Comments on Defensive Registrations from Domain Security Company LLC

["Mary Iqbal" <mary@xxxxxxxxxxxxxxxxx>]

Dear ICANN,


Thank you for soliciting feedback on the subject of defensive registrations.


The uncertainty concerning branded Top Level Domains has not been caused by 
ICANN's policies or any process deficiency associated with the Applicant 
Guidebook.  Instead, the uncertainty and confusion has been caused by the lack 
of trademark protection for Top Level Domains in the United States, and the 
uncertain status of global trademarks for the same.


As a result of the United States Patent and Trademark Office's policy against 
trademark protection for Top Level Domains, ICANN has been placed in the 
untenable situation of effectively administering global trademark law for the 
entire Top Level Domain industry.  Such responsibility is clearly outside the 
scope of ICANN's charter.


We assert that the United States Patent and Trademark Office must retain the 
authority to provide Trademark protection for Top Level Domains; while the 
Internet Corporation for Assigned Names and Numbers should retain the authority 
to approve new Top Level Domain operators.


As an example of the equitable division of responsibilities outlined above, the 
United States Patent and Trademark Office has granted various trademarks for 
telecommunications services to AT&T; however, the Federal Communications 
Commission (FCC) retains the authority to allocate the right to operate on 
specific frequencies.  In the same way, we assert that the United States Patent 
and Trademark Office must retain authority to administer trademark law for Top 
Level Domains, while ICANN should retain the authority to approve operating 
agreements for new/existing Registry Services providers.


How would such protection operate in the Top Level Domain industry?  Trademark 
law in the United States and many other countries requires that trademark 
applicants show proof of use within six months after a trademark is issued, or 
the trademark is revoked.  This means that only applicants who actually use a 
trademark for Registry Services will be able to maintain the trademark.  
Therefore, if the United States Patent and Trademark Office were to offer 
trademark protection for Top Level Domains, it would only protect existing 
operators, and, for a limited amount of time, those applicants who plan on 
applying for a Top Level Domain in the immediate future.


The way that trademark law works is that a mark must be trademarked in a 
particular industry.  For example, a mark that has been trademarked in the 
beverages industry does not offer its owner protection in the shipping 
industry.  A mark that is registered in the consumer products industry would 
not protect its owner in the machining business.  While it is laudable that 
ICANN has attempted to make up for the fact that Top Level Domains may not 
currently be trademarked by guaranteeing protection for all trademarks in all 
industries, this is merely a stop-gap effort.  This is also an unsustainable 
approach, since by what legal right can ICANN decide whether Apple Computers or 
Apple Records should get .apple?  This is clearly a question that is designed 
to be answered, not by ICANN, but by trademark law.


In the history of Trademark law, whenever a new type of business was 
discovered, a new business class has been added, or an existing class modified, 
to enable businesses to obtain trademark services within that business class.


However, the United States Patent and Trademark Office, rather than recognizing 
the Registry Services industry as a new type of service, has instead adopted a 
policy against providing trademarks for new Top Level Domains.


Trademark registration for Top Level Domains has been refused by the United 
States Patent and Trademark Office on the grounds that marks for Top Level 
Domains do not function as a service mark to identify and distinguish 
applicant's services from those of others and to indicate the source of 
applicant's services.  This statement reflects a misunderstanding of the 
function of a Top Level Domain.


When a user visits a domain within the .INFO Top Level Domain, it is Afilias, 
Inc., whose Domain Name Servers ensure that traffic is directed to the correct 
location for the appropriate .INFO domain.  When a user visits a domain within 
the .COM Top Level Domain, it is the responsibility of Verisign, Inc., to 
maintain the global Domain Name Servers to ensure that traffic may be directed 
to the correct location for the selected .COM domain name.  The indicator of 
the provider of that service - the source identifying mark - is the name to the 
right of the dot.


Furthermore, as a result of the lack of trademark protection for Top Level 
Domains, businesses competing for strings like .SAS may be forced to contend 
against each other financially, to bid against each other, for the right to 
have protection for the term .SAS for Registry Services.  This means that 
applicants with access to greater funding resources have an advantage over 
those with less access to funding.


This is exactly the type of situation that trademark law was designed to 
prevent.


We commend ICANN for the thorough and deliberate process that has been followed 
in order to create the Top Level Domain application process and the Applicant 
Guidebook.  We encourage ICANN to reach out to the United States Patent and 
Trademark Office in favor of trademark protection for Top Level Domains.


Sincerely,


Mary Iqbal

Domain Security Company LLC