Does the public really want new generic top-level domains (gTLDs)?

Most people that use the Internet are familiar with the generic top-level domains (gTLDs): .com, .net, etc., and use them on a daily basis. These gTLDs have gained a level of cachet, and are more commonly used than country specific domain names (e.g. .co.uk or .jp) by companies. In the past, users traditionally would use a search engine to find a website for a company. Now most users simply add ".com" to the company's name (or trademark) to find the website. Due to the popularity of .com, most of the "desirable" domain names are already registered. It can be difficult to register a new domain name in the .com space, unless it's something bizarre (sdfjhdskjfhsdwh.com) or unwieldy (like joeswestlosangelesrestaurantandbar.com rather than joesbar.com).

Because of the desire to have simple, easy to remember (and search engine optimization-friendly) domain names, a number of attempts have been made to create new gTLDs (such as .jobs, .mobi, and .biz). These new gTLDs have not been widely adopted or successful, and there are some indications that they are not profitable in the long term. New gTLDs pose risks to trademark holders (who likely already have registered the .com, .net, etc. version of their trademarks), and thus they often register their marks in the new gTLD (even if there is no intent to use the new domain name).

The logic is that it is cheaper and easier to register a domain name in a new gTLD than to have a competitor or cybersquatter do so (and thus have to litigate or use other methods to recover the domain name). Most new gTLDs have a sunrise period when trademark holders can preregister their trademarks- sometimes necessitating payment of hundreds of dollars in addition to registration fees. I have heard grumblings from my trademark colleagues that this is the only time that new gTLDs are really profitable. Observing how little these gTLDs are used and/or promoted, I tend to agree.

In spite of this, domain name registrars are convinced that new gTLDs (such as .sex, .berlin and .nyc) are desperately needed. If you have attended an ICANN meeting in the past decade (I have), this very vocal group constantly has pushed for allowing their gTLD to be accepted, or for opening the gates wide open and allowing for pretty much anything to be setup as a gTLD. It looks like ICANN got sick of the complaining, and has decided to implement unrestricted gTLDs.

Let's just say that this decision scared the hell out of trademark holders. They imagine having to register their marks in dozens (hundreds?) of new gTLDs each year, maybe costing upwards of tens of thousands of dollars annually (for domains they have no desire to use). I work for such a trademark holder, and I agree with them. I have no idea how much it will cost, and question why we need all of these domains.

ICANN recently brought on a new president, Rod Beckstrom. In an interview with the Washington Post, Mr. Beckstrom said:

ICANN is simply asking the global community of IP attorneys and others to develop the best possible solutions they can which can actually be implemented. But one of the solutions is not avoiding the gTLDs, because there's tremendous demand from all over the world to have those, and the number of companies who are opposing them appear to be a minority compared to those who think they should be out there and present.

I added the emphasis. Yes, Mr. Beckstrom says that the public is clamoring for these new gTLDs. I was shocked to read this. I have been a server administrator since 1993 (when I ran my college's Gopher server), first professionally then as a hobby (I still administer the server hosting this blog). I am a rare attorney that actually understands and has worked to administer the underlying technology of the Internet. I am, for lack of a better description, a computer geek that spends a lot of time using and learning about the Internet.

I have not heard of a single general Internet user demanding new gTLDs. Most users do not even know what a gTLD is. The only time I have heard anyone demanding opening up new gTLDs is by domain name registrars and other companies that would make money from the registration of new domain names.

So, I decided to research if the public really is excited about new gTLDs. Not surprisingly, there was little info out there on this. I did, however, find one survey that was actually conducted by a registrar (Gandi Bar). The results are telling:

The majority of consumers polled (60%) agree that the liberalisation of domain name extensions will change the way they use the Internet, but not for the better. The sceptical amongst them believe that the Internet will become full of pointless domain names (for 65% of the people polled), messy and confusing (57%), too complex to navigate (46%) and out of control (41%).

Consumers muster little enthusiasm for any new top-level domains. A quarter of people are ambivalent about the prospect of a .music suffix and 28% would be wary of domains ending with .theirprofession. Just 15% think this sort of suffix would be appealing. Consumers are most suspicious of extensions linked to porn and religion. A massive 84% of consumers think .sex is dodgy, and two thirds think .god is suspect.

This registrar is admitting that the public doesn't want these new, and likely confusing, gTLDs. Gone will be the days when you can add .com to a trademark or company name to find their website, you'll have to poke around through search engines to find them. The public understands this, and doesn't want this.

