A dispute between blockchain domain name owners is a preview of what’s to come.
Update: Unstoppable Domains has sued Gateway.io.
Blockchain domain name company Unstoppable Domains has threatened to sue a Handshake domain name service for offering registrations under the .wallet Handshake domain name.
The company sent a cease & desist letter (PDF) to Gateway.io, a company that acts as a registry and registrar for Handshake domain names, earlier this month.
Unlike other blockchain domain systems that only offer second level registrations, Handshake allows people to register alt-root top level domains. The registrants of those top level domains can then offer second level domain names. The owner of the Handshake .wallet top level domain offers second level domains through Gateway.io.
In its demand letter, Unstoppable Domains states:
…As we know you are aware, Unstoppable Domains has sold .wallet top level domain names for over a year. Unstoppable Domains therefore possesses trademark rights in the .wallet top level domain name (see U.S. Serial No. 90/886,517). Yet in flagrant disregard of Unstoppable Domains’ clearly established rights, a third-party (“Wallet”) and (sic) has recently begun to offer their own .wallet top level domain names for sale…
The registrant of .wallet created the Handshake domain on July 31, 2020. Unstoppable Domains began offering its own .wallet domains in summer 2021.
U.S. Serial No. 90/886,517 is an intent-to-use trademark application for “wallet”. Unstoppable filed the application in August 2021. Like most of Unstoppable Domains’ other attempts to trademark top level domains, the U.S. Patent and Trademark Office has so far declined to grant the trademark because it doesn’t grant trademarks for top level domains. It sent a non-final action notice in May before Unstoppable sent the cease & desist letter.
The trademark office previously refused an Unstoppable Domains trademark application for “.wallet” with a preceding dot. The office has refused all of Unstoppable’s TLD applications except for “dweb” and “defi” without dots. While the applications were allowed, Unstoppable has yet to submit specimens of use. A specimen containing a dot or use as a top level domain would likely not be accepted.
Unstoppable has also filed trademark applications in Canada.
All of this points to an ongoing issue with alt-root blockchain domain names: name collisions. If people can own a .wallet address in Unstoppable Domains and Handshake, there will be confusion between the two domains. In the C&D, Unstoppable noted:
Additionally, the unapproved use of the .wallet top level domain name will create numerous conflicts and interference with the thousands of existing .wallet top level domain name owners. This will have a profound effect on both Unstoppable Domains’ users, and on Unstoppable Domains itself, and constitutes both tortious interference with Unstoppable Domains’ business relations and unfair competition.
This issue will be exacerbated when ICANN launches its next round of top level domain names. Any domain released in the main ICANN root will be accessible on popular web browsers, making them instantly more accessible than blockchain domains that require special browsers, plugins, or other workarounds to access.
And many of Unstoppable Domains’ top level domains are sure to be contested in the next round of applications: .crypto, .nft, and .blockchain, for example.
Unstoppable’s trademark applications are likely a way to get in front of the growing number of competing blockchain domain initiatives and ICANN’s next round. It seems to be an effort to claim rights that would block other applicants.
In the last round, trademark frontrunners filed for trademarks in various jurisdictions and then tried to claim sole rights to the corresponding new extensions. Those efforts failed.
On Domain Name Wire Podcast #224 (February 2019), I asked Unstoppable Domains founder Matthew Gould about the conflict with future ICANN domains:
Domain Name Wire: …it’s a pretty good bet that dot crypto will be one of the top, most applied for names in the next round if it’s anything like the current round. I mean, so at that point then, and I know you’re looking at doing a community application, but you know, community applications are, as we saw in the last round, there could be several, right. And there could be a fight over that. I mean, there’s a good chance that we come into a situation where either you need to pay a lot of money to get .crypto through ICANN, or you have .crypto in your blockchain root and there’s a .crypto in the main route.
