Trademark fight over new TLDs continues to brew.
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.