I am Georg Panzer, legal consel for Global Name Registry,
Ltd. (GNR), the applicant for the .NAME top-level domain. Mr David Kam makes a number
of claims with regard to the ICANN process of opening up the domain name space with
new top-level domains. I will address the claims that directly involve GNR, particularly
the claim that .NAME might violate pending US trademarks.This claim was first
brought to our attention on ICANN's public forum on New TLD Applications, which was
closed on November 5th, 2000, but can still be read. We responded to that claim.
We have not received any other communication from Mr David Kam, his companies, or
his lawyers. We are unaware of the letter of November 7th, 2000 that he apparently
should have sent us. We have also not received any reminders for not answering such
a letter.
A search at the US Patent and Trademark Office made at the beginning
of November last year, do not reveal that there is an application pending for the
strings ".name" or "name" as Mr. Kam claims. There was however an application pending
for "dot name dot name" (sic). This application was on behalf of the company North
Pole of America. Other applications on behalf of the same company are:
".music";
".mp3"; "universal"; ".mail"; ".rtm"; ".chat"; ".info"; ".tel"; ".movie"; ".inc";
".brand"; ".news"; ".shop"; ".nm"; "personal internet";and "dot name dot name" (twice
dot name). All of these applications where submitted last year.
However, assuming
that Mr David Kam has made an application for the
string ".name", we are still
of the opinion that it would not be granted. It is a principle in trademark law that
trademarks that are equal to dictionary terms should not be granted if they are descriptive
of the goods and services they are supposed to protect. Further, if a trademark that
is close to a dictionary term, it will only enjoy a "weak" legal protection vis-à-vis
other similar uses
of that term. In this regard I would like to point to
the United States Patent and Trademark Office Trademark Examination Guide No. 2-99,
which states in Section II.D:
"If a mark is composed solely of a TLD for 'domain
name registry services' (e.g., the services currently provided by Network Solutions,
Inc. of registering .com domain names), registration should be refused under Trademark
Act §§1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1503 and 1127, on the ground that the
TLD would not be perceived as a mark. The examining attorney should include evidence
from the NEXIS(r) database, the Internet, or other sources to show
that the proposed
mark is currently used as a TLD or is under consideration as a new TLD."
CORE's
trademark application for ".web" was e.g. rejected by the US Patent and Trademark
Office based on these guidelines. Further in Image Online Design, Inc. v. CORE Ass'n
(US District Court - Central District of California), the district court disavowed
the plaintiff's (Image Online Design, Inc.) claim to have common law trademark rights
in ".web" as a top-level domain.
Even if The North Pole of America is granted trademark
rights in the US, it will not necessary imply that these rights would be acknowledged
in other jurisdictions. It is a well-known fact that the same trademark can co-exist
with regard to different services/goods or in different jurisdictions. Mr. Kam is
however correct when he states that a foreign trademark often have a special protection
under the Paris Convention, in so far that the trademark can be considered famous.
Mr Kam has apparently contractual agreements with several
ISPs, a claim that
we have not verified. However, this fall under any
circumstance far short of
what is considered "famous" in the legal sense of the word. "Famous" would be trademarks
such as Coca-Cola, Ford. Disney etc.
The fact that the North Pole of America has
several trademarks pending that are equal or similar to several of the proposed top-level
domains is also legally relevant, since it indicates its motivation is to free ride,
complicate and hinder bona fide applications for new top-level domains, such as GNR's
application for .NAME.
Based on the above, we are of the opinion that Mr. Kam's
claims are unfounded. We emphasise however that we solely base our opinion on the
claims put forward in this public forum, and that we have not received any elaboration
on the claims from Mr. Kam's legal counsel.
Sincerely yours,
The Global
Name Registry, Ltd./Nameplanet.com, Ltd.
Georg Panzer
General counsel