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Username: namecritic1
Date/Time: Wed, May 16, 2001 at 1:45 AM GMT
Browser: Microsoft Internet Explorer V5.5 using Windows 98
Subject: Responses to letter to ICANN from NeuLevel

Message:
 

 
               

MEMORANDUM

TO:            DNSO Names Council

FROM:      Jeffrey J. Neuman, Director of Policy & Intellectual Property

                  NeuLevel, Inc.

RE:             ICANN and the Alternate Roots

DATE:       May 8, 2001

______________________________________________________________________________

Arguments have been made that the process used by the Internet Corporation for Assigned Names and Numbers (ICANN) to select new top-level domains (TLDs) for use on the Internet has been unfair and unlawful to alternate root providers.  These arguments are incorrect, legally and factually.  In selecting the new TLDs, ICANN balanced the goal of expanding the scope of the Internet with its paramount interest in maintaining its stability, while also recognizing existing legal protections.  Moreover, ICANN’s selection of the new TLDs followed a comprehensive process that afforded all interested and affected parties the opportunity to be heard.

As demonstrated below, claims by the alternate roots that their property rights have been infringed are without merit because generic top-level domains are not and cannot be considered intellectual property.  This means no property rights are being lost or taken away.  The alternate roots, like other members of the public, were afforded the opportunity to participate in the application process and express their positions, yet many chose not to do so.  In fact, the alternate roots’ operation may deprive others of valuable property rights as they appear to invite cybersquatting, trademark infringement and other fraudulent activity.

From NameCritic; "They were afforded the right to be heard within 30 days notice. Not enough time to give a good business plan, then they refused some of the applicants due to their business plan they forced them to hastily prepare. And there have not been a rash of domain name disputes in the alternate or cooperative roots. That has occurred in the legacy root under ICANN and the UDRP. This statement is false and seems to be designed to purposely mislead readers into thinking the alt roots are responsible for cybersquatting. Very irresponsible of them to make such an unfounded accusation."

The alternate roots’ arguments should not prevent swift approval and implementation of ICANN’s proposed new TLDs, unimpeded by the meritless arguments offered by the alternate roots, which are discussed in greater depth below.

From NameCritic; "Meritless to who? This is only an opinion. It has no merit to this company maybe, but has merit to users of the Internet. As a User I want access to ALL of the Internet, not just the portion ICANN and the US Department of Commerce say I can have access to."

I.          ICANN’s Management of the DNS Ensures the Stability of the Internet

Management and oversight of the domain name system is essential to the stability and functionality of the Internet.  The Department of Commerce has exercised oversight of the domain name system through a series of agreements with ICANN.  Pursuant to these contracts, ICANN has controlled the domain name system through the “authoritative root server.”  The “authoritative” root is often referred to as the “legacy root” because it is the continuation of the original DARPA net root system.  Attached as an appendix is an explanation of the domain name system on the authoritative root and the historical development of its oversight.  In sum, the authoritative root is the predominant root on which Internet traffic travels.  Alternate roots do exist, however, they use private domain names that do not exist on the authoritative root.

From NameCritic; "It is not a continuation of the Darpa Net Root System. This is an entirely different network. The use of the Authoritative Root as the description is exactly the correct term in regards to the attempt by some to control the Internet and the users of the Internet. Yes guidelines are necessary to insure the Internet functions well, but ICANN so far has bowed to interests that want far more than guidelines. They wish to promote a heavily regulated Internet which threatens the very nature of the Internet itself. Freedom allowed for the creation of the technology and concept from the very beginning. To allow large corporate interests to stifle that freedom now is a travesty of justice. With the Internet for the first time since the Industrial Revolution, the average human being regardless of race, religion, or economic background was given the chance to compete on a level playing field with major corporations. With the misapplication of Intellectual property Law and the creation of an organization, (ICANN) that only has representatives for Large Corporate Interests threatens to kill off this ability for the average user. Something I for one do not wish to see."

