Dear Sirs –
I am Georg Panzer, legal counsel for Global Name Registry, Inc. (GNR),
the applicant for i.a. the proposed “name” top-level domain. I wish to respond to
Mr. David Kam’s claim that there exist intellectual trademark rights in the use of
the dictionary term “name” as a top-level domain.
Mr. David Kam has thus far only
brought his claims to our attention through this public comment forum. Even though
we have not yet received any letter from Mr. Kam’s lawyers, we whish to comment upon
his claim to hold intellectual property rights over the term “name” as a top-level
A search at the US Patent and Trademark Office do not reveal that there
is an application pending for the terms “.name” or “name” as Mr. Kam claims. There
is however an application pending for “dot name dot name” with the application number.
This application is 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”. All of these applications where lodged this year.
trademark search thus did not reveal any trademark application for “.name”, only
for the terms “dot name dot name”. We are however assuming that Mr. Kam is correct
when he states that a trademark application also has been lodged for “.name”.
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:
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® 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.
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 not documented any evidence that
the North Pole of America’s use of the “.name” can be considered famous neither in
the United States nor in any other jurisdiction.
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 legally relevant, since it indicates its motivation
is to 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.
Finally, I would comment
upon Mr. Kam’s opinion that GNR’s proposal for “.name” constitutes “cybersquatting”.
We respect Mr. Kam’s view, but we beg to differ. The idea behind the proposal, is
to let all people with the same last name share a domain name, so that both Jane
Smith of London and Joe Smith of San Francisco can use the domains “jane.smith.name”
and “joe.smith.name” at the same time and independent form each other. It is more
fitting to describe our proposal in terms of an “escrow agent” than a “cybersquatter”.
In fact, a similar matter was at issue in Avery Dennsion v. Sumpton (US 9th Circuit
Court of Appeals), and in that instance the court did not consider the matter to
The Global Name Registry, Inc/Nameplanet.com,