Gould: Yeah. I mean, I would just say that we’ll try to figure it out once we get to that point, with ICANN. And I think that taking the worst case scenario here, you know, I’ve got to be an optimist, like I’m a small business, startup founder. And I think that we’re headed in the right direction here. And you know, I think that also previous rejections for TLD reservations like you mentioned with trademarks, were rejected on the basis that they did not have an existing or functioning naming service. And that is not going be the case with us because we’re actually going to have an existing and functioning naming service. So at least on the trademark side, we feel pretty comfortable that we’re going to be protected going into that fight. And we’re also willing to fight for it. One more thing I will add to that is it’s very likely that we’ll end up finding a partner in the industry to work with us on a lot of these TLDs. And there’s a possibility that it’ll make a lot more sense for us to work together on the launch of a TLD like .crypto on ICANN than it will to fight about that type of TLD.
Unstoppable Domains is demanding that Gateway deactivate .wallet domains, stop selling the domains, and provide information about the registrant of the .wallet Handshake domain.
This could be a test case for what will surely be a future of name collisions between alt-roots and, ultimately, the existing main root.
I reached out to Unstoppable Domains on Monday for a comment, but have not heard back at publication time.
Jeff Neuman says
I find the irony here incredible. Both companies have created “unauthorized TLDs” on the alternate root and one of the companies gets mad at the other company for doing exactly what they did. That is the problem with alternate roots….nothing stops anyone from starting their own alternate root to compete.
This is why we have an “authoritative root”. So that problems like this do not arise. It will be even more interesting when one of these companies (if still around) goes after ICANN for allowing a top-level domain in the authoritative root that has been established in an alternate root.
What will these companies argue:
“ICANN, I know we went around the rules and created an alternate root where there are no protections in place for registrants, and where millions of speculative registration have been bought without a dispute resolution process or any accountability. But ICANN, you shouldnt be allowed to delegate that string following the rules, so that we (who have deliberately circumvented your processes) can survive.”
How did these companies not see this was going to happen?
[These comments are my personal comments]
Leonhard E. says
People are slowly realizing that they never explicitly consented to some random “non-profit” company in cali having the “authority” over such a crucial component of the internet. It’s largely an old design mistake of engineers who just didn’t know any better at that time.
The internet has to evolve and will evolve, that’s why ICANN is a redundant and antiquated entity which will cooperate or be left behind only to become the new-old alt root.
No sane and educated individual or entity will accept the current antiquated and inequitable system going forward, except those who profit from a relationship with the old gatekeepers.
James Stevens says
TBH: I’m not mad at them, except the fact that instead of making the case for their product/service, they have resorted to threatening litigation based on one DEAD and one DECLINED trademark application that, in expert opinion (in the field of IP & domain names), said couldn’t make the basis for a case anyway, even if they had been granted.
Also “Handshake” (handshake.org) isn’t a “company” its an open source community project that isn’t owned by anybody – which is why its so popular with over 5.5M TLDs now registered. Unlike UD & their TLDs, which are a closed project.
Also UD do NOT have a ROOT zone, their TLDs are free-floating, but Handshake is a ROOT replacement / alt-root.
Personally, I think Handshake is a huge opportunity for ICANN – it gives prospective ICANN new-gTLD applicants the opportunity to try out names & experimental software or business models, that would be prohibitively expensive to try out within the ICANN world.
Then, if something works, they can take that forward and apply for that TLD within ICANN and take it fully public.
In the initial rounds of new-gTLD applications people just had to guess what TLDs might work – giving us great new GTLDs like dot-HORSE. The lack of commercial success of many/most (given their huge cost), has lead of a lot of bad feeling towards ICANN, which Handshake could offer both ICANN & any new applicants the opportunity to avoid.
So I see Handshake more as an opportunity for a stepping stone into an ICANN application, as opposed to clashing with ICANN applications.
James Stevens, CEO Gateway Registry
How is Handshake a ROOT replacement / alt-root.??
NetOperator Wibby says
Handshake extends the existing DNS securely via blockchain, DANE, and DNSSEC. It’s considered an alt-root because it’s quite literally an alternative to the root zone natively installed in every operating system.
