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.
Brad says
This whole process is going to be a bunch of BS. I can tell you that right now.
Brad
M. Menius says
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.
Acro says
gTLD is Pandora’s box from the get-go. It will be a lawyer’s paradise.
John Berryhill says
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.
Patrick Vande Walle says
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.
Constantine Roussos (.MUSIC) says
Thank you Patrick for providing this article with the full story.
I think we need to clarify some things about trademarks and .MUSIC that you and other reporters took out of context. As expressed publically to ICANN here were my statements:
“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 delays of the whole new gTLD process have been very detrimental to us and all the early potential applicants. ICANN did not want to grant them some form of protection and recognition for their early involvement and outreach. We have been traveling the world as .MUSIC and sponsoring music events and music festivals as part of our outreach. We have been developing TLD-based technology for .MUSIC and ICANN has delayed us 3 times.
We have over 1.5 million signatures and across our social media we have over 5 million followers/friends. People in the music industry and ICANN know us as .MUSIC. If you are operating in business and your work is “piggybacked” or “used to confuse and abuse your goodwill” then there is a problem.
The trademark was set up not to earn the top level domain but to protect us from gaming or any illegitimate or abusive behavior conducted by 3rd parties to take advantage of our extensive work. We welcome competition but however we do not welcome gaming and bad business practices. All we asked for is for ICANN to allocate an extra point or so in the community-based scoring for initiatives that have been public, open and have invested money, time and other opportunity costs. If communication outreach is important for ICANN (which it is), we believe it is the least they can do.
There is a difference between protecting your interests and using a trademark to gain an advantage in bad faith. Since we have been conducting business as .MUSIC and performing a pre-launch campaign of outreach and inclusion of the .MUSIC community, it is important to realize that it is worrisome if someone else abuses that goodwill we have created.
I do not agree with people such as the ones that claimed “Music .eu” with a fake trademark in coconut oil. There are instances were trademarks should be used and it is to prevent abuse and gaming or payola.
There is no comparison between .MUSIC trademarks or the ones for .SECURE, .BANK or the ones Minds and Machines applied for. Our intention is not to gain advantage but to protect ourselves. I do not see many new TLD applicants marketing their TLD like us and spending so many resources for in global communication, building music platforms and building a brand with outreach and music community exposure/marketing.
For example, we are currently in Berlin, Germany sponsoring Popkomm music conference and festival. Each delegate will find a .MUSIC brochure in their bags. Isn’t that branding? How do we protect that branding effort from being exploited and our work abused? This is where the issue of legitimacy is important. You do not see other initiatives out there talking to the music community, sponsoring events, supporting artists or showing that they really care.
Using a trademark is certainly a case by case scenario. Just registering a trademark for the mere reason to get a TLD is akin to registering a false trademark to get a domain name such as “music .eu”, “casino .eu” etc. Shell companies, shady business practices and using law to exploit holes in the domain rules. We are transparent and as public as can be. However it does come at a cost. We have to at least protect that cost if abuse or gaming occurs. All we are asking is fair process and preventing the abuse that has been happening in the domain industry for years now. Front-running with a mere trademark with no branding efforts or legitimate business claim is abuse or piggybacking other work. I think there is legitimate concerns because of what has happened in the domain industry historically and all the ICANN delays. We certainly do not want a free pass. We do want fair processing and treatment though. Everyone should at least get that.
Constantine Roussos
.MUSIC
Andrew Allemann says
Constantine,
It sounds like you’re saying that if anyone finds out about new TLDs during ICANN’s outreach period and applies for it, then they’re “gaming they system”
Constantine Roussos (.MUSIC) says
Hey Andrew,
I think if a company wants to invest a few million to do a .MUSIC, they would know about us by now. The ones that do are in hiding because they can not compete in the open and will use other “methods” to gain unfair advantage. You Google any keyword combination that has variations of the words music, dotMusic, dot Music, gtld, TLD, domain etc you will find us by the way. This includes social media (Myspace, Twitter, Facebook). We are everywhere.
The problem is new TLDs should have launched by now based on ICANN repeated timelines. We have waited through 3 failed ICANN launch promises and still waiting. I think the issue of fairness and consideration of our wasted time, money and considerable efforts to market both .MUSIC and ICANN should be at least recognized in the application.
I have suggested a few ways to do it. There is already a point system allocated for community TLDs. ICANN can allocate points for “communication outreach beyond reasonable doubt with documented evidence.” To be consistent with the application: 2 points max for over and beyond, 1 for adequate and zero for nothing.
There is a way to do this. The gaming I am concerned with is payola and behind the scenes scheming to receive “monies to leave.”
There have been instances that some big name people/companies were asked to be paid money to “support” TLDs and then be paid for their “endorsement” after the TLD is awarded. I can not disclose the names but it is happening. There will be instances where some will pay the application fee to extort money from legitimate candidates so they can leave the process. For example, pseudo-applicant pays $185k, then settles “to leave” with legitimate applicant for $50k+. The pseudo applicant gets $135k refund from ICANN. Anything over $50k to be “paid to leave” is clean profit. Paying them to leave is cheaper than going to auction and paying ICANN the money will be the claim.
