explain, if the company owns exclusive rights as a trademark in ".TLD" for registry services, how ICANN is to move the TLD out of the hands of those evil people who usurped your good intentions, and into the hands of another company?

"In regards to global trademark law (if that term even exists), you are the attorney, you can figure out a solution that works globally."

There isn't one, and that is as true as when Jon Postel first observed it.  There is no shortage of folks who waltz in with simplistic notions about trademarks and who think they have a magic bullet to make those issues go away, but I assure you that I had a healthy career in patents before getting near a domain name trademark issue, and to which I can return if someone had the magic wand to make internet trademark issues go away. 

I understand the attraction of paranoid conspiracy thinking which holds that doctors are in the business of promoting disease and withholding cures, that auto companies are hiding the secret of the 100 mpg car, that oil companies are covering up various free energy machines, and so on.  It is very common among basically well-motivated people who unfortunately have the perception that everyone else is out to get them somehow. 

People who disagree with you are not part of an evil conspiracy.  They simply disagree with you.  That is the way the world works.  A few years ago, you were complaining about "insider" advantages, and then you switched to suggesting there should be points for "pioneer" status, or whatever you were calling it at the time, upon your graduation from "outsider" to "insider". 

But it would be refreshing if you did not reflexively impute "bad actor" status to "anyone who doesn't agree with me".

John,I have never demonized anyone at ICANN By Constantine Roussos  –  Dec 07, 2011 1:51 pm PDT

John,

I have never demonized anyone at ICANN or assume anyone that disagrees with me is part of an evil conspiracy. I do not buy much into conspiracies. That are pretty strong words to use and I have been pretty constructive in my opinions and openness to dialogue and transparency over the years. Again, I never know if you are joking around or serious most of the time.

You do not see me calling you a "bad actor" or part of an "evil conspiracy" if I disagree with your points. As you can see from the conversation on this post I am always up for meaningful discussion. That means opinions are expressed and others comments respected, even if disagreed upon. There is a difference between demonizing and having constructive discussions of different opinion.

There was never talk of "pioneer points". To be clear, what you are referring to was revolved around adding points for the strongest business and feasibility plan (similar to 2000 gTLD round) i.e applicant strength comparison with proof of market and proven demand. Also the other points were revolved around applicants that been public and performed considerable communication outreach efforts since 2008/2009 to get an additional point in community. And thirdly for community applications, to include multi-stakeholder with equal and fair representation. Those were never given, are history and so we moved on.

We can agree to disagree. I assure you I do not think you are part of an evil empire or are a bad actor :) Maybe a bad comedian sometimes. However I have to admit you are pretty funny at times.

Constantine Roussos
.MUSIC / MyTLD

Agreed By John Berryhill  –  Dec 08, 2011 2:05 pm PDT

Again, I never know if you are joking around or serious most of the time.

The scary thing is that I often don't know either.

But he IS a "bad Actor" By Paul Keating  –  Dec 09, 2011 2:32 am PDT

John is a notorious bad actor.  If you think his "domain pope" was bad, you should see his attempt at McBeth......  :-)

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