Is ‘Tweet’ fair game?

In May the domain name Tweet.me sold for $11,505 at Sedo. At the time, I wrote:

I’m a bit concerned about all of the services popping up that use variants of Twitter and Tweet in their names: could Twitter ever come after them for trademark infringement?

Some developers referred me to Twitter’s apparent company line on this issue:

There are certainly many applications out there that include “Twitter” as part of their name, but we prefer that you not do so. “Twit”, “Tweet”, etc. are all fine.

But TechCrunch is reporting that Twitter may be changing its mind. Robin Wauters explains that a third party developer is getting pushback from Twitter over his design and branding. Twitter stops short of saying that using ‘tweet’ is unacceptable, but certainly gives itself wiggle room to do so in the future.

Although Twitter wants its ecosystem to grow, developers should certainly be cautious about using any of its trademarks in their domain names. Social networking sites such as Facebook are pursuing domains that include Facebook in them, even if the owner plans to develop a Facebook-based site.

Westerdal files counterclaims against Thought Convergence in legal battle.

Name Intelligence founder Jay Westerdal has filed a counterclaim (pdf) against Thought Convergence, Inc. (TCI) in a legal battle over TCI’s acquisition of his company.

In the counterclaim document filed with the California Central District Court, Westerdal claims there were “Myriad of deliberate misrepresentations made by TCI during the negotiation process and execution of the agreement.” Specifically, Westerdal alleges:

-”TCI knowingly misrepresented the stability of its business, its domain parking practices, its reliance on a very small number of customers for the majority of its revenue stream, its revenue loss free fall, its lack of debt, and its use of the banned industry practice of arbitrage”. Westerdal further claims that arbitrage represented a large portion of TCI’s revenues.

-TCI estimated its company value at $200M, which Westerdal claims was “grossly inflated”. That would have valued the stock payments to Name Intelligence’s owners at $32M, according to the documents.

-TCI discussed negotiating an IPO that would include Name Intelligence’s assets.

-There were “significant material adverse changes” to the company between December 31, 2006 and when the agreement was executed on May 2, 2008, contrary to representations made by TCI.

-There were loans made to TCI prior to execution of agreement, which were not disclosed.

-TCI failed to pay Westerdal his $120k annual salary

Furthermore, Westerdal claims he “performed his obligations of employment to NIL under the Offer Letter, or was excused from doing so because of NIL’s breach of the Offer Letter.”

Thought Convergence and Westerdal have agreed to drop DOTMOVIE from the lawsuit (pdf), as Westerdal says it’s not a business entity and has no employees.

Westerdal and Name Intelligence Inc. (a holding company owned by Westerdal) also filed a response (pdf) to TCI’s claims, basically deny all of the negative allegations.

Bank tries to get domain registered years before it gets trademark.

Success Bank, an Iowa bank, should stick to the banking business.

The company failed at arbitration to get the domain name SuccessBank.com from its owner, who registered the domain name in 2003. The bank changed its name to Success Bank only in 2007, at which point it filed a trademark for the term. The trademark was granted in 2008. Success Bank uses the inferior domain SuccessBank.Net.

If you register a domain before another company obtains a trademark, it is impossible for the trademark holder to prove that the domain was “registered and used in bad faith”, as required under UDRP.

In his typical wit, the respondent’s attorney John Berryhill noted to the arbitration panel:

The Complainant’s proposition here is that the Respondent has such powerful psychic ability as to be able to predict, in October 2003, that the Davis County Savings Bank of Iowa would change its name to “Success Bank” in December 2007. The Respondent denies such psychic powers.

The panel found that the domain wasn’t registered and used in bad faith, and that Success Bank didn’t establish a prima facie case that the respondent lacked rights or legitimate interests in the domain name.

For some reason the panel didn’t address the issue of reverse domain name hijacking. But its decision does note that Success Bank’s argument in the case was extreme:

The Complainant relies on the argument that once a complainant shows good title in a mark, the burden shifts to Respondent to defend use and bad faith. Complainant seeks to stretch that argument to the extreme. While Complainant has some rights in the SUCCESS BANK mark, those rights are years junior to the rights of Respondent due to registration of the domain. To hold for Complainant would be to say that one could peruse the lightly used or parked domains, initiate a trademark registration application years after the a disputed domain name was registered and then claim UDRP rights in the domain under the first element of the UDRP.

Filings unlikely to give a leg up in application process.

