– Mark Skoultchi, Catchword Brand Name Development

As you may have heard, the Internet is undergoing a growth spurt of unprecedented proportions. Over 1000 new global top level domains (gTLDs) are in the midst of launching, so in addition to familiar extensions like .com, .org, and .net, expect to start seeing .nyc, .company, .nike, and .golf. And, of course, about 1000 more.

A gTLD Crash Course: Crash now, don’t crash later.

Anyone can apply for a website at a new gTLD, except the branded ones like .nike or .sony. But, buyer beware, the individuals or companies who own the gTLDs can charge however much they want for domains employing their extensions. For example, registering www.xyz.luxury will cost you $600/year, though inversely www.luxury.xyz will cost you under $10/year.

The new extensions all have a “sunrise” period, during which owners of existing trademarks can pre-register domains corresponding to their trademarks before the general public. This is to prevent somebody from getting to Spam.food before Hormel does, for example.

Following the sunrise period is the pre-registration period. This is a length of time before the gTLDs go live when there are no restrictions on who can apply for a domain. If there are multiple applicants for the same domain, some gTLD owners have promised to give it to the first applicant, while others will let them bid against each other in an auction. Though the start and end dates for the sunrise and pre-registration periods are different for all the gTLDs, many registrars allow you to create customized watch-lists for your gTLDs of interest.

How will people react to 1000 new gTLDs?

Though only time will tell, the Internet’s growing pains should be minimal. The new gTLDs will be as searchable as any other website is now, and because Google itself has applied for over 100 new gTLDs there’s a good chance the search giant will be tweaking its algorithms to account for the new extensions. Furthermore, internet users are already growing accustomed to .com alternatives. In recent years we’ve seen an increase in usage of country top level domains like .co, .ly, and .me (not to mention .net and .biz). Though it won’t happen overnight, consumers will similarly come to accept the most used new gTLDs as well.

The other indication that many of these gTLDs will attract significant usage is that, quite simply, the internet is getting more and more crowded. Barring an apocalypse, internet usage worldwide will increase dramatically in the coming decades, and businesses and individuals will be forced to turn to the new gTLDs for their own slice of the web.

Inevitably, though, not all new gTLDs will succeed. Shorter extensions that have clearly implied communities or industries will see the highest demand, like .health, .law, .and .book, but vaguer extensions lacking robust communities or user groups might fall by the wayside—extensions like .gripe, .blue, and .boo. Furthermore, there are many extensions that overlap with each other. With the release of .pics, .photo, .photos, and .photography, it is likely that one or two of these will become the default and the others will fade away. Same with .dating and .singles, .fish and .fishing…you get the idea.

The BIG companies and their gTLDs

Some companies with new gTLDs surely have grander plans for them than just selling domains to interested buyers. To enhance internet book sales, Amazon might allow authors who sell through them to build out websites for their books at a .book address, where customers could go to read interviews, find book tour dates, watch book trailers, and of course, buy books. Nike, on the other hand, might build out sites like soccer.nike or Jordans.nike to give shoppers direct access to products or brands. It’s even possible that Nike could give loyal customers personalized .nike sites where they could shop, customize clothing, build out their wardrobe, and share pictures of them dunking, etc. And what will Google do with their myriad of new extensions? Of course, only time will tell.

Using a .com domain vs. a new gTLD

The question for technology managers, entrepreneurs, and new businesses is this: When launching a web presence, should you choose a .com domain or a new gTLD? Well, as you might expect, the answer is complicated, so let’s go through a few scenarios.

Continue Reading Business in the Age of the New gTLDs

–Dan Kelly, Attorney

I have just made the happy discovery that the good folks over at FairWinds Partners, operators of the Domain Name Strategy blog, have another blog called gTLD Strategy. In this post this week, they have hinted that there may be more “.brand” applicants in this round of gTLD applications than many people have been expecting. They point to four entities that have announced plans to register a .brand domain name:  Canon, Hitachi, Star Hub, and the Australian Football League (AFL). Interestingly, though, they suggest that they are aware of many more likely .brand applicants who have not made public announcements.

I’ve previously commented on the likely Balkanization of the entire domain universe here. From a trademark standpoint, even so-called “generic” top-level domains have one root operator or registrar, which means that each TLD can be identified with a single source. This is the essence of a trademark. I think that it is a matter of time before there is competition over the quality of various TLD spaces. Marketing, pricing, and services will eventually become relevant to anyone’s choice about where to set up a virtual shop on the web (and we’ve started seeing it with, for instance, the .co space).