Chris Stephanawski says
Handshake allowed tens of thousands of infringing new ‘roots’ like .nike .amazon and .tesla to be registered by squatters without a sunrise policy… this does not bode well for their future.
Also worth noting that UD seems to have actual native browser resolution in Opera and Brave, while Handshake requires a proxy to work.
NetOperator Wibby says
You’re lying. All those names you mentioned are reserved.
You either have no idea of what you are saying, or are deliberately lying. All Alexa Top 100k domains were reserved for 4 years and are still reserved for 1.5 years. They can only be claimed by the respective owners and that for free. In fact they are even rewarded for it. There are also proposals to extend this reservation period. In addition, domains for common projects have been reserved, such as .eth for ENS or .onion for Tor. All ICANN TLDs are reserved as well.
4 years and probably even more of exclusive reservations and you are seriously trying to tell fairy tales here that there is no sunrise policy and Handshakers are squatters? Very cheap attempt.
Now to UD, for whom brand protection is supposedly very important. The only question is why? A few weeks ago, the trademark owner of “GeoCities” requested the corresponding domains from UD (https://twitter.com/enspunks/status/1540412218646450177?s=21&t=nr2elGRnbTadaFkxuAh2Yg). Of course he didn’t get them for normal prices or even for free like with Handshake, no he should have paid over $100k to UD for 10 “protected” domains of which he owns the trademark! Who is the squatter now?
It is clear that UD can fund browser integrations more easily through these shady business practices than a truly decentralized project, but nevertheless an Opera integration for Handshake has been commissioned, funded and should be released soon.
That’s quite a lot of text from someone currently embroiled in a legal battle with UD.
To boot, GatewayRegistry is still available as a domain on many of these Web3 platforms.
NetOperator Wibby says
> That’s quite a lot of text from someone currently embroiled in a legal battle with UD.
…so? Responding doesn’t invalidate what he’s said. You must be a StoppableDomains troll.
Paul Anthony Webb says
“Unstoppable” Domains is myopic, hypocritical, and petulant. Blockchains are inherently permissionless and yet they claim ownership to a WORD across the ENTIRE crypto landscape. Imagine if McDonald’s tried to own the concept of “burger.”
UD is a fork of ENS on the Ethereum blockchain. Handshake is an entire blockchain. Did they really think no other person in the crypto space would think to do what they do? Handshake existed before UD. UD knew about Handshake and declined to collaborate.
UD has a failing business model. VC money does not make a company succeed, repeat revenue does…and how is that possible with the “pay once” model? They see another blockchain do things in a way that makes financial sense and panics. Then they start throwing around (invalid) patents…to a company built on blockchain. My 6-year-old could poke holes in their arguments.
This whole ordeal is laughable IMO. UD has no basis for their complaints and should instead look inward. This public stink is only enlightening their customers about Handshake and the actual utility TLDs and SLDs could have versus whatever UD is doing.
The people building on Handshake are very much aware of impending conflicts and are working our asses to create the infrastructure necessary to further create value and utility. Just because ICANN conflicts aren’t coming for at least a half decade, doesn’t mean they aren’t coming at all. Browsers will integrate what users want to use and I’m confident that if we have enough popular services/experiences on Handshake, conflicts won’t be our problem. They’ll exist but users will choose us.
C. Hartwood says
Handshake’s policy regarding trademarks and squatters has been loosey-goosey to say the least. Not surprised they didn’t want to collab.
UD is the only one that actually protected names for trademark owners, who it seems are registering and paying for them — see this long thread >> https://twitter.com/Ethernetexplora/status/1547824854350499840
NetOperator Wibby says
Interestingly, UD apparently owns .zil on Handshake. Quite facetious of them. The Handshake community is one built on gifting. I have several names that are trademarks. I obtained them for the sole purpose of gifting.
