[wg-c] A branded TLD would be .nsi

["Martin B. Schwimmer" <martys@interport.net>]

>Martin B. Schwimmer wrote:
>
>> In its trademark applications for DOT COM MAIL, DOT COM DIRECTORY, DOT COM
>> PEOPLE and DOT COM TOOLKIT.
>>
>> As an aside, Sun has filed for "We're the dot in dot com" and Imedia has
>> filed for "We're the com in dot com."
>>
>> Assuming for the sake of argument, that NSI did claim trademark rights in
>> .com, then it could be argued that someone who used .com as a trading name
>> was a licensee, so amazon.com and sexwithanimals.com (it exists) would be
>> licensees of NSI.  However NSI has repeatedly stated that it is not
>> responsible for the content of web pages, so i guess it doesn't exert
>> quality control on its licensees.
>

Mueller:

>There is some confusion going on here.
>(And this aspect of the issue IS relevant to this WG)
>
>Does Martin understand what a "zone file" is and
>what it means to administer one exclusively vs.
>shared? (No offense intended--we just need to know)


We're talking about different points.

No offense taken.  We were talking about whether NSI owned a trademark in
the mark ".com", not whether it does or should or should not administer a
zone file.  If NY State contracted the right to a private company (named
XYZ) to be the sole administer of LLC incorporation services, it would not
follow that the private corporation would own a trademark in the term LLC
as opposed to owning the trademark XYZ.



>
>NSI's trademark applications for trademarks on words
>such as "dot com mail" et al
>are not the same thing as an attempt to establish
>exclusive rights to administer a zone file. The example
>of Sun makes this clear--you can trademark some
>slogans or marks with "com" in it without even being
>in the registry business.

Agreed, because the term .com doesn't function as a trademark.  Sun could
not use the slogan "We put the N in NSI."  


>
>Both Ambler and NSI want to be the exclusive registry
>for a specific TLD string, .web and .com respectively.
>Those claims as I understand them in no way involve
>a claim that the string ".web" or ".com" belongs to them,
>whenever they are used. It is simply a claim that
>no one else can register names under .web and .com on
>the common root of the Internet. It is a claim to exclusivity
>of a certain type of service as branded by the TLD.

As branded by the TLD administrator's trademark.  Ambler's and NSI's claims
would rise or fall on issues other than trademark law.  However, both
entities to my knowledge (and other entities) have filed trademark
applications or made trademark claims for TLD suffixes apparently to
buttress those claims.    



>Thus, I don't think anyone using a domain name under
>.com needs to be considered a licensee of NSI, anymore
>than a basketball player wearing Nike shoes needs to be
>licensed by Nike. (Indeed, the money flows in the opposite
>direction: Nike pays the player to wear the shoes in
>public, not vice-versa.)
>

Not analogous, as in this case the DN owner doesn't wear the suffix, it
often incorporates the TLD suffix as part of its mark, as in amazon.com or
drugstore.com or 1-800-flowers.com. PEPSICO, AMOCO, CITICORP and my
favorite, ESPRIT DE CORP are all trademarks which incorporate corporate
suffixes, which suggests why the suffixes themselves couldn't function as
identifiers of a single source.


>I would still like to see a TM lawyer explain why
>TLDs can't be branded. 

Has a TM lawyer argued that they can't (as opposed to arguing that they
shouldn't, on non-TM grounds)?

I see utterly no distinction
>between the association of a trademark with the
>administration of a zone file and the association of a
>trademark with any other good or service. Because the
>TLD is, by definition, the identifier of the administrator
>of the zone file, and because there is no portability
>across registries, such branding helps consumers to
>identify the origin of a service.

No.  TLD, by definition, stands for top level domain.  .edu identifies the
domain, not the domain identifier.  The adminstrators of .com, .edu, .org
and .net are not the same in 1999 as they were in 1991, and yet the TLDs
themselves are unchanged.



 All the rationales for
>trademark protection apply.

I didn't say that TLDs couldn't theoretically be branded.  They could be
branded. I understand that you are a big advocate of branded TLDs but that
is not the point - the point is NSI's claim today, in 1999, while it is a
government contractor, that it already owns a trademark in the term ".com"
(in addition to its brand "NSI").  NSI is a brand for DNS services as is
CORE and register.com and MELBOURNE-IT.  

If this working group wishes to recommend, and the NC wants to recommend,
and ICANN wants to adopt "branded" registries (or more to the point -
exclusive and not shared registries), that is one issue which will be
decided on non-trademark grounds.  The point is that NSI appears to be
utilizing, among other arguments, a trademark argument, for being granted a
perpetual monopoly in the administration of the .com TLD, and I am
commenting on the possible legal short-comings of that trademark argument.

NSI is a trademark, .com is a generic TLD suffix. 

 

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