By way of reminder, March 29 is the deadline by which an entity must register with ICANN’s TLD Application System (TAS) so that the entity can apply for a new gTLD by April 12 (two deadlines for two different steps). More information is here. It also bears repeating that this is not like registering for myowndomainname.com with Go Daddy, which anybody with ten minutes and ten bucks can do. The application fee for a gTLD is $185,000, and there are some significant requirements for running a gTLD.  It is not trivial.  (There is a reduced fee program for public-interest applicants that have a financial need.  The reduced price is $47,000.)

The next big date to watch for is May 1, when ICANN plans to reveal all of the applied-for strings in this round.  It will then be time to evaluate whether defensive strategies are warranted.  More on that in May!

–Dan Kelly, Attorney

I assume that most readers have heard that the universe of Internet domain names may be expanding next year.  Instead of being limited to a finite number of relatively mundane top-level domain extensions like “.com” and “.org,” ICANN is planning to allow for the registration of any string of characters to the right of the dot.  These plans have been in the works for a while, and just this week, ICANN released the latest version (version 3 for those keeping score at home) of the “Draft Applicant Guidebook.”  This version is publicly available here, and ICANN is taking comments on the contents of this draft through November 22, 2009.  Speak now or hold your peace (at least until the next draft comes out).

I have previously observed that the world of Internet domain names bears some semblance to the proverbial “Wild West.”  I have also expressed some doubts about the prudence of opening up the gTLD space.  At the risk of being Dr. No, I see a host of potential problems for trademark owners, based principally on current abuses.  Even so, the gTLD roll out process provides at least some opportunity for taking a broader view of the possibilities, both good and bad, and stakeholders should pay attention now and weigh in before it is too late.

–Dan Kelly, Attorney

I am earnestly trying to reserve judgment on the prospect that the Internet Corporation for Assigned Names and Numbers (“ICANN” — the proverbial “man behind the curtain” of the Internet) is actually going to go through with its roll out of opening new generic top-level domains (“gTLDs“) to anyone (a TLD is the thing that comes to the right of the dot in a domain name — the most famous being COM).  This is no easy task.  Each month some new report comes out that makes the prospect of throwing open TLDs look worse and worse.  As I have observed before, the Internet has a bit of the Wild West to it.  Despite some drawbacks, it has regulated itself fairly well.

Perhaps the best proxy for the prudence of doing anything is to gauge the number of acronyms it generates:  the fewer, the better.  (By this measure, some of civilization’s more dubious achievements include the military, the federal government (or see here), and, of course, the practice of law.)  The debate about “.anythingoes” is relatively new, and the first draft report from the Implementation Recommendation Team (the “IRT”) reads like vegetable soup.  The IRT recommends an RPM (rights protection mechanism), a URS (uniform rapid suspension system), a GPML (globally protected marks list), and possibly SERs (sunrise eligibility requirements) in a SDRP (sunrise dispute resolution policy) — all this (and more!) in a svelte 47 page document complete with numerous footnotes, appendicies, and even a handy flowchart (itself a warning flag):

Don’t get me wrong:  if ICANN wants to allow anybody to register any word as a top level domain name, it is worth protecting brand owners.  I’m still struggling with why ICANN is opening up the top-level domain space in the first place.  If ICANN has to create an armada of administrative procedures to protect entities with acknowledged, existing rights, is it something that is really worth doing?

‘Tis the season for gratitude and thankfulness, and avoiding conflict and fruitcake.

From a trademark perspective, every season is for avoiding genericness, right?

After all, generic designations are part of the public domain, they aren’t own-able.

So, why is Guaranteed Rate continuing to invest in Rate.com, found to be generic?

Perhaps because, for an online business, a generic domain name is quite valuable.

Beyond that, Hotels.com‘s persistence yielded 3 registrations (here, here, and here), despite losing a genericness appeal in 2009, so maybe Guaranteed Rate has Hotels.com-like optimism for a possible chance to prove acquired distinctiveness.

And, while it is true that the deck is pretty stacked against federal registration of claimed marks like Rate.com, it is also presently true that:

“[T]here is no per se rule that the addition of a non-source-identifying gTLD to an otherwise generic term can never under any circumstances operate to create a registrable mark. The [Federal Circuit] has held that in rare, exceptional circumstances, a term that is not distinctive by itself may acquire some additional meaning from the addition of a gTLD such as ‘.com’ or ‘.net’ that will render it ‘sufficiently distinctive for trademark registration.'”

In the coming year, we’ll have an opportunity to see whether that remains true.

