Guy who got an early trademark for .eco sends a nastygram to registrars and Afilias.
One of the core tenants of the new top level domain name application process was that being the first to announce your interest in a particular domain (or even marketing it, for that matter) didn’t give you rights to the domain. You had to apply like everyone else.
That didn’t stop a lot of people from “trademark frontrunning.” I use this term to refer to people who tried to get trademarks for top level domain names before they applied.
One such applicant was Moses Boone of Colored Planet. He tried to get a trademark for .Eco.
In fact, he was somewhat successful.
The U.S. Patent and Trademark Office doesn’t issue trademarks for top level domain names. But Boone was able to get a trademark for .eco 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.”
He used this trademark to unsuccessfully object to a rival applicant’s .eco bid.
.Eco officially launched in general availability last month and there are about 500 .eco domain names in the zone file.
Like a couple of other applicants that are throwing good money (and time) after bad, Boone is still trying to stir up the hornet’s nest about his trademark.
Boone sent an oddly-worded email to some domain name registrars as well as backend registry provider Afilias this week demanding that they “Cease and Desist in any further use of the .ECO® trademark in association with the sale, marketing, distribution, promotion or other identification of your products, or services.”
Boone may have a bone to pick with ICANN over how .eco was ultimately awarded as a community application, but the trademark claim seems silly.
Eco has been a headache since 2014, all those early registrations were cancelled by Donuts, and others, as the keyword was off limits.
The GTLD program is absolutely dead, there is not much happening in the way of sales, or an aftermarket. Not saying that to be negative, it is just the truth.
UPDATE: planet.ECO WINS .ECO® and gets victory in 10 year fight over .eco.
As Allemann’s dated articles appears at the top of .ECO Google news continue to mis-inform the public, we provide the truth…
On May 7, 2019 after wasting another 2 more years of the U.S. government’s precious time and resources, Big Room Inc’s December 15, 2016 “.eco” trademark case against planet .ECO® LLC was rejected. In this 5th attempt Big Room Inc. was finally Dismissed with Prejudice by the United States Trademark Trial and Appeal Board. http://ttabvue.uspto.gov/ttabvue/v?pno=91231750&pty=OPP&eno=57.
After Big Room Inc’s final dismissal – planet .ECO® was issued 2 new .ECO trademarks from the United States Patent and Trademark Office (USPTO) in addition to its incontestable trademark covering .ECO Internet Domain Name Services, registered since 2009.
On July 23, 2019 the USPTO issued .ECO Registration No. 5813887 – for “Computerized database management,” in Class 35
On September 3, 2019 the USPTO also issued .ECO Registration No. 5851826 – for “advertising and marketing services…” in Class 35.
On September 4, 2019 the USPTO also rejected Big Room Inc’s application to perform .ECO Registry Operator Services – http://tsdr.uspto.gov/documentviewer?caseId=sn87327563&docId=OOA20190904152931#docIndex=0&page=1.
According to a Department of Commerce representative, the agency did not award Big Room Inc. rights to operate the .eco Registry.
Since 2010 planet .ECO® has prevailed in all 6 Federal Trademark proceedings brought forth by Big Room and TLDH.
is he even using the trademark? I see many sites the do design and hosting that are called eco that are on cc extensions
I don’t have a dog in this fight but it seems to me that you do Andrew Allemann!! Why would you write such a scathing article about this guy Boone if you work for domainnamewire.com? The way this is written, it clearly looks to me that you or someone close to you has a financial interest in this battle. I thought I was joining this site to stay informed on the latest news in the industry but instead I get e-mail updates of the writers of articles on this site not only giving their opinions (which is great) but in this case doing their very best to sway the readers on here to follow your lead, why? Since the last time I commented on here I’ve read lots on this issue because I wanted to understand what was really happening with this .ECO domain name. The law is VERY CLEAR, this is the UNITED STATES of AMERICA and despite how you personally feel NO ONE can just take someone else’s registered trademark!! It is totally illegal. This guy Boone OWNS the .ECO trademark and from what I’ve read the company selling domain names now has been turned down by the USPTO multiple times so what’s your problem? This really sounds very personal on your part!! I used NIKE’s registered trademark as a reference on my last post, how can ANYONE apply for a TLD using the NIKE registered trademark without their written consent?? It doesn’t matter how anyone feels about it, it’s THE LAW and you can’t do it either!! As far as having the TLD abilities, I have yet to read where ICANN gave it to ANY COMPANY so how is anyone start selling .ECO domain names? The bottom line is they can’t just take the man’s Trademark without his consent and Andrew Allemann, you should really keep your personal opinions out of this issue and stick to writing about what’s new and great in the industry because your fangs for this Boone guy are really showing!! You guys should know by now, ICANN has NO POWER over the USPTO and they are the ULTIMATE AUTHORITY and they have spoken about this many times about the .ECO trademark.