 

ICANN recently approved the addition of seven new suffixes to be used as generic TLDs on the authoritative root.  These are: .aero, .biz, .coop, .info, .museum, .name and .pro.  ICANN’s first priority in assessing the proposal to operate new top-level domains was the preservation of the stability of the Internet.  ICANN’s assessment included a review of the prospects for continued and unimpaired operation of the TLD in compliance with technical requirements and with minimal outages or other technical difficulties.

From NameCritic; "But chose to implement TLDs that are redundant and unnecessary. Why would the Airlines need their own root was recently asked in a forum. That is the understanding here. Dot Coop? C'mon, how many users did that one satisfy out of the millions of users on the Internet? What percentage of users breathed a sigh of relief that they approved that one? Dot Info is generic and redundant to .org and soewhat even to .com. It might be okay if there hadn't already been a .info that existed prior to approving it. Dot Museum? Why? Fewer people are happy with that one than .coop. Dot Name isn't any conflict to anyone, but much better options were available. And that brings up Dot Pro. .com covers them already and again it is redundant and selective. Only two types of professionals are allowed to file domain names in this TLD. Why are certain industries being afforded special treatment over others. One can only assume it is due to their representation within ICANN and the DNSO. I notice the lawyers of the Intellectual Property Constituency got their own TLD now. Then there is the case of dot biz. For a group that thinks corporations "First Use" rights apply to everything and outweighs all other rights combined ICANN was sure quick to find that it did not apply to the existing dot biz. It's awfully convenient when you can apply laws where and when you see fit and not use them when it isn't to your advantage to do so. The above New TLDs also show how US Centric ICANN is in violation of their own bylaws. What is .museum in japenese anyway? What is .pro in Russian? We know that "BIZ" in England means to go do your biz, in other words go to the bathroom for a #2. Why weren't more international issues considered when approving new TLDs. Those close to ICANN wonder why the other countries get the idea that ICANN only represents US interests. It's no wonder when looking at the decisions being made by the ICANN BoD."

A.        ICANN’s Decision to Expand the gTLDs to Include .Biz Has Not Taken Away Business On the Alternate Roots

One of the new suffixes, .biz, has been used by the alternate roots.  The Atlantic Root Network (“ARN”) has complained that the use of .biz on the authoritative root essentially takes away its business.  This argument is wrong both factually and legally.

From NameCritic; "Again a false and misleading statement. When TM Holders make claims of TM infringement by the filing of similar domain names, WIPO and the courts have found that possible FUTURE infringements are grounds to transfer a domain name to the TM Holder. The same principle applied here is the possible future inclusion planned for by the current TLD owner of .biz IS threatened and in effect stopped by the approval of another company to manage a TLD that is already in operation. This statement wouldn't be due to self interests would it? Mine is not since I have no affiliation with any TLDs in any root system but am just a user that is tired of seeing a few good ol boys step on people's rights the way they have been since ICANN's inception."

First, with respect to the facts, the Atlantic Root can continue its business on the alternate root because ICANN’s decision relates only to the authoritative root.  While ARN will not have the ability to use the .biz TLD on the authoritative root server, it cannot do so now, so the status quo is preserved.  Notably, the Atlantic Root Network had the opportunity to apply to operate the new .biz domain on the authoritative root and chose not to do so.  It chose to remain an operator on its alternative root and can continue to do so.  There can be no legal “taking” under United States law, where the business will continue to operate.  At best, Atlantic Root complains of a possible, future disparate impact on its business.  However, in a wide variety of contexts the United States government executes laws or programs that may have comparable consequences and such actions never constitute a taking.[1]

From NameCritic; "At least you state here a respect for the facts even though you choose to ignore them. Making the application fee $50,000 is just one more way to discourage participation by some so that others can steal what is rightfully theirs. The fact they did not give ICANN $50,000 with no guarantee of approval and a prior indication they would not be approved in my book makes them smart enough to know better. The only thing it would have accomplished is to put them in the same position they are now in, $50,000 poorer as is the case with many others who did apply and were not given enough time to prepare their applications. How much time was your company given?"