The U.S. Supreme Court will decide this question in the Booking.com case:

“Whether, when the Lanham Act states generic terms may not be registered as trademarks, the addition by an online business of a generic top-level domain (‘.com’) to an otherwise generic term can create a protectable trademark.”

Interestingly, the very nature of a domain, as an online address, makes it singular.

And, it is important to keep in mind that a trademark not only identifies goods and distinguishes them from those of others, it also points to a singular source.

So, perhaps generic dot com brands should be considered at least capable.

The legal test ought to focus on consumer perceptions about distinctiveness.

Trademark types, will the Court permit generic dot coms to serve as marks?

Marketing types, when do you value domain names that can’t be trademarks?

And, when does putting a bow on genericness make business sense to you?

-Wes Anderson, Attorney

For every serious-minded, informative website out there (I submit for your consideration this august blog) there are countless others that lean more towards the absurd. The website “walmart.horse” is squarely in the latter column. But can something so lighthearted also constitute trademark infringement?

According to Ars Technica, a cartoonist named Jeph Jacques (author of the webcomic Questionable Content) decided to register the website walmart.horse in February 2015. The site is essentially the most basic of Tumblr blogs, and “does what it says on the tin”: you get a picture of a horse layered atop a Walmart storefront, and not much else. Jacques says he registered the domain name along with a variety of other “ridiculous” domain names.


If a website address ending in “.horse” sounds about as plausible as a 555- telephone number, worry not: “.horse” is among a laundry list of new “top-level domains” that have recently been rolled out to supplement the traditional .com, .org, and .net top-level domains (known as the original “generic” top-level domains, or gTLDs).

Jacques styles the website as “postmodern Dadaism.” We’ll be fine with calling it “goofy.” And the long reign of the enigmatic twitter handle “horse ebooks“ suggests there’s something undeniably entertaining about an equine non sequitur. But Wal-Mart Stores, Inc. has styled the website as something else – infringement upon its WALMART trademark.

Wal-Mart purportedly sent a rather generic demand letter to Jacques, which Jacques posted on his own website. The letter utilizes the proverbial kitchen sink of trademark infringement: Wal-Mart claims that walmart.horse “suggests Walmart’s sponsorship or endorsement of your website” and “constitutes trademark infringement and dilution of Walmart’s trademark rights and unfair competition.”

It seems Walmart’s case with respect to confusion as to “sponsorship or endorsement” — a traditional trademark infringement standard under the Lanham Act — is rather weak. Would consumers attribute this website to an avant garde Walmart ad campaign? Possibly, but not “likely,” in my view. And Walmart doesn’t put a great deal of emphasis on this approach either — the letter focuses primarily on “dilution.”

But what is “dilution”? According to the Federal Trademark Dilution Act:

Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.

Owners of well-known marks typically turn to dilution where a purported infringer is using a similar mark, but only for unrelated or disparate goods and services. A dilution claim gives famous brand owners a longer reach than they might otherwise have under a traditional “likelihood of confusion” infringement analysis.

Under “dilution by blurring,” the owners of well-known marks typically turn to dilution where a third party is using a mark for goods or services that may be completely different or unrelated to the famous mark’s associated goods and services. Under “dilution by tarnishment,” the third party associates the famous mark with inappropriate or unflattering subject matter.

Walmart’s demand letter accuses Jacques of both forms of dilution: walmart.horse “weakens the ability of the Walmart mark and domain name to identify a single source” and “tarnishes the goodwill and reputation of Walmart’s products, services, and trademarks.

But note the language of the statute: dilution only occurs when the purportedly dilutive mark is used in commerce, which generally refers to the sale of goods and services.

So what is walmart.horse selling? Well, nothing. Some cases have blurred the edges of this definition, but it’s tough sledding to say that Jacques is using a mark “in commerce” and thereby diluting the WALMART mark. And Jacques’ stated intent is to display the site for its own sake as an “obvious parody.” He is also wise enough to utilize public domain images to avoid any copyright infringement concerns. This is indeed parody — or, if you’re feeling adventurous, an art piece. It likely qualifies as nominative fair use, particularly given its noncommercial purpose.

The walmart.horse saga also provides a lesson on the utility of the “form” demand letter, like Walmart’s. While a boilerplate infringement letter does the job in some cases, they can backfire. Artists and creatives are often armed with experience in the bounds of trademark and copyright law. And web-savvy parties may elect to post the form letter online, taking the grievance directly to the court of public opinion. That’s what Jacques did, and the press (armed to the hilt with horse puns) has roundly sided with him. This may be thanks to his creative response to Walmart’s letter, which contained this parting shot:

If you have any requests for other animals you would like to see added to the image on the website, I would happily comply!