Companies are filing with the United States Patent and Trademark Office for service marks related to new TLDs. For example, Top Level Domain Holdings, Ltd (AIM: TLDH) has filed trademarks for .movie, .kids, .books, .buy, .baby, .poker, .golf, and .casino. (Top Level Domain Holdings is an investor in new TLD consulting firm Mind + Machines and dotNYC, LLC.)

Other examples include .eco, a trademark filed by Colored Planet of Connecticut that appears close to being approved. A Canadian company has also filed for the .eco mark. Neither of the applicants appear to be the group endorsed by Al Gore.

Given that applications aren’t being accepted for new top level domain names yet, you may wonder how anyone could file a trademark for them. Companies have frequently tried such filings to stake a claim to a TLD before it was launched. Companies have filed for everything from .radio to .god to .gay. Many of these were filed in the late 90s and almost all were rejected.

That few of these filings have been approved should not come as a surprise, says attorney John Berryhill. He points to section 1215.02(d) of Trademark Manual of Examining Procedure, which states that top level domain names can’t be trademarked for registry services:

If a mark is composed solely of a TLD for “domain name registry services” (e.g., the services of registering .com domain names), registration should be refused under Trademark Act 1, 2, 3 and 45, 15 U.S.C. 1051, 1052, 1053 and 1127, on the ground that the TLD would not be perceived as a mark. The examining attorney should include evidence from the LEXIS database, the Internet, or other sources to show that the proposed mark is currently used as a TLD or is under consideration as a new TLD.

This may explain why some trademark applicants, including one applicant for .eco, use different classes of service such as “Providing specific information as requested by customers via the Internet” to try to slip by the examiner.

An existing registry, mTLD, attempted to trademark .mobi a couple years ago. The organization faced push back from the internet community, especially since mTLD is merely a steward for the TLD and doesn’t actually own it. This issue was also addressed in 2000 when Image Online Design, Inc. claimed it should be the only group to be awarded .web because of trademark rights. It failed.

So why would a company try to trademark a TLD it doesn’t (yet) operate? There are a few potential reasons. It may use the trademark in an attempt to get a leg up with ICANN, either when applying for a TLD or if it is ever assigned to a different registry. It may also use it to lodge a claim at another company that applies for a TLD.

Or it could be for defensive purposes, as TLDH Chief Operating Officer Antony Van Couvering claims.

“TLDH is applying for trademarks for “dot name” in areas we, or our clients, might want to apply for a top-level domain,” wrote Van Couvering in an e-mail to Domain Name Wire. “We don’t actually believe that they are necessary or even helpful, but we want to avoid having to deal with someone else’s trademark-based claim in the event that we decide to apply for one of these.”

John Berryhill has written about a similar situation for second level domains, when companies tried to trademark single letter .com domain names. In an article published on his web site, Berryhill predicted that this sort of “pre-emptive trademarking” would occur for new TLDs:

This type of gamesmanship should be penalized during the allocation of single character domain names. Rewarding this behavior will have consequences that also reach into the assignment of new top-level domains, as the identical sort of game is being played in that arena as well, which is a story for another day.

Perhaps that day has come.

An open letter to the new CEO of ICANN.

Congratulations, Rod. You’ll be the new CEO of ICANN.

You have your work cut out for you. Rightly or wrongly, ICANN is a punching bag for many grievances. As Michael Palage pointed out at the last ICANN meeting, ICANN will likely be subject to many lawsuits over the next couple years. Here are a few suggestions as you prepare to take over the reins.

1. Remember that domain owners ultimately fund your organization. Registries and registrars merely funnel domain owners’ money to ICANN.

2. Transparency requires understanding. Merely publishing information does not create transparency. Ironically, publishing too much disparate information can have a negative effect. People need to understand how ICANN works and how decisions are made. It’s ICANN’s job to educate people and operate in a simple manner.

3. Be visible with your ultimate constituents — domain owners. ICANN typically sends one representative to domain industry conferences. It’s great having him there, but I’d like to see more participation in the future.

4. Don’t be afraid to stop projects that don’t make sense. Prior investments are sunk costs. If it doesn’t make sense to proceed with an initiative, then cut it.

5. Registry competition means putting registry contracts out to open bidding.

6. Remember your core mission. Mission creep could spell ICANN’s doom.

7. Please respond to legitimate criticism, and not on the defensive. People want to know their voice is being heard.