Re: [wg-c] I/O Design Initiates Legal Proceedings against CORE

[Milton Mueller <mueller@syr.edu>]

I partially agree with this analysis. A proprietary TLD is primarily an
exclusive right to administer a zone file, and the claim to exclusivity derives
from the operation of that registry and not from the trademark per se. I am
approaching this not from a trademark law standpoint but from the standpoint of
regulatory economics, which tells us that a business that has a property right
over an asset is more likely to invest in it and cultivate its value than an
asset that is not owned. That is why I think numerous competing, exclusive
registries should be authorized.

As I stated in an earlier post, one could make a legitimate claim to operate a
branded dot web registry without gaining any rights over the use of the term
"web" in other contexts. It is clear from the news release that Ambler is not
claiming a "copyright" or patent-type exclusivity over the term "web," as if he
invented it or own it. He is claiming an exclusive right to run the dot web
zone. I suspect the same is true of CORE.

However, I can see a problem in Kevin's claim that one cannot get from a
trademark to exclusivity of TLD names. If ICANN attempted to authorize a .ibm
TLD and gave it to someone to administer other than IBM, don't you think IBM
would make--and probably win--a trademark claim?

Kevin J. Connolly wrote:

> Dear Readers:
>
> ICANN's involvement in this lovefest should be sharp but limited.
>
> Reputedly, ISOC and ISI have been instrumental in establishing
> that "Internet" is not trademarkable; the same should be recognized
> as true of .web (as well as the other gTLDs that CORE is said to
> have filed trademark applications for).
>
> It is hornbook law that a word in common usage cannot be
> appropriated as a trademark unless it is being applied to goods or
> services in an arbitrary, fanciful, non-descriptive manner.
>
> I don't think that there is any doubt but that under principles of
> US trademark law, neither IOD nor CORE has a right to appropriate
> .web as a top level domain.  Exclusivity over top levels domains
> must derive (if it is to exist at all) from some source other than trademark
> law.
>
> Kevin J. Connolly
>
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