Big Room Inc., founded by an ICANN Executive co-ceated the community priority evaluation, used priveled info to apply for .ECO and was not awarded .ECO by any authorized entity.
Big Room Inc. failed 4 times to obtain a US .ECO trademark.
The million $ question, who authorized the delegation and root zone entry of .ECO?
Just because you own a trademark does not mean you have the power to enforce that trademark, to determine how defensible it is, you have to defend it in court.
Not does having a trademark in the USA mean the rest of the world has to bend over. For that, you need to register global.
So Pierre and .eco(R) are obviously the same person.
It sucks when you can kick and screen and nobody really cares.
No Jim, we are not the same people. Are you actually Nick or Ron?
This is not a court of law to deal or care about the Federal Violations of law anyway.
We are simply not going to let any of you or others steal our .eco(r) trademark for your greater good or economic interest.
.eco(r) is in business and offers services at http://www.ECOMadeInAmerica.com.
And… can someone please let us know who authorized Big Room Inc to sell .ECO?
We still don’t understand how a Community Priority co-created by Big Room Inc could usurp trademark law.
You don’t have a trademark covering domain names.
What a ignorant statement!!
It’s the truth, spend 6 figures, and let a court of law tell you the same thing.
Big Room Inc., is committing Fraud! Fraud in the name of “the community” and “the greater good”. No one has asked anyone to stop doing anything considered lawful.
Here is a copy of the 2017-05-08 Cease and Desist we issued to all registrars listed on home.eco. You be the judge open-minded observers:
Cease and Desist sent on May 8, 2017:
“.ECO”, coined by Moses Boone, co-founder of planet.ECO LLC, in 2005 is the exclusively registered trademark (U.S. Reg. No. 3716170) of our business, planet.ECO LLC (hereinafter, “.ECO® “). The trademark .ECO® is used in conjunction with “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.”, since April, 2008.
Members of the Environmental Community and Big Room Inc., both co-founded by Jacob Malthouse, began applying for the .ECO TLD since Jan. 2007.Malthouse claimed the .ECO award (the ploy) could not have been successful without the support of the with the support of the Environmental Community. We believe most of the Environmental Community and registrars were unlikely unaware of Big Room’s sinister ploy, unfair competitive advantages and Federal violations used to obtain insertion into the authority root zone file to unlawfully monetize .ECO.
Years of continuous unfair competitive advantages eventually resulted in the unlawful award delegation of “.ECO” to the Environmental Community. A properly warranted DoC agency personnel with exclusive award authority did not award delegation of .ECO, per Mr. Kline United States Department of Commerce Representative / Counsel. Prior to the unlawful delegation in August 2016 we submitted the attached letter to the Government. MOTION TO DISMISS IN TTAB ( https://tsdr.uspto.gov/caseviewer/pdf?caseId=77452991&docIndex=13&searchprefix=sn#docIndex=13) that further explains the dubious activities of what appears to be Big Room Inc. and its Environmental Community attempting to Cash in on Climate Change.