I decided to contact Mr. Beckstrom about his comments. Mr. Beckstrom, to his credit, is easy to contact online (he followed me back on Twitter and responded to my email within a day). I asked him how he could reconcile his statement with the survey I quoted (along with my own personal observations and experience). I told him that I, as an attorney with a company that has a very important trademark portfolio, would work with ICANN if we knew that the public really wants these new gTLDs. If it's just registrars and not end users who want this, then obviously we trademark holders have some legitimate concerns about costs and loss of trademark rights.

Mr. Beckstrom replied that he received my email, appreciated my feedback, and would follow up once he had time to review my request. That was July 6, 2009- I'll post again when I hear back from him.

Thanks to Ron Coleman for inspiring me to write this post.

Internet Trademark Domain Name Disputes

The National Arbitration Forum just released three decisions regarding trademark domain name disputes, which is commonly referred to as "cybersquatting." The three cases illustrate different how to win an internet domain name trademark dispute, and how not to.

Magic Johnson

The first domain name is MagicJohnsonTravelGroup.com. June Bug Enterprises, on behalf of basketball legend Magic Johnson and his latest venture Magic Johnson Travel Group, filed to recover the domain name MagicJohnsonTravelGroup.com. A few days after the announcement of the formation of the Magic Johnson Travel Group, myspecialprice.com registered the domain name in question. myspecialprice.com had no rights to utilize the terms "Magic Johnson," and provided pay-per-click ads on the website. The Forum found for Magic Johnson, and ordered the domain name transferred from myspecialprice.com to Magic Johnson. This case illustrates the importance of registering domain names for your trademarks- especially before announcing your new trademarks to the public. The cost of registering the domain name is a lot lower (and quicker) than having to arbitrate over the domain name. The full decision is June Bug Enterprises, Inc. v. myspecialprice.com

War Games

In 1983, Metro-Goldwyn-Mayer Studios ("MGM") produced the hit movie "War Games." In 1998, World Readable registered the domain name wargames.com. For 8 years, pay-per-click ads appeared on the website, and in 2006 the website began selling military simulation war games.

The arbitrator found that although the marks were identical, MGM failed to show the 3 requirements to transfer a domain name:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

The arbitrator found that World Readable had legitimate rights in the domain name, in light of the sale of products. This case highlights the importance of policing your trademarks, and for acting immediately to address infringers. If MGM had gone after World Readable 5 years ago, when they were only showing ads, then they would have likely been successful in obtaining the domain name. The full decision is Metro-Goldwyn-Mayer Studios Inc. v. World Readable c/o R.L. Cadenhead.

Pig

The third case involves the trademark "pig." Canadian Adam Dicker registered the domain name pig.com. New Pig Corporation has been using the trademark "pig" since 1987 for industrial absorbents, containment products, waste handling equipment, distribution, sales and service related to such products. Mr. Dickler has been using the pig.com domain name to show pay-per-click ads. The arbitrators found that since Mr. Dicker had not registered the domain name in bad faith (e.g. he did not intend to usurp New Pig's trademark rights, and obtained the domain name because of it's desirable 1 word format), then New Pig had not proven the necessary elements to force transfer of the domain name.

Mr. Dicker purchased the domain name in an auction in 2006. New Pig should have been policing the mark and the domain name, and could have won it through the auction. They gambled through the arbitration process, and in the end, do not have a domain name with their trademark. Mr. Dickler is earning over $2 for the top click on his website, so this also demonstrates the value of domain names. The full decision is New Pig Corporation v. Adam Dicker.

Read the full press release.

Keith Urban v. Keith Urban- trademark infringement

The Smoking Gun has an interesting article today, regarding litigation by Keith Urban. The two litigants are both named Keith Urban. The plaintiff, Keith Lionel Urban, is a country musician from Nashville, Tennessee. He is the husband of Nicole Kidman who spent three well publicized months in rehab. The defendant is Keith D. Urban, of Wayne, New Jersey. He is a painter.

Keith L. Urban is unhappy that Keith D. Urban runs the website keithurban.com. He wants Keith D. Urban to stop selling his paintings on the website. Keith L. Urban was slow in registering domain names, and he uses the website keithurban.net. I did a quick search through Google for "Keith Urban," and the all of the first few pages of search results all point to the country singer, and identify his .net website.

When I first read about this website, I figured that Keith L. Urban must be back on the bottle- the other guy is actually named Keith Urban, registered the domain name first, so one could logically conclude that the painting Urban has the right to use the domain name comprising his actual name.

