The domain industry got another black eye when Toyota.me became the highest priced .me domain sale, at over 90K.
In the next few years there may be hundreds of new extensions (gTLD’s) and each one will increase the trademark problem, unless some policy is adopted to head it off.
Trademark holders can apply for their domain during the sunrise period of a domain extension launch.
Sunrise period application are always priced substantially higher than regular registration during the land rush. For example .asia sunrise applications were $100 plus registration fee.
Trademark holders claim that the cost of applying during the sunrise period, for all of the various domain extensions is a financial burden to them, especially companies holding hundreds or thousands of trademarks.
WIPO decisions have consistently held that the failure of a trademark holder to apply for a domain does not permit others from using the domain.
On the other hand during sunrise periods registries have granted application for terms clearly not subject to being trademarked. I have seen applications during the sunrise period granted for terms like “fuck”, and “internet”.
Yesterday we posted about an ICANN report that found 40% of the domain granted during the sunrise period of .info were improper and eventually reversed, however there are still names that were never re-allocated some 6 years later.
Registries currently has no incentive to reject sunrise applications. They get there application fee either way, and its easier just to grant them, then to reject them.
Clearly the whole process is full of problems and abuses.
The sunrise period should not be allowed to afford people to obtain domains they have no right to.
Trademark holder should not be forced to spend substantial amounts on domains they are entitled to by law (and which no one else can use).
So here is our proposal.
From this point forward ICANN should require as part of any new gTLD or any new TLD application, that trademark holder be given their domain name(s) during the sunrise period.
Application fees for the sunrise period should be set high, $500 per, but fully refundable if the registry determines that the application for trademark is valid, but non-refundable if the registry determines that the application was bogus.
Here the benefits this proposal:
Trademark holders can protect their marks from abuse.
Registries will have a vested interest in throwing out bogus application thereby making these names available to the general public in the initial land rush, not 6 years later.
Registries will not profit from selling trademarked domains like the .me registry did with Toyota.me, coke.me, pepsi.me and dozens others.
The domain industry will look like it is taking steps to curtail the trademark problem heading off legislation down the line. At the current pace, trademark holders will continue to lobby congress telling them that the current system is unfair to them and abuses their intellictual property.
Once again if the industry does not clean up their problems, at some point, congress will.
Careful.
While I have no problem with unqiue TM domains such as Toyota.me, Pepsi.me, Yahoo.me, etc, being automatically handed over to those companies, your suggestion could also open the door for any generic TM owner to get the same.
For example, there are multiple trademarks for the word Mosquito. Does this mean that all future TLDs with the word Mosquito should go to one of those TM owners?
I believe the difference is in the uniqueness (or in the case of Coke – overwhelming popularity) of the word. The sale of Toyota.me was an extremely boneheaded move, but we don’t want to throw all of the domain babies out with the bathwater.
David
If the owner of the trademark Mosquito applies during the sunrise period they will get the domain awarded under the present rules.
I have a domain that is trademarked and I use it as a site that is critical of the trademark holder which is a valid and legal use.
As long as it is the case where this is permissible I see no reason why allowing domains like “toyota.me” is a problem that the registrars should deal with. Perhaps the fellow who obtained “toyota.me” intends to call attention to the trademark holder’s poor customer service or their polluting ways – a valid and legitimate use of the “trademarked” domain.
Which is why I don’t see that the sale of Toyota.me was “boneheaded” and also why I think that “The sunrise period should not be allowed to afford people to obtain domains they have no right to” is not a valid statement since I do indeed have a “right” to that domain and that is my right to be critical – I’m hoping that particular right of mine will always be mine.
I understand, but I believe that recognized unique word/trademarks such as Toyota.me or Pepsi.me should be held back by the registrar.
The current TM system is ill equiped to handle the domain industry. Regardless of the criticism leveled at some UDRP decisions, they have done an excellent job at trying to sort the unique trademark owners from those trying to say they have unilateral rights to a generic word or phrase.
Greg:
You may not find the sale of Toyota.me boneheaded, but I can assure you it is for a variety of reasons. Here are a couple:
First, it feeds the growing legion of companies who missed out on getting domains they wanted, don’t want to pay fair market for them and inspires them to believe that we are an industry without code or ethics. And the moment that happens, broad legislation that will take these names will swoop in and “save the day.”