We’ll see if Walmart takes up the offer.

–Dan Kelly, Attorney

In case you did not yet hear the news, ICANN at long last revealed this week the new applied-for strings in the new gTLD program. If you are unfamiliar with what this is, ICANN will be expanding the number of available so-called “generic” top-level domains (gTLDs) for use in Internet domain name addresses. A top-level domain is the thing to the right of the dot, like .com, .net, and .org. A “generic” TLD is principally distinguished from the two-letter “country code” TLDs, like .us, .ca, .uk, etc. (“ccTLDs”). There are twenty one gTLDs right now — here’s some background from Wikipedia. Prior DuetsBlog coverage is here.

I have finally perused the entire list of 1930 newly applied-for gTLD strings (online here, statistics here), and there are many, many interesting things to discuss. First of all, as a trademark attorney, I see an issue bubbling up with respect to the category name “generic” top-level domain. The revealed list of strings includes numerous well-known brands that have been applied for by their owners. There is nothing generic about most of these “branded” strings, particularly if they are associated with a company selling goods and services under the relevant brand. Most people familiar with the new TLD process and trademarks will be able to distinguish the meaning of “generic” in the context of a TLD, but this is a good example of how this push for new TLDs has already outstripped its own lexicon. Words matter, and we need a new word for these TLDs, or we need to distinguish between “branded” TLDs and truly “generic” TLDs — words like ART and STORE and TEAM. The new TLD process itself already distinguishes between “community” and “geographic” TLDs.

Secondly, I continue to wonder about the viability of new TLDs on a practical level. For instance, did you know that .jobs has been a TLD since 2005? Have you ever surfed a .jobs website? How about a .pro site? Been to a .coop site? I didn’t think so. These generic TLDs have been around a while, and I assume each has made its own marketing push, but it seems to me that none of them have taken off. Perhaps the new TLD effort will finally shake us all out of our .com paradigm, but it is probably going to take major marketing efforts to do so. In that regard, some of the new branded TLDs might finally break the mold. Advertising will have to whet people’s appetites to surf beyond .com, and my bet is on domains like .nike, .mcdonalds, .apple, and .google, to name just a few.

Third, it is really interesting to compare the approaches of several large companies in the new TLD process. It appears that Apple applied for only one TLD:  .apple. In contrast, it appears that Microsoft applied for eleven TLDs, Amazon applied for about 76 TLDs, and Google applied for more than 100 TLDs. (I say “appears,” because it seems that some companies used proxies, agents, or subsidiary or related companies for their applications, so my counts are based on obvious identifying information in the list.) Perhaps these differences can be accounted for in the different business models and focus of each company, but clearly Google and Amazon are betting on the new paradigm much more than Apple and Microsoft. There is much more to say about these four companies alone in light of this data, perhaps in a future post.

I think that the most applied-for string was APP, with thirteen applicants for that string, including Amazon and Google. It appears that neither Apple nor Microsoft applied for it. Recall that these latter two companies are currently fighting about Apple’s attempt to register APP STORE as a trademark.

Also, as an assurance that the First Amendment is alive and well, there are three applications for SUCKS.

And the creepy award goes to Google, which applied for the following strings:  BABY, DAD, DOG, FAMILY, HOME, KID, and MOM, among many other generic and proprietary strings (way more generic than proprietary).

Last but not least, rights holders should LOOK NOW at both the list of strings and at the various responsive procedures available. First, public comments can be made now though August 12, 2012. Second, there are a number of formal objection procedures, all of which I believe are scheduled to run from now through January 13, 2013Here is a good, succinct overview of the formal objection procedures, and many details are in Module 3 of the Applicant Guidebook. These formal procedures include objections based upon legal rights (i.e. registered or unregistered trademark rights, among others), and I recommend filing sooner rather than later, given the many hiccups in the new TLD processes so far.

–Sharon Armstrong, Attorney

Today ICANN, the Internet Corporation for Assigned Names and Numbers, better known as the company that basically runs the Internet, begins accepting applications for generic top level domains.  Most users know top level domains such as .com, .org, .edu…and even .xxx.  Now, under this new program, organizations can apply to use virtually any term, including words in non-Latin languages, such as Cyrillic, Chinese or Arabic.

