________________________________________________________________________________ How Much for .brooklynbridge? by Oscar S. Cisneros 3:00 a.m. Sep. 11, 2000 PDT Although new top-level domains (TLDs) on the order of .com, .net, and .org won't be created until sometime next year, cybersquatters, trademark owners and cyber-wildcatters are hoping to beat the next Internet land rush using pre- registration schemes. Experts warn, however, that consumers should be aware of the risks involved with buying a domain names under a TLD -- such as .web -- that has yet to be approved by the Internet's managing authority. "People should be cautious with these pre-registration schemes," said Louis Touton, vice president and general counsel for the Internet Corporation for Assigned Names and Numbers. "No new TLDs have been established and there are no guaranteed -- or even preferred -- TLDs." ICANN has begun accepting applications for new TLDs, Touton said, but the TLDs won't become a reality until sometime after the ICANN board votes on applications in November. That hasn't stopped companies like Image Online Designs, Name.Space and Alternative Domains from accepting domain-name registrations in hundreds of yet-to-be-approved TLDs ranging from .art to .zone. Speculative registrants include trademark owners like Andersen Consulting, which scooped up andersen.consulting. Would-be squatters are vying for domains like yahoo.sex and staking claims on generic phrases like law.firm. In a prime example of the confusion that can ensue from such wildcatting, three people appear to be staking a claim for www.sex.web. One has registered the name with Image Online Designs, another has registered sex.web at Name.Space, and still another has filed an "intent-to-use" trademark application for the domain name. Shawn Jacques, a software engineer who registered sex.web with Image Online Designs in 1996, said that there is value in being the first in line during a domain-name stampede. "There's potentially a lot of money at stake, so there's a lot of jockeying and maneuvering going on," Jacques said. "Ideally, they'll look at the date that each domain was registered and choose the one that was registered first." Jacques' uncertainty is precisely why Touton said that ICANN looks down upon pre-registration of domain names in yet-to-be- created TLDs. "We're concerned about companies that are charging for pre- registration," Touton said. "That seems like a pretty obnoxious practice." Touton said that there are many levels of doubt: Will any new TLDs be created? Will the registry in question apply to ICANN for a TLD? Will ICANN approve the application? And will the pre- registrations be honored by ICANN? With more than 20,000 .web domains registered, the founder of Image Online Designs says there is no doubt his company is moving forward with ICANN's application process. "We have been operating the .web registry since 1996," said Christopher Ambler, president and founder of Image Online Design. Ambler said that his company's application will seek ICANN's sanctioning of the registry it has operated for the last four years. "Our application to ICANN is more a request that ICANN recognize the work we've already done." Users already registered with the company should keep their .web domains, Ambler said. Although he would not comment on specific alternative registries, Touton in principal questioned whether any domain- name pre-registrations in unminted TLDs should be honored. "Perhaps it's not fair to give somebody preference for being what some people call a claim jumper," he said. A spokeswoman for NamePlanet agreed with Touton, finding it humorous that a would-be TLD operator would accept domain-name registrations before the underlying TLD is approved. "NamePlanet obviously wants to make sure that everything's in place before everybody gets excited," said spokeswoman Rebecca Woods. PlanetName is readying its TLD application for ICANN. When it comes to pre-registration of domain in non-existent TLDs, Internet trademark law expert Sally Abel has two words to share with consumers: buyer beware. "These registrations do not exist yet and may not ever exist," said Abel. According to Abel, alternative registry operators and companies accepting pre-registration of domain names should also be careful: Legal liability may ensue in the form of breach-of- contract or fraud claims if companies fail to disclose the likelihood that the TLDs in question will never become a reality. "As long as they provide adequate disclosure then I would think that they wouldn't have liability," she said. http://www.wired.com/news/business/0,1367,38653,00.html ================================================================================ Internet Land Rush at TM Office by Oscar S. Cisneros 3:00 a.m. Sep. 18, 2000 PDT The new Internet land rush has begun at the United States Patent and Trademark Office. Individuals and companies are filing trademark applications for trademarks that include domain names in yet-to-be-created top- level domains (TLD) like .web, .firm and .sex. U.S. government trademark policies could allow speculators to beat the domain-name stampede. "We've seen dot-everything in this office," said Jessie Marshall, a trademark attorney with the Patent and Trademark Office. "People