Second, only someone living under a rock really believes they can hold onto these names. It is frightening to see what some domainers in 2008 still believe they can get away with. And the more they try,t he more it rings the dinner bell for organizations like CADNA. Check this out: http://www.dnxpert.com/2008/08/30/wipo-arbitration-and-mediation-center-rules-for-google-in-another-wipo-case/
David
exactly
Changes must be made, otherwise they will be made for us.
My proposal is basically an economic one.
If a trademark holder is entitled to say realtor.realestate why should they have to pay for it and why should they have to pay a premium for the application?
On the other hand if registries had a vested interest in preventing 40% of sunrise applications to be bogus, may be there wouldn’t be 40% fraud.
How important do you think brand protection is to major corporations?
…take the Virgin Group, they have something like 200 brands; imagine having to deal with this many names per extension.
Do you think that after the first few hundred new extensions corporations are just going to give up on domains?
Not to mention cost if the refund proposal is ignored.
Nice post.
Many words are trademarked worldwide so just because someone owns a domain name with the trademarked words does not mean that they can take the domain name from the party that owns it.
With the new domain name ext. being out in the open in the near future I can see many lawyers getting worked out and cashing in big time.
A trademark holding Company in the USA suing another trademark holding company in the UK for the same word – the right to register that trademarked word as a domain name ext.
Welcome to the Nightmare ICANN – style
Interesting idea, but surely this would just provide registrars with an incentive to reject applications, or question further the validity of legitimate applications?
Ray
I think they gave up already.
Look at all the .me trademark domains that went unclaimed during the sunrise period.
Once 100’s of new extension come along the problem is going to get out of hand and these companies are going to congress to pass laws to fix it.
If we let these companies have their trademarks for free, the problem is solved.
Moreover bogus trademark applications can be eliminated
Gareth
“”””this would just provide registrars with an incentive to reject applications, or question further the validity of legitimate applications?””””
Exactly
40% of sunrise applications were found to be bogus but granted and some of these names are still unallocated years later.
This is a problem.
The applications do need to be looked at better and more need to be thrown out.
Toyota is also the name of a city
http://en.wikipedia.org/wiki/Toyota,_Aichi
Toyota is a surname
http://www.oac.cdlib.org/findaid/ark:/13030/ft3s2002qv
There are other “Toyota” businesses:
http://tess2.uspto.gov/bin/showfield?f=doc&state=qsfi51.2.14
http://www.toyotaforms.com/
David
Sure, Sure
But look at the parking page for Toyota.me
*
Related Searches
* Car For Sale
* Toyota
* Used Cars
* Car Dealer
* Auto Dealer
* New Car Price
* Car Price
* Auto Price
* Volvo
*
Related Searches
* Automobile Dealer
* Ford
* New Car
* Car Sale
* Sport Car
* Honda
Ok case closed.
No city
No surname
No form business
Trademark infringement that Godaddy made 90K for selling it
The Toyota example shows that it’s not domain names but their use that infringes trademarks. A registrar therefore can’t know beforehand if a domain name is legimate or not.
Jeroen
It is the domain name that infringe and the way its used is just further proof.
You couldn’t register disneymovies.com or disney.me, no matter how you use it, without being a trademark infringing domain.
Beside registries do this now. Each time a new extension comes out their is a sunrise period where any “trademark” holder can have their domain assigned.
The problem is that the registry is charging for something the trademark holder already has a right to, and they also approve bogus application.
“It is the domain name that infringe and the way its used is just further proof.”
Well, the lawyer that I spoke with (specializes in domain disputes) told me that as long as I used my (trademarked) domain for the purpose of being critical of the trademark holder that it was a legitimate use.
The lawyer I spoke with was Zak Muscovitch at dnattorney dot com – I also investigated a lot of the legal decisions and they seemed to confirm what Mr. Muscovitch told me.
The domain that I have and use for my “critiques” is the name of a very powerful entity that is quite capable of going to court as going to court is pretty much the main thing that it does.
Greg. You’ve got some balls or a lot of money. Lucky u.
Well…the Registry could always hold back the registration, though they won’t be able to make money out of auctioning it. 😀
Domain names per se don’t infringe on their own, though it doesn’t stop some trademark holders from believing otherwise anyway.
Do you think that after the first few hundred new extensions corporations are just going to give up on domains?
John
Give up enforcing their trademarks?, NO
Going to congress and complain that there overwhelmed, YES