Let us not be foolish here. If domainers/creative entrepreneurs spent the time to create hundreds of shell companies, fake trademarks in obscure classes just to grab high profile domains, I think they can think of some ways to exploit the ICANN system again. Some TLD launches even implemented the criteria of not allowing trademark applications if the applications were submitted less than a year before sunrise. The reason of adding timing barriers to prevent bad faith fake trademark exploitation was a wise one in some new launches.
I have no issues with competition Andrew. All I am saying is if the ICANN process is abused in a manner that is unfair and inflicts financial harm due to gaming, then there will be a problem. ICANN has yet to address these issues. Applicants that have waited for years have zero protections.
I find this akin to auctions. Finding out about an auction after the auction is done is pointless. New TLDs should have launched already. How is this fair? If you had written assurances 3 times about dates that were suspended what would you do? ICANN is bending over backwards for the trademark community but what about those people such as myself and others that have not only contributed to ICANN with our feedback, working groups and participation, but also helped spread the ICANN word and increase our own competition. Do you know how difficult it is to tell your constituents that you have launch dates 3 times and then each time tell them you do not?
This is all about good faith. ICANN should reflect communication outreach from publicly announced candidates in their scoring system. If you believe communication outreach is important and ICANN and its community does as well, why isn’t this part of the application criteria.
It is an extra step to show legitimacy and seriousness. It is awfully convenient to claim that you were unaware about new TLDs. Do you believe someone that specializes in fashion eg Gucci will want to run a TLD .fashion. One core competency is fashion and the other is domain/technology related.
People who know about TLDs and will apply for them will be domainers, tech companies and brands. People with no expertise in domains or running registries will have a huge learning curve. I have a music, domain and tech background and still trying to grasp ICANN.
There is a lot to discuss on the matter but if ICANN is requiring $185k for an application, it is obvious they are using that high number to deter candidates who are not serious. Put another $300k to set up your registry, then you are looking at $500k to start. Will a fashion person be willing to take upon a new industry (domains) to do .fashion? There is a disconnect that some do not understand. Would a fashion person that specializes in textiles/design be great to run a TLD? Finding out about a TLD and being able to do it are two different things.
Many domainers were wondering why new TLDs might be a flop? It is because opening to the world under the idea that applicants understand domains, registries, registrars and ICANN is a catastrophic proposition.
I think more thought has to be put in regarding the legitimacy of applicants and their business plans to make TLDs a success. But since ICANN is agnostic to business plans in the current system, then we will have a problem.
Correct me if I am wrong here.
Constantine Roussos
.music
Andrew Allemann says
Constantine –
First off, let me be clear that I admire what you’re doing with .music. You’ve invested a lot in it and have taken a great approach.
I also sympathize with you and others who have been strung along in the process. You’ve invested a lot of money with the idea that you would have launched by now. As a businessman, I know that delays like what you’re experiencing can make or break a business. I’ve seen many businesses wiped out merely because of delays outside of their control.
My issue is that the idea behind the new TLDs process is:
1. An application process is created
2. ICANN markets the application availability to the public
3. The public then decides if it wants to apply
In your case, you got involved at step 1. But the idea for most people is to get involved at step 3. There were advantages to getting in at step 1, including being able to influence how the guidebook was created. But there were also costs (such as delays) and there was an understanding that everyone would be on a level playing field at step 3. To give extra points to someone based on what they did before the outreach period even begins seems like playing to “insiders”.
I realize you don’t consider yourself an ICANN insider, but since ICANN hasn’t even marketed the ability to apply for new TLDs yet (other than some early advertisements and press mentions), you really fall into the insider bucket.
So here’s the question going forward. Yes, someone could game the system by getting you to pay them off. But how do you tell if they’re gaming the system or being legit? What if they find out about this opportunity at step 2 and say “hey, let’s create .music”. They pull together some money and apply, realizing there’s some competition but believing they have a good shot at it.
Is that gaming the system? Or is it following the guidelines?
Again, I really appreciate the buzz you’ve created around .music. I hope it all works out for you. Yet I’m also cautious about the appearance of directly rewarding those that got involved at step 1.
Constantine Roussos (.MUSIC) says
Andrew,
You are right. I do not consider myself an insider. There are many reasons why. I have felt a bit excluded in many instances from the policy making or participation in things such as the Business Constituency. I was advised to join then was rejected on the basis of running a registry, which I have not yet. Other initiatives are part of the ICANN Business constituency, so why was I not allowed to join. Same with the Vertical Integration group.
If I was such an insider I would be able to exert enough influence in matters such as Vertical integration. The mere fact that the Business Constituency is rejecting free trade for newcomers is anti-business and anti-trust. But let us not get in the politics now. However, I do think ICANN is going towards the right direction slowly-slowly.
To answer your question, if there is a point allocation system that rewards community based on size that is a clearly dileanated community, then there should be points for outreach and legitimacy. If outreach is important that is which everyone claims it is, especially us. We have sponsored every major music conference and spoken on panels everywhere. We are advertised at events as .MUSIC. We can not stand still and perform vulture like tactics at the last moment and use the “I did not know” excuse. If you can not get away with that excuse in real life, why would you get away with that years after the fact and timeline delays?