Further note that the U.S. Patent Trademark Office has firmly denied all 4 of Big Room’s Applications for .ECO, including a March 1, 2017( LINKS: USPTO OFFICE ACTION #87327563 ( https://tsdr.uspto.gov/documentviewer?caseId=sn87327563&docId=OOA20170301165412#docIndex=0&page=1) ; USPTO OFFICE ACTION #77646029 (https://tsdr.uspto.gov/documentviewer?caseId=sn77646029&docId=NOA20120717223028#docIndex=2&page=1) ; USPTO OFFICE ACTION #77523015( https://tsdr.uspto.gov/documentviewer?caseId=sn77523015&docId=OOA20091207101341#docIndex=9&page=1); USPTO OFFICE ACTION #77523010 ( https://tsdr.uspto.gov/documentviewer?caseId=sn77523010&docId=OOA20091207100628#docIndex=9&page=1).
Prior to this, in March 2012 .ECO® filed in California Federal Court, against Big Room Inc., which included, FEDERAL TRADEMARK INFRINGEMENT 15 U.S. Code § 1114 ; FALSE DESIGNATION OF ORIGIN AND FALSE ADVERTISING 15 U.S. Code §1125 ; COUNTERFEITING 15 U.S. Code §1114. Big Room Inc. with an office in New Haven, CT. lied to court about its incorporation and the location of its office and practice. Big Room Inc’s hand are unclean and so are those that have knowingly supported its dubious and sinister activities all to cause harm our company.
We are considering our options as there remains unfinished business with Big Room Inc. Due to the aforementioned concerns of Federal Violations, unauthorized use of our Federally registered trademark and potential infringement, we respectfully request that you Cease and Desist in any further use of the .ECO® trademark in association with the sale, marketing, distribution, promotion or other identification of your products, or services.
This letter is sent without prejudice to.ECO®’s rights and claims, all of which are expressly reserved. Please respond by email or letter indicating your intention to Cease and Desist the use of the .ECO® trademark, or any confusingly similar .ECO® trademarks, by May 22, 2017.
/ Moses Boone/ Signature
“Prior to this, in March 2012 .ECO® filed in California Federal Court, against Big Room Inc….”
…which you later voluntarily dismissed after your lawyer petitioned the court to withdraw because you weren’t paying him.
That and 99 cents will get you a value menu item at McDonalds.
Next?
Well Jim, you are incorrect in your assumption, I live over 1000 miles away from Connecticut and only want to purchase a .ECO domain name. I don’t give a flying fornication about either one of them, I just hate bullies who try to take things from their rightful owners! Before I pony up my hard earned cash I’d like to find out the truth in this matter so I don’t spend it twice. I don’t care who wins or loses, I just want a .ECO domain name.
GRRRRRRR. I’m so angry too GRRRRRRR. I get so mad when companies I have no association with screw over other companies that I have no association too, GRRRRRRR. It’s just normal for people soooo mad over Other people’s trademarks that I have no association with. GRRRRR. That is completely normal. I am just so angry about these wealthly people I never met not getting what they want. GRRRRR. MAKE ME SO MAD. GRRRRR
And no I have nothing to do with .eco, I hope .eco, and all of the new gtlds burn!
So Planet Eco has lost a UDRP they filed and a lawsuit and still think they are in the right. And that’s all I have seen in the comments here.
But the most important part is ICANN did not give you the .eco domain. You lost! Should their have been an auction, I have no idea if there even was. But I do know, .eco is not managed by Planet.ECO, LLC. And possession is 9/10 of the law.
Jim,
We don’t get paid to teach, however I will share this term with you :
“DELEGATION”
You don’t have a clue, or maybe you are just playing ignorant about the situation.
Big Room Inc is committing Fraud with the help of many others that are part of its bully team. .
.ECO(R) is simply a US based Small Business that has been treated differently and punished for applying with a trademark and not part of ICANN’s Board or Executive team that applied for and was delegated the lion’s share of TLDs.
It’s no wonder Big Room Inc. was able to cheat and start applying for .ECO in 2007, while its co-founder Jacob Malthouse worked as an executive for ICANN. Big Room Inc had a 5 year head start.
Again this is not a court room so who cares.
You don’t get paid to teach?
Well, that explains why you don’t pay your attorneys to represent you in court:
“Repeated requests from Counsel, for payment of agreed and earned fees and advanced expenses, have been ignored by Plaintiff. (Rodenbaugh Decl., ¶ 1,4-5.) This violates the written retention agreement between Counsel and Plaintiff. (Id.) Therefore, Counsel hereby requests leave to withdraw as counsel in this matter.”
