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

[Milton Mueller <mueller@syr.edu>]

Rod Dixon wrote:

> The important point is that some of us do not find a problem with
> adopting a gTLD that someone may have a property interest in.

I agree. As you may have noticed, I have been arguing for a mixed approach to new
gTLDs that allows both shared and proprietary approaches.

> If we care
> to discuss this more seriously, then we should probably unwrap this
> property issue more carefully.

We definitely should, it is the crux of the matter. Don't be bashful about pointing
out where I or anyone else is "off the mark," as long as it advances our
consideration of these issues.

Incidentally, those who say that there should be no exclusive gTLD delegations are in
effect saying that exclusivity should be vested entirely in ICANN. There is no escape
from exclusivity of rights. The only question is how distributed it is going to be.

> Milton Mueller wrote:
> >
> > 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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> > --
> > m i l t o n   m u e l l e r // m u e l l e r @ s y r . e d u
> > syracuse university          http://istweb.syr.edu/~mueller/
>
> --
>
> Rod Dixon, J.D., LL.M.
> Visiting Assistant Professor of Law
> Rutgers University School of Law - Camden
> rod@cyberspaces.org
> http://www.cyberspaces.org



--
m i l t o n   m u e l l e r // m u e l l e r @ s y r . e d u
syracuse university          http://istweb.syr.edu/~mueller/