Moreover, the companies that have registered names on the Atlantic Root know that those names do not exist on the authoritative root and have no reasonable expectation that they can be used on that root.  They specifically contracted to have names to be used on the alternate root and knew or should have known that someday those names might be overlapped on the main authoritative root server.  Indeed, Atlantic Root's web site contains a disclaimer to this very effect, warning potential registrants of possible future collisions, and therefore putting those companies/registrants on notice:

Registrant acknowledges that ICANN has accepted applications for several new TLDs and that included in those applications is .BIZ. Atlantic Root Network, Inc.tm has NOT applied to ICANN and has no intention of doing so at this time. If .BIZ is chosen by ICANN and delegated to a different registry administrator, we do not know how it might effect the BIZtld registry'stm domains. Therefore, registrant agrees that there is no guarantee that there will not be a colliding TLD issue which may not be resolved in registrant's favor. In that case, .BIZ domain names may no longer resolve. Registrant holds AtlanticRoot Network, Inc. and PacificRoot harmless in any situation regarding a colliding TLD which might result in their .BIZ domain no longer resolving in the domain name space. Registration of domain names is a service. Fees are NOT REFUNDABLE.

From NameCritic; "A disclaimer required by any reasonable attorney. You should know that. The out of context and inflammatory way in which you point reference to this is contemptable at best and shows the writer is not interested in fair play, but interested in convincing people to give this company what it wants regardless of any rights violated by that action."

The argument that the alternate root is losing some legitimate business interest is further belied by the fact that the names registered on the alternate root often ignore the rights of intellectual property owners and, thus, could not be used on the authoritative root.  Indeed, these alternate roots appear to be havens for cybersquatters.  For example, “aol.biz”, “yahoo.biz”, “cocacola.biz” are already registered in Atlantic Root’s .biz registry, and appear not to be registered to the legitimate trademark owners.  Leah Gallegos, the President of the Atlantic Root Network and probably the most vocal advocate of the positions taken by the alternate roots, has herself registered wipo.biz[2], oracle.biz, and gap.biz.  Similar .biz registrations in Atlantic Root include:

Cocacola.biz                Registered by Trond Atle Skarling, Norway

Neustar.biz                   Registered by dotBIZ, James Rezzino, Old Forge PA

Neulevel.biz                  Registered by dotBIZ, James Rezzino, Old Forge PA

Mcdonalds.biz              Registered by Trond Atle Skarling, Norway

Microsoft.biz                Registered by Hatchers Investments pty ltd, Australia

Att.biz                          Registered by DomainInvest.com, Norway

Warnerbrothers.biz       Registered by Trond Skarning, Norway

Disney.biz                     Registered by Net Step, Sam Middelstaedt, Stanwood WA

There simply can be no reasonable expectation that such names could be used on the authoritative root.

From NameCritic; "First I was under the assumption you were the Attorney for Neulevel, not these companies. There is a dispute resolution policy to deal with these issues. It is up to the holder of the TMs to use that policy to handle any dispute they have with the holders of those domains. This is not a forum to discuss the UDRP and you do not speak for any of those companies. Again inflammatory and irrelevant to the discussion. Clearly another diversionary tactic to try to make people see your side as the only right side in this issue. What domain names may or may not be in compliance with has no bearing on ICANN's Bylaws or decisions with regard to repeating this potential collider TLD. If .biz is repeated against the best interests of a cooperative Internet it is a much worse violation than any of those domain names. It's a much larger issue. It proves to the average user that ICANN has no interest in forming a bottom up consensus on issues and is not interested in cooperative efforts and is not interested in the stability of the Internet. All against the bylaws by which ICANN is supposed to operate. The ICANN BoD should watch it's decision very carefully in regards to going against it's own bylaws. The repercussions of this are very drastic."