So, how much did you stiff Mike Rodenbaugh for?
Most Recent Update:
http://www.domainmondo.com/2017/11/news-review-incompetent-lawyers-domain.html
So what happened in your lawsuit and UDRP complaint? Let me teach you a word: LOSER!
But let me teach you something which is happening a lot with these gtlds. .eco has 500 domains in the zone file. Wait 18 months and offer them $50k and they will probably accept your offer. This is called: WINNING!
So instead of playing the role of the loser, sit back and wait and be a winner!
No Jim –
I will not share our plans with you but this may help you understand Delegation and Redelegation. Best!
C.2.9.2d Delegation and Redelegation of a Generic Top Level Domain (gTLD) — The Contractor shall verify that all requests related to the delegation and redelegation of gTLDs are consistent with the procedures developed by ICANN. In making a delegation or redelegation recommendation, the Contractor must provide documentation verifying that ICANN followed its own policy framework including specific documentation demonstrating how the process provided the opportunity for input from relevant stakeholders and was supportive of the global public interest. The Contractor shall submit its recommendations to the COR via a Delegation and Redelegation Report.
Obviously according to ICANN Big Room is the winner. To quote their website.
On 08 July 2016, ICANN and Big Room Inc., entered into a Registry Agreement under which Big Room Inc., operates the .eco top-level domain.
Since it doesn’t have your companies name on it, I don’t think anything you say really matters, just that you are being a sore loser.
Maybe you should go for .ecosucks next time.
Are you saying ICANN had authority to Delegate Big Room Inc?
You didn’t win the .eco gtld, you lost because of the IRP or whatever the community wanted. The “community” didn’t want what you were offering.
ICANN had the authority to let Big Room, Inc control the .eco gtld. They also had the ability to give it to one of the other 3 companies like yourself or send it to an auction. But they gave it to Big Room, Inc.
They had the right to do that. They had a lot of big eco friendly backers and I guess you didn’t.
You should put your big boy pants on and just call it a day.
Arbitrary and Capricious – Let’s break it down:
4 companies competed for .eco. Our small business paid the hefty $185,000 application evaluation fee and believed we were competing against the 3 companies. We later discovered the 3 companies were comprised of board members and executives from ICANN that helped create the New gTLD Program. The 3 companies had unfair competitive advantages and collectively won nearly or more than 20% of all delegated TLDs, at least 224 TLDs, which included .eco.
We .ECO(R) passed the .ECO gTLD evaluation and should have been recommended by the contractor to the DoC COR for Delegation. Instead, we were treated differently and the Canadian Company Big Room Inc., co-founded by Jacob Malthouse an ICANN insider, since 2007, was able to co-create a community priority mechanism to cheat and steal .ECO. They had a 5 years head start. CRIMINAL…
In regards to the registry agreement with Big Room, it in part reads:
DELEGATION AND OPERATION
OF TOP–LEVEL DOMAIN; REPRESENTATIONS AND WARRANTIES
1.1 Domain and Designation. The Top-Level Domain to which this Agreement
applies is .ECO (the “TLD”). Upon the Effective Date and until the earlier of the expiration of the Term (as defined in Section 4.1) or the termination of this Agreement pursuant to Article 4, ICANN designates Registry Operator as the registry operator for the TLD, subject to the requirements and necessary approvals for delegation of the TLD and entry into the
root-zone.
Notice it reads “subject to the requirements and necessary approvals for delegation of the TLD and entry into the root-zone.”
Guess who had exclusive approval authority?
The million $ question remains – Who actually authorized the delegation of .ECO to Big Room Inc or was it ever even delegated? The US Government, via Mr. Kline (DoC Representative / Counsel) stated it did not do so. As aforementioned, only the US Government had the explicit approval authority to award delegation and grant the .ECO trademark (US).
By the way, since 2008 Big Room Inc. failed 4 times in applying for a .ECO due to our trademark and 3 times trying to cancel our trademark.