Then I took a look at the keithurban.com website, and I immediately knew that Keith L. Urban had a very strong case, and will likely win against Keith D. Urban. The country singer alleges that the painter is using the website of keithurban.com in bad faith, and confusing people into believing that he is the painter in addition to being the singer.

Of particular note, keithurban.com leads you to believe that it is actually the singer who does the paintings. The website prominently proclaims:

You have reached the site of Keith Urban
To Those Who Don't Know, Oil Painting
Is One Of My Hobbies.

The website later continues with:

For production reasons the print will not be the exact size as the painting, however it will be as close to the original size of the painting as possible.
The print will be autographed and numbered on the back and also comes with
a certificate of authenticity that is also autographed and numbered.

At no point does the website indicate that the individual is someone other than Keith Urban, country music star. Indeed, it leads one to believe that this may even be the Keith Urban, musician. By not clarifying this important fact, the painter Keith Urban is likely attempting to profit from the well known musician. Many people (myself included) will often go directly to a name and add ".com" when attempting to visit a website. I imagine the painter is receiving a good bump in website traffic by these accidental visits. As I noted earlier, the .com website does not show up within the first few pages of Google search results.

I have saved copies of the main page of keithurban.com, in the likely event that the website is shut down or ordered to change (and likely enter a disclaimer). Click the thumbnail image above to view the main page.

Morgan Stanley v. Meow

Most people have the impression that the legal system is very dry, oppressive and boring. Much of this derives from the at times tedious details and procedure that must be followed. Sometimes there are some very funny moments in court (I'd rather not talk about the first time I appeared in court- everyone was laughing), and other times judges and arbiters have a lot of fun with their written opinions. The opinion by the judge in the recent Da Vinci Code lawsuit contained a code of its own. I recall reading a case in law school about a house that was haunted, and it contained an absurd number of references to ghosts.

Why am I writing about this? Well, I just came across this gem, Morgan Stanley v. Meow. Honestly, that is the name of that decision. It involves cybersquatting of a domain name. Morgan Stanley petitioned for transfer of the domain mymorganstanleyplatinum.com, which had been registered by a Mr. Woods (actually, through his cat). Mr. Woods had registered some other domains comprising Morgan Stanley marks, and it appears he was able to keep the first domain name. In this case, because the domain was registered in the name of a cat, who couldn't actually register the domain name or properly instruct someone to do so, the domain name registration was held invalid.

The individual who wrote the decision, Richard Hill, certainly enjoyed himself while writing this. I applaud such efforts, because we should all amuse ourselves with our work. It makes it more exciting for ourselves, which then spreads to others. Quoting Mr. Hill:

Respondent maintains that it is a cat, that is, a well-known carnivorous quadruped which has long been domesticated. However, it is equally well-known that the common cat, whose scientific name is Felis domesticus, cannot speak or read or write. Thus, a common cat could not have submitted the Response (or even have registered the disputed domain name). Therefore, either Respondent is a different species of cat, such as the one that stars in the motion picture “Cat From Outer Space,” or Respondent’s assertion regarding its being a cat is incorrect.

If Respondent is in fact a cat from outer space, then it should have so indicated in its reply, in order to avoid unnecessary perplexity by the Panel. Further, it should have explained why a cat from outer space would allow Mr. Woods to use the disputed domain name. In the absence of such an explanation, the Panel must conclude that, if Respondent is a cat from outer space, then it may have something to hide, and this is indicative of bad faith behavior.

On the other hand, if Respondent’s assertion regarding its being a cat is incorrect, then Respondent has undoubtedly attempted to mislead this Panel and has provided incorrect WHOIS information. Such behavior is indicative of bad faith. See Video Direct Distribs. Inc. v. Video Direct, Inc., FA 94724 (Nat. Arb. Forum June 5, 2000) (finding that the respondent acted in bad faith by providing incorrect information to the registrar regarding the owner of the registered name); see also Quixtar Invs., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that use of false registration information constitutes bad faith).

Respondent cites Morgan Stanley v. Michael Woods, FA 604103 (Nat. Arb. Forum Jan. 16, 2005), in which the Panel found that Complainant had failed to prove bad faith registration and use. But that case must be distinguished from the present case, because in that case the Respondent was Mr. Woods, and not a cat or someone who has misled the Panel by pretending to be a cat.

The Panel finds that Respondent’s assertions that it is a cat provide sufficient evidence to conclude that the Respondent registered and is using the disputed domain name in bad faith. And this despite the fact that the Panel, unlike Queen Victoria, is amused.

Thank you, Mr. Hill, for making me laugh out loud hysterically at work!