B.  There Can Be No “Taking” Where There Are No Legitimate Property Rights

It is axiomatic that there can be no “taking” without the prior existence of a property right.  The Atlantic Root Network never acquired property rights to support a claim that their business would somehow be injured.  Significantly, no intellectual property right is infringed by the allocation of the .biz TLD or the maintenance of a .biz registry on the public root.  Generic top- level domains are not and cannot be “property”.[3]  Top-level domains designate a particular user space on the Internet, .com for commercial enterprises, .biz for businesses, and .org for organizations, and are thus generic terms that inherently cannot function as trademarks.[4]  TLDs were created for no other purpose than to order and organize the World Wide Web.  No intellectual property right is therefore infringed by the allocation of the .biz TLD or the maintenance of a .biz registry on the public root. To treat a TLD as property would violate well established intellectual property law.

From NameCritic; "When they filed a Trademark on the name BIZtld registry's tm Did it indicate they had not tried to protect their rights to operate just what the name says? To the best of their ability they have shown due diligence in protecting their brand. No you cannot trademark what is after the dot as they say, but they do have a TM on a company described as a company registering domain names in that TLD. Close enough to infringement if you ask me to duplicate their effort. Any person with any common sense or sense of what is right or wrong can see the attempt to steal this from the originator is blatently wrong and to try and defend this action citing technicalities and excuses shows total contempt for anything just."

Indeed, this was most recently confirmed when another alternate root registry attempted to prevent the establishment of competing roots by asserting intellectual property rights in a top level domain, “.web.”  In 1999, Image Online Design, Inc. (“Image”), who purported to operate a registry for a .web TLD on an alternate root, filed a trademark infringement and unfair competition action against another root service asserting proprietary rights in the .web TLD.  “.Web” has never been approved by ICANN as a TLD on the public root.  The Court refused to acknowledge trademark rights in .web, noting that it simply did not indicate the source of the registry services at issue.[5]  The Court went further to note that .web was generic, and thus inherently incapable of trademark protection, because it told Internet users that the web site was related to the World Wide Web.  Any other ruling would have been a significant departure from established law.

From NameCritic; "Since the TLD Dot Web was not duplicated by ICANN, this is not even a proper citation of prior case law and has no place in this argument at all. ICANN did not approve a lot of applications. That being compared to duplicating an existing TLD and effectly quashing any future business hopes of an existing business is apples to oranges and again a flagrant attempt to distract readers from the facts."

Thus, like Image, the Atlantic Root Network cannot assert that because it began registering .biz names several years ago, that it has the exclusive right to continue to do so in the future.  Atlantic Root has no property right in the .biz TLD and thus no right has been taken. 

From NameCritic; "In every law there are technicalities but there is also the spirit of the law to consider. The spirit of TM Law is to protect those who have "First Use Rights" regardless of whether or not they have filed an actual Trademark application. That applies in this case. Also there is history in the creation of the Internet that allows for the assumption that if you did it first, then no one will come along and duplicate it without your cooperation. That is how things began and how many still operate. Obviously this company is not one that has a policy of that type of cooperation that allowed the Internet to come this far. The Internet has always been a cooperative effort. The stability of the Internet today is a result of that cooperation. Duplicating the dot biz tld sets a precedent that will do more to damage the stability of the Internet than anything else ICANN has done so far. ICANN is seen as the lead policy-setter. By approving a potential collider depending on the technology that gets developed and by duplicating the efforts of others they allow for other companies and root operators to follow their lead and cause more problems than you can obviously imagine."

Nor can a TLD be copyrighted.  The copyright, a right that protects original works or authorship, does not extend to individual words or short phrases.  Thus, as a matter of intellectual property law, TLDs are not protected from copying by others. [6]

From NameCritic; "Again you continue to cite technicalities that may or may not hold up in a court of law. It defies the spirit of protecting "First Use Rights" and goes against every principle the Internet is founded on. Yet you defend your position here as right when clearly it is self-serving and only YOUR interpretation of the law and since you are obviously employed by those who will benefit through the theft of work others have done, your word must be taken only as the mouth piece for those you represent. Your post is not unbiased or objective in the least."