.airwick, .alldef, .beyoncé, .butterball, .deusex, .cyberpunkred, .emmy, .fontlab, .freshprince, .httpie, .lunchable, .lunchables, .mfdoom, .millionshort, .nujabes, .poolsuite, and .webby.
If you look into the history of Handshake you’ll find loads of gifting going on. Furthermore, many of us are implementing UDRP when our registries launch.
NetOperator Wibby says
For proof of intent to gift, prepend any of the names listed with “https://www.namebase.io/domains/” and you’ll see a message indicating such, and how to get in contact with me.
Seems like UD trolls found this comment section. UD “protects” and “reserves” domains only to sell them for hundreds of thousands of dollars to the respective trademark owners like in this case or to generate hype (FOMO) by pretending that large companies are interested in UD:
As I explained in my comment above, the domains of all major companies are reserved on the Handshake Root Zone and can be claimed completely free of charge by the owners. Search for an HNS/Handshake Explorer on Google or go to Namebase and search for “Walmart”, “Tesla” or “Microsoft”. You will be amazed to find out that these domains are reserved, contrary to your claim!
Brad Mugford says
So much for “decentralized”…
It seems they are trying to use the existing TM and legal system to bully another party about something that they really have no superseding rights to.
“The registrant of .wallet created the Handshake domain on July 31, 2020. Unstoppable Domains began offering its own .wallet domains in summer 2021.”
If anything, it is them who should be sending a C&D to Unstoppable Domains.
These extensions will all become pretty irrelevant when ICANN releases the actual extensions, on the normal root servers that don’t require special software or settings to work. ICANN won’t care about these existing domain “extensions”.
Mike Henderson says
Creating something is very different from selling it to actual customers at scale… “First commercial use in market” is pretty well defined by the courts… buying something with “intent to use” it (and only doing so after UD started sales) might be an actually good case. We’ll see.
From LinkedIn, looks like Unstoppable Domains has at least two full time lawyers on staff, so they’ve been thinking about this more than most companies who have been blatantly skirting best practices in the domain name space (i.e. not even having a sunrise policy).
NetOperator Wibby says
Handshake did have a sunrise policy. Names were released on a rolling schedule. You not hearing about it doesn’t mean it never existed.
UD is a single company with two lawyers. They are attempting to paint an entire community in a bad light and who knows how many lawyers the Handshake community collectively has access to.
This article is clearly void of perspective from the Gateway.io team and the owners of .wallet via handshake. Whether this was the author’s intent is unclear. Regardless, the article seems to imply the issue is a matter of “who was first”. In reality, the issue is more about a corporate entity potentially seeking to “control the namespace innovation narrative without interference”.
.Wallet via handshake and Unstoppable’s .wallet are proverbial apples and oranges. Each .wallet TLD is distinct; and their overall profile is defined by the utility they offer/accommodate. Even if ICANN were to launch a .wallet, the same dynamics would apply. Two or more parties leveraging the same alpha-numerical characters doesn’t void distinction.
Another key detail that’s missing from the article is the fact Unstoppable purchased .crypto via handshake. Again, we’re unclear as to whether the author intended to omit this. Some parties are vested in handshake, and decentralized domains in general, NOT gaining traction. Especially if the success of either could potentially impact their centralized TLD interests/holdings.
In closing, the article heading reads “Unstoppable threatened a rival handshake domain”. In reality, “they threatened an entire eco-system from which they’ve benefitted”. There’s no amount of legal jargon and IP chess-play that can overshadow this truth. Handshake is a tree to be picked from and not a target to be picked on. Shame on those attempting to do both.
Andrew Allemann says
I spoke to both Gateway and the .wallet HNS owner prior to this article. Unstoppable did not reply to my request for comment.
It’s clear that Unstoppable’s view is “who was first” and that’s one that I don’t think will hold much water. But we’ll find out, because they filed a lawsuit:
I would agree that Unstoppable’s argument threatens all blockchain (and otherwise alt-root) extensions.
I’m not familiar with that background on crypto. Can you point me to more information?