Companies like Big Room Inc. are one of the reason people consider Climate Change to be a Hoax that others ploy to cash in on. Big Room Inc., you and the collusion of bully’s are harming our company. How can anyone trust a company involved in all of this scandal?
Who’s the LOSER?
Climate Change isn’t a hoax! What is a hoax is how climate change happens. And that you and your little .eco trademark think you can change the climate. You can’t.
Think of all of the electricity that has been used just with you responding to somebody calling you a loser. All of the CO2 that you are breathing out because you think you are right, when actually according to ICANN, UDRP, and the US Legal system you are wrong.
And I can’t believe you brought up the word bully! I really feel sorry for you. You sent a letter to all of the domain registrars “bullying” them to stop using .eco domains which you aren’t even the registry for. What a double standard.
I think I am going to take a ride in my 1967 Mustang that still uses Regular Leaded gas and do some donuts and then replace all of my LED lights with regular old fashion ones. Climate Change is happening, might as well enjoy it.
The obvious issue the trademark holder has is that the Internet is global, not just in the United States. He would have a stronger case if he has the same mark registered with the EU, etc..
The name Nike, is registered in every major country in the world as a principle mark.
Even if he was able to have some jurisdiction, in the U.S., he wouldn’t have any jurisdiction to take down a .eco Website owned and operated outside of the U.S..
Unfortunately, he’s waisting his time and money.
Umm, .ECO is Made in America, the most powerful country that has a very long reach.
There is no reason for the public to be harmed by the action of those with unclean hands.
The .ECO gTLD scandal is occurring on this soil.
Thank you for your free legal opinion. We disagree.
“The .ECO gTLD scandal is occurring on this soil.”
Hey, while you are waving the flag and talking about the law etc., are you going to answer my question about how much you owe Mike Rodenbaugh, and when you are going to pay him?
Skipping out on your bills might make you president of this country, but you’re still a deadbeat.
Mr. Berryhill are you representing Mike or just here to help change the subject regarding COI and trademark infringement.
Should we send the money to Mike or to directly to you?
Ah, Andrew, me… everyone here is in on the big conspiracy against you.
I can read a court docket, deadbeat. The last time you brought a lawsuit, you hired Mike, who is a friend of mine and not a client, and then you stiffed him on the bill. Unlike you, who has popped in here like a demon summoned by mention of his name, everyone else here understands that Mike is a capable intellectual property and domain issues lawyer who certainly needs no help from me.
He had to petition the court for dismissal from the case on the grounds that you are a deadbeat who violated your written contract with him.
You are very fond about going on about laws you clearly don’t understand, but when the law applies to you – i.e. PAYING WHAT YOU OWE – it seems to be quite a different story.
Your status as a deadbeat who stiffed his lawyer is a matter of public record in the case you mentioned above, which is the only reason I was curious enough to look at the docket.
Like me, Mike is a sole practitioner who depends on being able to bill his time and pay his bills. It is particularly galling when clients behave as you did, because you chewed through a lot of his time, and left him high and dry. It’s infuriating, because the effort required to go after deadbeats like you requires more of a lawyer’s only commodity – time.
But you have quite the nerve to behave as you did to him, and then lecture others on the law from some sort of pretended moral high ground.
Deadbeat.
Your lawyer babble is just that.
Since I am not a lawyer let me ask you a question:
Do you customarily inform your prospective clients about Conflict of Interest before you take them on?
Since you are a friend of Mike, ask him if he does the same and did he provide full disclosure to us.
You have no dogs in this race so good ridden.
The issue is COI, Trademark Infringement and the unauthorized delegation of the .ECO gTLD, in accordance with SA1301-12-CN-0035.
Read it you might learn something.
“Do you customarily inform your prospective clients about Conflict of Interest before you take them on?”
If it is a non-waivable conflict, then I don’t take them on.
But that’s not what happened in the record of the case, either. Mike fired you for non-payment. Since he had to petition the court for withdrawal, it is pretty clear that you did not consent to it. You simply wanted to continue your theft of services.