A more general misappropriation argument by ARN is also unwarranted under well established law.  A wrongful appropriation of property is an essential element to a misappropriation claim and, as noted above, there is no property right in a TLD.   The process of allocating the .biz TLD and the maintenance of the .biz TLD on the public root does not and will not appropriate any data, database, technology, or IP addresses of any alternate root system.  The new TLDs will be implemented with the technology and resources and according to the business models of the new TLD registries, all of which were examined and approved by ICANN in a public process.

From NameCritic; "Getting repetitive."

C.  The ICANN Process for Awarding New gTLDs Was Fair

Finally, to suggest as Atlantic Root has that its business has been taken by an arbitrary process rings hollow.  ICANN's selection of the new TLDs is a significant step towards the expansion and strengthening of the Internet, which is ICANN’s mission and purpose under its contract with the Department of Commerce.  See Memorandum of Understanding between the U.S. Department of Commerce and ICANN, dated November 25, 1998.  ICANN selected the new TLDs only after a comprehensive process that afforded all interested and affected parties the opportunity to be heard.  Indeed, contrary to some of the recent criticisms of the selection process, ICANN was more accommodating and open to public comment than was required.  Notably, as a private, non-profit corporation acting in a technical "standard setting" capacity, ICANN is not subject to the strict rulemaking guidelines required of government agencies.  Moreover, to the extent that ICANN can be considered to be acting on behalf of the Department of Commerce, and in accordance with the terms of its Memorandum of Understanding, the "public contracts" exception to the Administrative Procedure Act (APA) would apply.[7]  See 5 U.S.C.A. 553(a)(2).  Consequently, ICANN – and indeed the Department of Commerce, when acting to adopt ICANN's recommendations – would be exempted from the specific notice and comment provisions of the APA.

From NameCritic; "Of course you believe the process was fair. Your company benefitted from the process. Those whose applications were not approved however do not share your enthusiasm. This is normal behavior when there are winners and losers, however, the real losers are the average users of the Internet when ICANN acts in such a Non-Transparent way in violation of their own bylaws. Oh and isn't it nice of you to point out the APA which was ignored and your offer, excuse, and explanation on why it was ok since of course in the case where it benefits certain people and corporations there is an exemption that can apply."

ICANN seeks to reflect the functional and geographic diversity of the Internet and its users.  The process for selection of the new gTLD reflected ICANN’s goals to be fully representative, to support competition and to involve bottom-up consensus building.  The alternate roots, on the other hand, criticize the process when, in fact, they are motivated purely by self-interested business motives.  The decision by ICANN to introduce the new gTLDs was made after many committees addressed the issues of whether and how to introduce the new gTLDs, a public comment period and careful review and evaluation by supporting organizations.  It is simply disingenuous for self-interested alternate root providers to suggest the process was unfair particularly since their goal is to protect their individual business interests.

From NameCritic; "This is hilarious! You accuse them of being motivated purely by self-interested business motives for defending something they used first, yet claim you are not motivated by the very same thing when taking it away from them. None of the above statement is anywhere close to what actually occurred. Anyone who witnessed the farce you call support of competition, bottom up consensus building, a public comment period that was way too short for any widespread involvement, and careful review and evaluation knows that none of what you claim happened did happen."

II.                Policy Concerns Related to the Recognition of Alternate Roots


There are several important policy reasons for a single, unique root.

First, the legal analysis described above is crucial because it protects the functionality of the Internet. Without that protection, a recognized unique root, such as the authoritative root, and a designated process for populating that root with additional TLDs, the Internet would quickly become dysfunctional with a proliferation of competing and conflicting TLDs.  This is because alternate roots would succeed in establishing protected property rights that would hinder reliable operation of the Internet.