are putting dots between anything they can think to put dots between." Although most of the prime space in the .com TLD is in private hands, the Internet Corporation for Assigned Names and Numbers won't approve any new TLDs until its next board meeting in November. Until then, new TLDs exist only as applications to ICANN. But that hasn't stopped an entire industry from developing around speculative domain-name registrations in TLDs with uncertain futures. Speculators are lining up for domain names at unapproved, private registries and staking their claims on paper at the trademark office. Under the situation as it currently stands, domain-name speculators could use intent-to-use trademark applications to secure the rights to domain names in TLDs that do not yet exist. With trademark rights in hand, a speculator could file a lawsuit or use ICANN's domain dispute policy against a user who legitimately registers a domain name in a newly minted TLD. Does it matter that these trademark applications are often for domain names in a nonexistent TLD? No, according to trademark office officials. "We don't look at it as a domain name at all," Marshall said. "We look at it to see if it's a trademark or a service mark. "It doesn't matter to us that it's in a top-level domain that may or may not ever exist." The trademark office has issued internal guidelines for examining trademark applications that include domain names, Marshall said. The guidelines list not-yet-official TLDs and note that "while these proposed TLDs are not currently used on the Internet as TLDs, applicants may include them in their marks." This policy decision stems from the difference between a trademark registration and a domain-name registration, Marshall said. Trademarks, she said, are used to identify the source of products and services while domain names are simply addresses akin to telephone numbers and ZIP codes. "One is an identifier and one is a locator," she said. As a result, individuals can file for trademark applications like "sex.web" even though the .web registry has yet to be -- and may never be -- approved by ICANN. "If they're using it as a trademark we don't care if they're not using it as a domain name," she said, adding that sex.web could in theory become a valid mark if it is used commerce, for example, on an adult entertainment website with a domain name different then sex.web. And that's the plan for the would-be owner of sex.web, Von Eric Lerner Kalaydjian, who has filed an intent-to-use trademark application for sex.web with the trademark office. With an intent-to-use application, Marshall said that Kalaydjian has six months to demonstrate that he is using the trademark "sex.web" in commerce -- a deadline that can be extended for up to three years. "I'm using the name in commerce as we speak," Kalaydjian said. "Basically, the government is saying, 'Look, whoever comes to us first is entitled to that domain.'" Assuming ICANN eventually approves .web as a new TLD and assuming that Kalaydjian's intent-to-use application matures into an approved trademark registration, Kalaydjian could potentially use his trademark rights to wrest the domain name www.sex.web from anyone who registers it, Marshall said. "I'm entitled to the sex.web name on the Internet," Kalaydjian said. "And if anybody tries to register sex.banc they've got another thing coming because my application covers banking services." Currently, both the domain-name and trademark registration systems are driven by first-to-file rules. But since a valid trademark registration can sometimes trump a domain-name registration in the courts, being the first in line at the trademark office can effectively win a trademark holder domain name rights -- even before a new TLD begins to accept registrations. "If you went to court, your date of registration for the trademark would effectively be the intent-to-use application date," Marshall said. The effect of all of this is to start the land rush for domain names in new TLDs even before any ICANN-approved registries open their doors for business. "You've got to allocate the resource somehow," said Robert Merges, a professor of intellectual property law at the University of California at Berkeley's Boalt Hall School of Law. Merges said that the maneuvering serves only to hasten the moment at which generic domain names in new TLDs enter the market. The real issue, he said, is whether trademark holders -- the McDonald's of the world -- will get protection when sanctioned registries start accepting registration in new TLDs. "What's at stake here is the land-grab industry versus the incumbents," he said, adding that ICANN may have to amend its Uniform Domain Name Dispute Resolution Process to curb cybersquatting. ICANN is currently accepting applications for new TLD registries. As part of its criteria for reviewing applications, the nonprofit corporation has mandated that applicants address the intellectual property issues surrounding the creation of new TLDs. This has led to groups like the International Trademark Association calling for first-registration rights in new TLDs. This has irked free-speech advocates who complain that if trademark holders get such a "sunrise" provision, many domains will be locked up before the public gets a shot at making