.Music Initiative Says It Will Use Trademarks to Block Competitors
Wednesday, July 21st, 2010
Trademark fight over new TLDs continues to brew.
I’ve written numerous times about new TLD applicants filing trademark applications for TLDs in an attempt to get a leg up on getting approval for their TLD application and fighting off competitors.
In general, you can’t trademark a top level domain in the U.S. But other countries allow it. And Constantine Roussos, who wants to apply for .music, says he will use his 20 trademarks to block potential competitors. In a comment on ICANN’s web site, Roussos writes:
Rest assured that if we, as .MUSIC are faced with the possibility of being gamed and abused in a manner that we find illegal, we will use our trademarks and other means necessary to do what we have to do to protect ourselves and our respective community. While trademarks alone should not be the sole determinant of earning a TLD, it is the only means we have of protection, since ICANN has not incorporated any mechanisms to prevent TLD applicant abuse, gaming and unfair piggybacking from other initiatives.
Based on Roussos’ previous and current comments about wanting extra credit for participating in the new TLD process for so long, this seems to indicate that “gaming” would merely be someone else trying to apply for .music.
Minds + Machines is leading the charge to have trademarks not be considered in the application process. Interestingly, the company’s parent Top Level Domain Holdings has filed numerous trademarks for new TLDs, but says it is doing so for defensive purposes. When one trademark registrant for .eco threatened it, the company filed for cancellation of the registrant’s mark, stating that a TLD can’t be trademarked, even though it has several pending.
ICANN doesn’t control international trademark law. What ICANN can do is not award extra points for trademarks. In fact, ICANN could penalize companies that file trademarks for a new TLD prior to applying (or at any time thereafter) in an effort to discourage the practice.
One of the rules for all applicants should be that they don’t try to file a trademark on a TLD after being awarded a TLD. After all, ICANN can revoke the registry contract in the future for violations, and they could face lawsuits from a former registry that claims trademark rights.
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This whole process is going to be a bunch of BS. I can tell you that right now.
Brad
I think there is an inherent problem in catering to someone who thinks they have trademark rights to something that does not even exist yet. Awarding “points” or special consideration is a complicated mess.
If ICANN allow preferential treatment based on someone’s early expressed interest in a tld, then the process of ultimately awarding that tld will be flawed, incite claims of favoritism, and invite lawsuits galore. Providing “favored status” automatically discriminates unfairly against other interested parties, and that in itself will bring a firestorm.
Not to mention it will take ICANN backwards, and undermine their ability to re-establish themselves as a credible and impartial organization that no longer do dishonest backroom deals.
Why does early interest qualify for special privileges? All parties need to be subject to the exact same eligibility criteria … or else you’ve got crap for a process. Aren’t we sick of this yet.
gTLD is Pandora’s box from the get-go. It will be a lawyer’s paradise.
Meanwhile, taking a cue from the dot-Poor-Sport folks, the dot-Arts Initiative, planning to apply for .Arts, has warned ICANN that allowing anyone else to apply for a specific art, such as .music, .movies, .sculpture, would violate their indisputable legal right to whatever it is they want.
You forgot to quote the most important part of Roussos’ message: “That said, ICANN offers no protections against the gaming of TLD applicants who have been publicly announced initiatives and have done all the leg work
and communication outreach campaigns.
Given the zero protections from gaming, TLD trademarks for publicly announced TLDs with years of exposure, lobbying, participation and business activities is warranted and is in the public interest if used legitimately.”
The length and delay of the whole new gTLD process have been very detrimental to the early potential applicants. ICANN did not want to grant them some form of protection and recognition for their early involvement. It makes sense they try to protect themselves as best as they can against latecomers with big pockets.