John Berryhill writes:
“One of my favorite examples of this sort of gaming was the filing, in the US, of a trademark application for the term “PAINT.BIZ” by a large paint company prior to the launch of .biz. During the subsequent trademark dispute procedure that was applied to the .biz TLD, and because some of the retired judges used to decide these disputes have no basic understanding of the difference between a pending application and an enforcible trademark right, this paint company leveraged their pending trademark application into a claim of entitlement to the domain name paint.biz, and prevailed. Never mind that the underlying application was refused by the United States Patent and Trademark Office, and then subsequently abandoned. The application served its purpose. Not inclined to wait for the preferred treatment offered to trademark owners, Sun Microsystems had its attorney pre-emptively threaten the .biz registry with litigation if it so much as thought of registering “Sun.biz” to any other party (presumably including any of the other trademark claimants to “SUN”).
Similarly, prior to the launch of the European “.eu” top-level domain name, quite a number of folks, including domain speculators, learned the apparent lesson taught by misguided and oversimplified trademark protection policies applied to domain names. By the thousands, astute observers rushed into the Benelux trademark office, which was identified as being the most rapid route to obtaining an entry pass into the preferred round of domain registrations run for trademark claimants by the .eu registry. The result - by the time the registry was opened for general public registration, there was not a valuable dictionary word to be had.
So, what does this have to do with ICANN proposing to auction single character domain names, and Overstock.com / Marilyn Cade’s urgings that such a process respect “established/prior use”. The answer is - everything. The discussion of single character domain names has proceeded for several years now, with nary a nod to the fun and games that have been transpiring in the United States Patent and Trademark Office and, likely indeed, various other trademark registration authorities around the world.
Whether or not ICANN decides to auction the allocation of single letter domain names, there is going to be a line of trademark claimants doing what trademark claimants do best - shouting “me first” and threatening litigation because, yes, they believe they “own” individual letters of the alphabet concatenated with “.com”. And, I promise you this - because domain policy makers have historically been absolutely ignorant to the manner in which trademarks function as identifiers in connection with specific goods and services, and are not “monopolies in words”, those shouts will be heard.
And
We have reached the point - actually we reached it some time ago - where those familiar with formal trademark registration mechanisms have proven themselves to be as equally adept, and equally principled, as the abusive domain registrants who inspired domain policy makers to have the trademark tail wag the domain name dog. The notion that anyone who has been playing the game of token trademark use, or uses of phony “.com marks” solely for the purpose of establishing a position is not an “established / prior use” that is worthy of any respect whatsoever in the process of allocating single letter domain names. The use of a well-intentioned system for protecting consumers, and for registration of existing claims of right, for the concoction of phony, token claims, does not deserve any “respect” - it deserves our contempt.
Read the full article at the link above.
I said this time and again, trademarks and the web are like oil and water - they do not mix very well. I understand saying that is not going to change anything right but sometimes, a complete paradigm shift is the real solution to a completely broken and constantly abused system.
This is interesting. I registered the trademark and used the company name “b.com” in the UK around 1994, when I was trying to persuade NSI to release more of the single letter .coms (a couple had already been released early on, such as x.com).
I was hoping to prove my use of the name and be able to grab the domain as soon as it became available.
Ah, those were the days!
- Charles
Yes, but they were all too dumb to even get a sniff at the non-Latin names. Sun didn’t even get the dot com in single character they use use on their Japanese Web Site. They might shake a stick at just about everything that moves, but if you look carefully, it is a White Stick.