Many argue that the alternate roots must not be recognized to avoid confusion in the DNS space.  Indeed, that has been the position of the Internet Architecture Board (the “IAB”) which oversees critical technical and administrative functions relating to administration of the Internet, including the Internet Engineering Task Force (“IETF”) which establishes the technical protocols for operation of the Internet.  In its oversight capacity, the IAB released the “IAB Technical Comment on the Unique DNS Root” which was published in May 2000. Summarized, this statement provides that to remain a functioning global network, the Internet requires the existence of a single globally unique public name space.  As IAB notes:

Put simply, deploying multiple public DNS roots would raise a very strong possibility that users of different ISPs who click on the same link on a web page could end up at different destinations, against the will of the web page designers.

This does not preclude private networks from operating their own private name spaces, but if they wish to make use of names uniquely defined for the global Internet, they have to fetch that information from the global DNS naming hierarchy, and in particular from the coordinated root servers of the global DNS naming hierarchy.

This statement provides the basic argument in support of a single unique global root such as the root operated by ICANN.  Like the telephone system where duplicate area codes would create havoc in the public switched network, alternate roots can generate significant consumer confusion and Internet instability.

The issue of Internet stability aside, other important policy grounds argue against the public recognition of alternate roots:

·        If alternate roots are recognized, anyone then could establish an alternate root and not be subject to the bottom-up consensus-building and international decision-making that was established through ICANN.  The alternate root could be free from any sort of dispute resolution policy or any type of registry or registrar license meant to protect consumers and businesses.

·        The potential for fraudulent activity is also high as “spoof” websites could be established solely to confuse consumers into believing that they are visiting the authorized Web site.    Allowing alternate roots to be recognized undercuts this authority and severely limits the ability to take action against fraudulent or criminal activity occurring on alternate roots.

·        If an IP owner determines that registrations infringe upon its rights, that legitimate owner may have little recourse outside of the courts to challenge the use of a given name.  Under the existing procedures established through the international consensus process, the UDRP was created to provide an inexpensive alternative to litigation.  Alternate roots typically do not adhere to these procedures.

·        In addition, names in the alternate roots typically are not sold through separate registrars.  Thus, like Network Solutions in its early days, they often operate as virtual monopolies by acting as both the registry and the registrar.  Thus, they reap all the benefits without adhering to any of ICANN’s well-established principles or providing choices to the Internet consumer.

·        The ICANN process, including any reformed process, would be frustrated because a large proportion of the valuable TLDs that could be selected by ICANN likely reside in some alternate root (there are hundreds of TLDs within the alternate roots – e.g. .biz, .web, .xxx, .sex, .kids, .news, .lib, .law, .k12, .USA – to name only a few).  Thus, formally recognizing the alternate roots would mean ICANN likely could never add another good TLD to its own root unless it allowed the alternate root operator to insert its registrations, which often are cybersquatting registrations, into the new ICANN TLD.  Moreover, because there is no necessary process for forming a new alternate root, and because the ICANN process is entirely open, TLD squatters could hold the ICANN process hostage by establishing new alternate roots as soon as they are identified in ICANN applications.

·        DNS services have become critical elements of the Internet.  Although, as a technical matter, many TLDs arguably can easily be added to the Internet without technical mishap, the failure of a registry operator after its registrants have invested significant resources in establishing its domain presence could have a catastrophic effect on the Internet economy.  Many alternate roots are not sufficiently funded to take on the task of managing mission critical infrastructure.  Thus, turning over the mission critical DNS to alternate roots could jeopardize the stability of the Internet.

III.             Conclusion

The alternate roots have chosen to operate separate and apart from the public root system, and do not have any property right in any TLD that is recognized under existing law.  Moreover, those who wished to be considered as candidates to operate a new ICANN chosen TLD, participated in ICANN’s selection process.  This process was public, fair, and comprehensive.  The complaints raised by the alternate roots, who chose not to participate, should not be considered now, especially since they have no legal merit. 

