TLDH gets a victory in fight over .eco.
The latest salvo in the fight for the .eco top level domain name has been successfully defended by Top Level Domain Holdings.
A World Intellectual Property Organization panel denied planet.ECO, LLC’s Legal Rights Objection against TLDH for .eco.
planet.ECO has a U.S. trademark for .eco, which was granted because the applicant shielded the fact that it was to be used for a top level domain name.
Panelist Luca Barbero determined that planet.ECO’s trademark was obtained primarily for getting a leg up in the new top level domain name application process, and thus did not carry favorable weight in the objection.
planet.ECO and its predecessor in interest have been fighting Top Level Domain Holdings and another applicant, Big Room, for years over .eco. It has sent cease and desist letters, requested the removal of a Facebook page and filed lawsuits in what the panel noted was “an apparent attempt to impede concurring applications for the same Top Level Domain.” TLDH, for its part, tried to get planet.ECO’s trademark canceled.
Is this the end of the planet.ECO’s legal battle over .eco? Will it now decide to fight fair-and-square within the rules of the applicant guidebook?
On the one hand, history says no. On the other hand, it might be tired of fighting a years long battle.
Antony Van Couvering, CEO of Top Level Domain Holdings, issued this statement to Domain Name Wire in response to the objection decision:
The dismissal of the Planet Dot Eco Legal Rights Objection against our .eco application was expected, but it’s gratifying nonetheless. In finding that the Planet Dot Eco’s trademark was acquired for the purpose of what is commonly known as front-running, meaning a trademark acquired specifically to game the ICANN application process, the panelist in our case noted that “the Objector’s conduct in this regard is questionable…. ” It’s comforting that (so far) WIPO panelists have consistently ruled against trademark front-runners, in contrast to the wildly inconsistent determinations coming out of the string confusion similarity panels. All of the objections filed against our applications are from other applicants, wasting our time and money and hurting the new gTLD program generally. Objectors who are relying on trademarks that were acquired specifically to knock other applicants out of the application process should realize that their strategy isn’t working, withdraw their objections, and work constructively with competing applicants to find a solution.
THE .ECO(R) COMPANY - Proudly Made In America says
UPDATE: planet.ECO WINS .ECO® and gets victory in 10yr fight over .eco.
On October 17, 2017 The United States Patent and Trademark Office determined the decision made by WIPO Panelist Luca Barbero did “not impact the validity of” the .ECO® registration owned by planet.ECO LLC. http://tsdr.uspto.gov/documentviewer?caseId=sn87327563&docId=SUL20171017110016#docIndex=3&page=1
Subsequently, On May 7, 2019 Big Room Inc’s December 15, 2016 “.eco” trademark case against planet.ECO LLC was Dismissed with Prejudice. http://ttabvue.uspto.gov/ttabvue/v?pno=91231750&pty=OPP&eno=57
According to a Department of Commerce representative, the agency did not award Big Room Inc. the rights to operate the .eco Registry.
Since 2010 planet.ECO has prevailed in 6 preceding brought forth by Big Room and TLDH.
TLDH and 2 other companies, competing for “.eco” won, were given approx. 20% of all gTLDs designated.
Part of TLDH’s team was:
Peter Dengate Thrush – ICANN Chairman of the Board
Michael Salazar – ICANN New gTLD Program Director.
Salazar evaluated and hired all of the third party subcontractors who reviewed gTLD applications/contracts.
WIPO was a third party subcontractor.
ICANN was the Government Contractor that entered into contract with the United States Government to perform IANA Functions, per SA1301-12-CN-0035, which included/incorporated the performance of the New gTLD Program.
The link to the Contract is here: https://www.ntia.doc.gov/files/ntia/publications/sf_26_pg_1-2-final_award_and_sacs.pdf and some of its incorporations are here:
Therefore Mr. Andrew Allemann, keep pretending something else significant happened, while others dog whistle “Kunta Kinte” and try to intimidate our US based Small Business in Search Engine Result Pages..
The fact still remain the same, WE NEVER HAD A FAIR OPPORTUNITY TO COMPETE for the .eco gTLD, despite owning the “.ECO” trademark, which we refused to license to TLDH and Big Room Inc., and passing the gTLD evaluation.
In sum, we paid a handsome $185,000 gTLD application fee to participate in a Federal Program, who’s Government Contractor gave the “.eco” designation to an executive it hired that helped create the policies and procedures of the program it used for its so-called award.
United States still operates under Rule of Law.
On Oct. 17, 2017 The United States Patent and Trademark Office determined the Aug 26, 2013 – WIPO Panelist Luca Barbero “decision does not impact the validity of the cited registration” owned by planet.ECO LLC. – http://tsdr.uspto.gov/documentviewer?caseId=sn87327563&docId=SUL20171017110016#docIndex=3&page=1
Moreover, on Sep. 04, 2019 The United States Patent and Trademark Office determined the following .ECO registered marks are all owned by planet.ECO LLC –
Registration No. 3716170 is .ECO in standard-character form for “Design, creation, hosting and maintenance of internet sites for third parties; Hosting of digital content on the Internet; Providing specific information as requested by customers via the Internet, in Class 42.
Registration No. 5813887 is .ECO and design for “Computerized database management,” in Class 35.
Registration No. 5851826 is .ECO in standard-character form for “Advertisement for others on the Internet; advertising and marketing services, namely, promoting the goods and services of others; compilation of advertisements for use as web pages on the Internet; providing and rental of advertising space on the Internet,” in Class 35.
Accordingly, the USPTO rejected Big Room Inc’s application to perform Registry Operator Services as .ECO. – http://tsdr.uspto.gov/documentviewer?caseId=sn87327563&docId=OOA20190904152931#docIndex=0&page=1
United States operates under Rule of Law.