fair use of them. Berkeley's Merges, meanwhile, suggested that a balance should be struck between eliminating the artificial scarcity of the .com TLD by making more generic domain names available, while at the same time preventing the economically wasteful social costs of cybersquatting litigation. http://www.wired.com/news/politics/0,1283,38824,00.html ================================================================================ Some Dots Can't Be Trademarked by Oscar S. Cisneros 3:00 a.m. Sep. 18, 2000 PDT As speculators use pre-registration schemes and trademark law to secure rights in future domain-name registries, a court has ruled that .web and other generic top-level domains cannot be trademarked. "The court finds that .web, as used here, falls outside the ambit of trademark categorization," wrote Judge Robert Kelleher of the United States District Court for the Central District of California in late June. "Further, even if it could be categorized, .web is simply a generic term for websites related to the World Wide Web," Kelleher said. "Accordingly the mark is not protectable." The ruling stems from a trademark infringement suit filed by Image Online Designs against CORE, Counsel of Internet Registrars, a group of 60 domain-name registrars accredited by the Internet's managing authority. Last year the two groups filed competing service-mark registrations for .web, a generic top-level domain that has not yet -- and may never -- be approved by the Internet Corporation for Assigned Names and Numbers, the Internet's managing authority. The legal squabble, which is on appeal, comes at time when domain-name speculators are turning to trademark law and unofficial registries like Name.Space to secure rights in domain names found in unofficial TLDs, like .web, .firm and .shop. The lure of lucrative domain names in the unplotted space of new TLDs has prompted both trademark holders and cyber-wildcatters to stake out claims through any means possible, even if the chances are slim. CORE officials said that they were pleased by the ruling. "It basically established a much clearer precedent on the treatment of top-level domains as intellectual property," said CORE Chairman Ken Stubbs. "The ruling basically says that a TLD is not a piece of intellectual property but a public trust." IOD's attorney says the company plans to appeal Kelleher's ruling to the 9th U.S. Circuit Court of Appeals. "Our trademark allegations are not based on pre-registration but are based in our actual use of .web for registry services dating back to 1996," said Wesley Monroe, an attorney with Christie Parker and Hale who represents IOD. "We think that the decision is not legally correct and we'd like the appeals court to overrule it." Monroe said that Kelleher's rationale in part followed guidelines established by the United States Patent and Trademark Office to deal with domain names registered as trademarks. "When a trademark (or) service markĀ…is composed, in whole or in part, of a domain name, neither the beginning of the URL (http://www.) nor the TLD have any source indicating significance," the guidelines state. "Instead, those designations are merely devices that every Internet site provider must use as part of its address." The trademark office's guidelines lack proper reasoning, Monroe said. "They just came out and concluded that without any substantive legal analysis." But the court went beyond just citing the guidelines in explaining why IOD could not receive trademark protection for .web. Trademarks are supposed to identify the source of a product or service, not a generic type of product or service, the court noted. Generic top-level domains are just that -- generic -- the court said. "Taken as a whole, the court agrees with the PTO in its conclusion that a TLD and other non-distinctive modifiers of a URL like 'http://www' have no trademark significance," the court wrote. "As a TLD, .web does not indicate the source of the services; instead it indicates the type of services." IOD has another appeal to contend with. Monroe said the company will challenge a recent trademark office administrative decision that rejected one of IOD's trademark applications. As for CORE's now-abandoned strategy of registering service marks for yet-to-be-created TLDs, Chairman Stubbs says the move was a preemptive one aimed at preventing competitors from asserting control of a public resource. "We applied as a preemptive action, " he said. "What we were going to do if we were given the mark is hand it over to ICANN." Like IOD's application, CORE's service-mark applications were rejected by the USPTO and eventually abandoned by the counsel. IOD has filed its intent-to-appeal motions with the 9th Circuit. No schedule for hearings as yet been determined. http://www.wired.com/news/politics/0,1283,38826,00.html ________________________________________________________________________________ no copyright 2000 rolux.org - no commercial use without permission. is a moderated mailing list for the advancement of minor criticism. post to the list: mailto:inbox@rolux.org. more information: mailto:minordomo@rolux.org, no subject line, message body: info rolux. further questions: mailto:rolux-owner@rolux.org. home: http://rolux.org/lists - archive: http://rolux.org/archive