From NameCritic; "By your own quote of the provisions that the BIZTLD Registry includes in their agreement you prove they planned to be included in the ONE root system and had no plans to attempt to keep .biz outside of the legacy root. It clearly states that ICANN may not choose to include them, therefore your inclusion of an argument against having multiple roots supported bears no weight on the dot biz issue and again seems to be another diversionary tactic and one that would make some readers relate the existing .biz to some outlaw organization. This I consider a contemptable way to attempt to prove your point, but I also sympathize since misinforming others and stretching the truth and insinuations and accusations are the only avenues left to someone with no real substance behind their argument. But I can't help but think after reading your statements here that those methods are ones you feel very comfortable with and are very familiar with."

From NameCritic; "The bottom line is someone was already using it. Only cooperation will add to the stability of the Internet. Purposely creating conflicts in this manner are not the way to insure the future stability of the Internet. ICANN needs to garner more public opinion before making decisions that affect users worldwide. Individual Users deserve representation. Since there is a Constituency to Represent TM Holders seperate from the one that represents businesses, (The same people with 2 sets of votes), and considering the WIPO finds FOR the TM Holders in over 80% of cases against Domain Name Holders, Then Domain Name Holders ALSO need to have some representation within the DNSO. To have something called the Domain NameSupporting Organization, but NOT have a Domain Name Holder's Constituency is obviously weighted in the favor of large corporate interests and seems ridiculous given the nature of what the DNSO is."

From NameCritic; "Those are facts. They are stated by one that will in no way benefit from the inclusion of tlds either made up in the future or ones that exist now in cooperative and inclusive root systems. I manage or own NO TLDs or Roots. I own some domain names that are generic and all in the dot com tld. I also am Executive Director of an organization called The KidSearch Network that finds missing children and don't have a missing child myself. I am just someone who would like to see right triumph over might."

Chris McElroy AKA NameCritic

Past Participant in the WG-Review

Participant in the General Assembly

Supporter Of an Individual's Constituency

Supporter of an Individual Domain Name Holder's Constituency

Against Corporate control of the Internet and lack of representation for the Users of the Internet within the ICANN and DNSO

--------------------------------------------------------------------------------

[1] Penn Central Transportation, Co. v. New York City, 438 U.S. 104 (1978).

[2]  WIPO is the World Intellectual Property Organization.

[3] For example, the U.S. Patent and Trademark Office policy states that  “Generic tlds are designated for use by the public.”  The U.S. Patent and Trademark Office will accordingly refuse registration of a tld for “domain name registry services” under 15 U.S.C. § 1051 as a designation incapable of functioning as a trademark.  Examination Guide No. 2-99 (September 29, 1999).

[4] Singer Mfg. Co. v. June Mfg. Co., 164 U.S. 169, 41 L.Ed 118, 16 S. Ct. 1002 (1896) (generic terms are in the public domain, free for all to use); Abercrombie & Fitch Co. v.  Hunting World, Inc. 537 F.2d 4, 189 U.S.P.Q. 759, 769 (2d Cir. 1976) (to protect a generic name would be to confer a monopoly in the sale of the named product); Restatement (Third) of Unfair Competition, Section 15, comment a (1995) ("Generic designations are not subject to appropriation as trademarks at common law and are ineligible for registration under state and federal trademark statutes.")

[5] Image Online Design, Inc., v. Core Association, 120 F.Supp.2d 870 (C.D. Ca. 2000).

[6] The main reason TLD’s are not copied is because the Internet could not function smoothly with identical TLD’s on the same root.

[7] While Atlantic Root argues that the Memorandum of Understanding between ICANN and the Department of Commerce specifically provides that the process not be “arbitrary,” the process was not arbitrary and Atlantic Root could never sustain the extraordinarily high burden it would have to meet to establish that it was a third party beneficiary to a government contract. See Moore v. Gaither, 767 A.2d 278, 287 (D.C. 2001) (ruling that third party beneficiary of a government contract is generally assumed to be merely an incidental benficiary); see also, Iacampo v. Hasbro, 929 F. Supp. 562, 580 (D.R.I. 1996) (requiring plaintiff to meet a "heightened standard" in order to assert rights under a government contract) (emphasis added).


       
     
     
     

 


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