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Closing The Hole For Backdoor gTLD's

  • To: comments-spec13-06dec13@xxxxxxxxx
  • Subject: Closing The Hole For Backdoor gTLD's
  • From: "John Berryhill, Ph.d., Esq." <john@xxxxxxxxxxxxxxxxx>
  • Date: Fri, 10 Jan 2014 14:47:06 -0500


Proposed Specification 13 does not effectively tie use of domain names in the TLD to the basis of the brand. This allows the opportunity for an owner of a fortuitous arbitrary mark to effectively use the "Brand TLD" as a gTLD which routes around the conduct requirements imposed in gTLD's.

The requirements of Section 5, defining a .brand TLD as corresponding to a mark that is used for something other than domain services appropriately limit the "my TLD is my brand" type of trademark front-running attempted in the new TLD process. Also, the requirement of actual use of the mark avoids some of the trademark gaming problems. A similar restriction is needed in relation to use of domain names in the TLD, not only by "licensees", but by licensees for purposes consistent with the basis of the brand.

For example, a trademark owner may legitimately own rights in the word "dog" as a brand of shoe, since the word "dog" is not generic or descriptive to shoes. However, such a .dog Brand TLD should not then be used by the brand owner to issue licenses having the appearance of trademark licenses, but which are used in fact to allow domain names in the .dog Brand TLD for purposes relating to pet supplies.

In other words, one might have a legitimate trade or service mark that is a dictionary word arbitrarily applied to goods/services for which the dictionary word is not itself descriptive. But delegation of a TLD premised on such secondary meaning as a trademark should not be a backdoor through which the "Brand TLD" designation is used to route avoid the normal requirements of gTLD operators.

Imagine, for a known example, Apple Computer, which might legitimately use a .apple TLD as a Brand TLD, "licensing the mark" on terms allowing orchards or fruit merchants to register domain names in the .apple TLD, to the exclusion of other parties in fruit-related trade. This is not to suggest that Apple Computer would do such a thing, but there are vast numbers of trade and service marks which, while having secondary meaning as arbitrarily applied to the branded goods and services, are otherwise dictionary words having a primary meaning.

This vulnerability of Proposed Specification 13 is hole can be addressed by requiring that domain names registered to the registry, affiliates and licensees be used for purposes relating to the basis on which the trade or service mark rights are premised, by adding an additional conjunctive requirement to section 5.1 along the lines of:

(iv) domain names in the TLD are required used for promotion, support, distribution, sales, or other services reasonably related to the goods and services for which the trade or service mark was issued.

or to put a finer point on it:

(iv) domain names in the TLD are required used for promotion, support, distribution, sales, or other services reasonably related to the goods or services for which the trade or service mark was issued, and not for purposes for which the trademark string otherwise has primary meaning as a generic indication of other goods or services.

One may safely assume that the drafters of Proposed Specification 13 do not anticipate gaming of this loophole it provides. But in the general case, that is no reason to assume that all those seeking to qualify for "Brand TLD" status are well motivated.


--
John Berryhill, Ph.d. Esq.
204 East Chester Pike
First Floor, Suite 4
Ridley Park, PA 19078
+1.610.565.5601
+1.267.386.8115 fax
john@xxxxxxxxxxxxxxxxx



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