My question to you is whether you think ICANN is a marketing company and if that is in its bylaws? Your claims on #2 are wishy-washy things. Do you think people that have no idea about domains will come up with at least $500k to run an entirely new business in something they have no idea about? Domainers and people in the industry know new TLDs are launching but if you are referring to regular people or companies that have no core competencies or understanding of ICANN/domains it becomes quite an interesting and dangerous proposition. A lot of people want ICANN to fail and giving wrong advice unfortunately.
If ICANN exercises this kind of approach you will see a lot of failed new TLDs because they have no business plan and they think its a “cool” idea.
We need to become serious when we are talking about making this a success and have a strong application process that rewards the best applicant and the top business plan, using milestones and prior experience as guidelines. The open web is at stake. I stress the word “open”.
I have no problem with competition and actually would welcome it, but expecting random people or companies coming in at stage 3 a few months before launch is quite an unrealistic proposition for increasing their chances of success. It is a recipe for disaster. It has taken us over 3 years and we are still putting more pieces together and performing further outreach with governments now. A few months or even 6 months or 1 year is not enough. I know it because we are experiencing it
I would hope the applicant guidebook awards the best possible application and not just be a pure money-making thing for ICANN. I have worries that many initiatives will certainly face problems. Look at .mobi. Afilias bought it up. The .asia might be next. And when you talk volume, those numbers were pretty good and their team competent. What happens when core competencies are not weighed in the applicant guidebook? They currently they are not because ICANN does not want to make decisions or choose. This is what worries me about the auction potential and gaming. It is going to happen.
ICANN needs to reflect more things in their application than things you can fake eg Financial statements. Best case scenario and worst case scenario financial statements are just a waste of time and not useful. Questions should be revolved around performance, results-driven and resource-intensive. Which business plan is more likely to succeed? I have yet not seen this type of approach.
If you have ever attending a business plan competition or a pitch session to investors, there are obvious signs which parties the investors gravitate towards: the ones that have a plan, have shown significant support and can get a customer. Most importantly, investors look at the leadership team. The environment changes and a strong leadership team adapts to it. How can we be talking about awarding TLDs when the basics of business 101 are eliminated. It seems as though ICANN wants everyone to have the same application and push things to auction.
This is the real world. If you are late at a meeting or miss an auction, then you face the consequences. When domainers were investing in .com domains in the 90s I never had a credit card. I can’t possibly use the argument that I was never informed or that I was born too late. ICANN can not inform every person on the planet. They are not a marketing company nor is it their role. They have been on BBC, CNN and all the major newspapers. Let us not downplay the press IDNs have received and new TLDs for that matter. There have been advertisements as well. The traditional media has changed. Conversations about new TLDs are happening. I know cause we are involved with them every day.
I think your concept of fairness is idealistic. Do you actually believe people would come up with at least $500k to apply for a new TLD as a hobby or as an experiment without doing any research on competition? There is a reason why others are not coming out and it is because they can not compete in the open and transparent manner. This to me is worrisome. If there are candidates with better business plans and support, then that would be awesome. No complains from me or anyone else on our team.
It is the other ones that I am worried about. This is the real world and that worries me. This is the ICANN world and that worries me. I think there should be mechanisms to prevent gaming and protect initiatives such as mine. Those things will happen I assure you. I certainly do not want .MUSIC served to us in a silver platter. You work for it, you earn it and you show you are the best applicant for the job and for bringing innovation and competition in the space. However again, those prime reasons of launching new TLDs (competition and innovation) are not addressed in the guidebook. The guidebook needs to be aligned with reality and the purpose of launching new TLDs. If the purpose is competition and innovation, the questions are how you can showcase that in the guidebook and how ICANN can measure it in an efficient manner.
See now I am being too idealistic and a wishful thinker 🙂 At least we are pro-active enough to talk to the community and have discussions like this in the open. Hate or love what we do, I do believe being as transparent and open about things is the best way of communication. I know I have never turned down any request to explain what we are doing and why we are doing it, regardless if people think new TLDs will be a flop. I think if done right a lot of value will come out of it. However, sitting on your butt expecting registrars to do all the distribution work is just a “typical” and “non-innovative” approach for a new TLD. Those are my 2 cents on that.
I extend this question to you. Can you profile a perfect applicant for running a TLD? Who would be the best fit and why? Give me a profile of a leadership team and an initiative campaign that you think will do a great job at launching a new TLD.
Also, do you believe someone from a completely different industry would be able to come up with $500k, a sound business plan, understand the dynamics and rules of ICANN and domain industry within a few months? Who would you bet on? This is marketing 101. If you want to market something you need to know who your target audience is. Do you think saying your audience is 6 billion people and that anyone can run a TLD is a great approach? Again, who should ICANN market to? Would love to hear what people think about that. Isn’t it so idealistic to say “everyone” ? The communication outreach to me is important but it should target the audience that can deliver results and make this a success. I wish all new TLDs work out and I really do want the launch to be successful. How do we accomplish that though or at least maximize the end result?
Thanks for the response,
Constantine Roussos
.music