Since Susan’s post about the introduction of ICANN’s new program here, ICANN has been busy putting together a slew of information about how organizations can obtain a generic top level domain, including an exhaustive 349-page guide.  Here are some of the highlights:

  • Any established public or private organization anywhere in the world can apply to create and operate a new generic Top-Level Domain (gTLD) registry.
  • An applicant for a new gTLD is applying to create and operate a registry business supporting the Internet’s domain name system. This involves a number of significant responsibilities, as the operator of a new gTLD is running a piece of visible Internet infrastructure.
  • Trademark owners cannot reserve their trademarks.  However, registries will be required to operate sunrise or intellectual property claims services for the protection of trademarks.
  • Certain terms, other than private party trademarks, are off-limits.  These include “AFRINIC,” “RIPE,” “INVALID,” and “WHOIS.”
  • No numbers or dashes – new gTLD’s must consist entirely of letters.
  • Formal objections to an application – including objections based on trademarks – will begin two weeks after the close of the application window.

Find out more about the whole shebang here.

–Dan Kelly, Attorney

The Trademark Trial and Appeal Board recently issued a precedential decision upholding the Trademark Office’s refusal to register five applications for the mark .MUSIC in connection with a variety of goods and services, holding that .MUSIC is merely descriptive of the goods and services.  A PDF copy of the decision is here.  A company called theDot Communications Network filed these five intent-to-use applications in November 2008.  It has no other applications pending that I can find.

This decision is among the first paragraphs in a new chapter of domain-related trademark issues that are arising in light of ICANN’s roll out of new generic top-level domains next year.  It is unsurprising that companies are attempting to secure trademark rights in top-level domains, since the new gTLD scheme is seemingly set up to encourage the Balkanization and proprietization of gTLDs.  Verisign, the long time “owner” of the .com gTLD, among others, used to own this registration for “.COM .NET THE WORLD’S MOST TRUSTED NAMES.”  Verisign now has an application pending to register the tag line “THE WORLD IS CONNECTING BETWEEN THE DOTS,” which it is using in connection with a rotating banner on its home page to promote its gTLDs–.com, .net, .gov, .name, and .tv.

Other groundwork for this has been under construction for some time:

  • Neustar owns two registrations for .BIZ (and Design, “.biz” disclaimed)
  • The Cooperative League of the USA owns a registration for DOTCOOP (i.e. “.coop”)
  • The Public Interest Registry owns registrations for .ORG (and Design, “.org” disclaimed)
  • Telnic Limited owns registrations for .TEL (and Designs, “.tel” not disclaimed)

There are numerous implications for viewing a TLD as a trademark.  For companies that do, do they intend to license every second level domain registered in the domain space?  If not, how do they plan to maintain the association of the TLD with a single source?  The .MUSIC decision makes clear that merely placing a “.” in front of a descriptive term is not distinguishing for a TLD directed at goods and services described by the term.  Would applications for .QUARTERNOTE for the same goods and services be registrable?  Is a three-syllable TLD too long to be an effective TLD?

This site appears to be maintaining a list of announced new TLD initiatives.  As I peruse it, I do not see much in the way of creativity.  I think that the most successful new gTLDs will be ones that have at least a dash of creativity and a good marketing plan.  Internet users–both content providers and consumers–will need incentives to break out of the .com paradigm, and descriptive TLDs offer few incentives. The new gTLD initiative may eventually take off, but it will need some more creative offerings to do so.

–Dan Kelly, Attorney

I have blogged numerous times in the past about domain name related issues that are concerns for brand owners:  domaining, typosquatting, and the planned roll-out of new gTLD domains.  This last issue–the expansion of the top-level domain space from a relative handful of top-level domains (like .com, .net, .org, etc.) to a world where it may be possible to put anything to the right of the dot–ostensibly promises to create an explosion in the domain space.  (For the latest on that, see here.)

Except that the Internet is running out of IP (“Internet Protocol”) addresses, which I read about this week at The Fairwinds Blog at DomainNameStrategy.com (linking to this article at The Economist).  Every domain name is just an alias for a numerical address.  But beyond domain names, pretty much every device attached to the Internet has a unique IP address, and these addresses are dished out in large chunks.  There are only (“only!”) 4.29 billion IP addresses, and as of yesterday, February 3, 2011, they have all been allocated by the principal distributor, the Internet Assigned Numbers Authority (IANA).

Fortunately, there are already plans to migrate to a new system called IPv6 (the old system is IPv4), except that the new system is not compatible with the old system, so we all just may have to go back to tin cans connected with strings.  Just kidding.  But there may be difficulties, and this promises to be an important issue for the foreseeable future.

In the meantime, I am thinking about collecting as many of the 4.29 billion IPv4 addresses I can get my hands on to put in a museum.  Let me know if you have any for sale.