Dear John,
We have a busy day ahead of us but we will later respond to your continuous bullying, harassment and slanderous remarks, obviously designed to harm .ECO(R).
It’s also amazing to see the gang of legal professionals, like you, treating us differently and attacking our US based small business just because we applied for a gTLD, and like others, asserted our valid and enforceable trademark rights.
Had we known the level of bullying we would have to endure for years, we would have accepted Big Room Inc.’s offer to licence our .ECO(R) trademark for $15,000.
Knowing that you are are liewyer and who your friend are, for the record let’s agree that you also won’t try to bill us for your time spent bullying us. Please do not consider your efforts as “services rendered” to .ECO(R), as your records should already show that we are not the “one born every minute” type of people you can successfully create and pad a bill on.
We realize that you are still trying to move away from the issues we were discussing and this post was removed from Google news but the issues are still the following:
1. Conflict of Interest
2. Trademark Infringement
3. The Unlawful and Unauthorized delegation and root zone insertion of .ECO to Big Room Inc.
Please feel free to share your intelligence.
Nothing has changed. Let’s stay focused.
The .eco gtld award delegation was never authorized and is a result of a “Rigged” competition performed in a Federal Contract. According to the DoC Representative/Counsel Mr Kline, the award delegation was not authorized by the ntia/doc agency although the Federal Contract requires the explicit approval authority to come from the agency.
The unauthorized .eco registry operator award was made to the conflicted Canadian company Big Room Inc. founded by a former ICANN executive (2005-2007), who co-created the illegal community evaluation policy which it then used to prevail in a contrived win.
The US government has a legal responsibility to investigate the wrongdoers with the full brunt of the law for offenses committed upon the unsuspecting citizens of the us and the world, all in accordance with Title 18 U.S.C. § 2.
Now that someone other than the Government has made an award that could only be made by the Government we ask the $1,000,000 question:
Who awarded .ECO to Big Room Inc and with what authority?
ANDREW ALLEMANN,
Is there a reason our post are not showing? We did not receive any notice of administrator approval required?
The .eco gtld award delegation was never authorized and is a result of a “Rigged” competition performed in a Federal Contract. According to the DoC Representative/Counsel Mr Kline, the award delegation was not authorized by the ntia/doc agency although the Federal Contract requires the explicit approval authority to come from the agency.
The unauthorized .eco registry operator award was made to the conflicted Canadian company Big Room Inc. founded by a former ICANN executive (2005-2007), who co-created the illegal community evaluation policy which it then used to prevail in a contrived win.
The US government has a legal responsibility to investigate the wrongdoers with the full brunt of the law for offenses committed upon the unsuspecting citizens of the us and the world, all in accordance with Title 18 U.S.C. § 2.
Now that someone other than the Government has made an award that could only be made by the Government we ask the $1,000,000 question:
Who awarded .ECO to Big Room Inc and with what authority?
Approximately 20% of all delegated gTLDs were collectively given to 3 .eco gTLD applicants – .Big Room Inc, TLDH and Donuts, resulting from the performance of the New gTLD Program.
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:
https://www.ntia.doc.gov/other-publication/2012/icann-proposal
Part of TLDH’s team was:
Peter Dengate Thrush – ICANN Chairman of the Board
and
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 that according to Big Room Inc., enabled ICANN to give Big Room Inc. the .eco gTLD, based on a new “gTLD Community Priority” that supersedes US Trademark Priority.
The fact still remain the same, .ECO(R) NEVER HAD A FAIR OPPORTUNITY TO COMPETE for the .eco gTLD, despite owning the “.ECO” trademark covering “Domain Name Related Services”, according to the USPTO. All .eco gTLD applicants were comprised of Government Contractor executives that created the New gTLD Program and had unfair competitive advantages over the only outsider, .ECO(R).
In sum, .ECO paid a handsome $185,000 gTLD application fee to participate in a Federal Program, who’s Government Contractor ICANN, according to Big Room Inc., gave the “.eco” gTLD designation to Big Room Inc., co-founded by an executive it hired that helped create policies and procedures of the New gTLD Program used for its unlawful .eco gTLD Award.
United States still operates under Rule of Law.