Internet Corporation for Assigned Names and Numbers

Letter from Louis Touton to Mohamed Sharil Tarmizi

Mr Mohamed Sharil Tarmizi
Chair
ICANN Governmental Advisory Committee

Re: Request for Advice Concerning Trademark Claims to Top-Level Domain Codes

Dear Mr. Tarmizi:

In the Governmental Advisory Committee's past statements, including its February 2000 Principles for the Delegation and Administration of Country Code Top Level Domains (the "GAC Principles") and its August 1999 Santiago communiqué, the GAC has considered the interaction between intellectual property principles and the status of delegated ccTLD managers as trustees of public resources. The GAC's advice is stated in clause 4.2 of the GAC Principles:

4.2 No private intellectual or other property rights should inhere in the ccTLD itself, nor accrue to the delegee as the result of delegation or to any entity as a result of the management, administration or marketing of the ccTLD.

This advice, which flowed from the role of the ccTLD delegee as the designated trustee over the portion of the public namespace represented by the country code, did not have immediate applicability because application of pre-existing trademark principles led trademark authorities in various jurisdictions1 to determine that ccTLD codes are not subject to registration as trademarks.

Recent events concerning the .sg (Singapore) top-level domain, however, have made it timely for the GAC to review and, if appropriate, elaborate its views in this area. In September 1999, the delegated administrator of the .sg ccTLD, Singapore Network Information Centre (SGNIC) Pte Ltd., applied to the Singapore Register of Trade Marks to register the mark ".SG" in connection with its services. By late 2002, the Intellectual Property Office of Singapore had completed its examination of SGNIC's trademark application, and that application was published in the Singapore Trade Marks Journal so that interested parties could submit oppositions to registration.

The initial deadline for opposition to SGNIC's application to register ".SG" as a trademark was 25 January 2003. In mid-January, ICANN and SGNIC exchanged correspondence concerning whether the application to register the trademark is consistent with SGNIC's responsibilities as the designated ccTLD manager. This correspondence appears in the four attachments to this letter. As a review of that correspondence reveals, ICANN and SGNIC discussed the merits of various approaches in protecting the public interest inherent in ccTLDs. ICANN and SGNIC ultimately agreed that the issues should be referred to the GAC for its considered opinion. To allow time for the GAC's consideration, ICANN and SGNIC have agreed to extend the time for opposition to the SGNIC trademark application until 25 March 2003 (the maximum extension permitted by the Singapore trademark statute).2

ICANN would therefore appreciate any elaboration the GAC can give on public policies relevant to the acquisition by a designated ccTLD manager of intellectual-property rights in the ccTLD code established3 by the IANA and delegated by it to the manager.

Best regards,

Louis Touton
ICANN General Counsel


Notes to letter:

1. Thus, section 6.5.3 of the United Kingdom Trade Marks Registry Works Manual states that top-level domains lack distinctive character as trademarks and may not be registered as trademarks. <http://www.patent.gov.uk/tm/reference/workman/chapt6/sec6(5).pdf> Similarly, section 1215.02(d) of the United States Trademark Manual of Examining Procedure states that marks composed solely of top-level domains for "domain name registry services" may not be registered because they are not perceived as marks (i.e. they do not distinguish one vendor's products from another vendor's). <http://www.uspto.gov/web/offices/tac/tmep/1200.htm> In other words, both these trademark authorities take the view that the TLD code is descriptive of the service itself (i.e. domain names that end with the code), rather than distinguishing the vendor that distributes the service.

2. An elaboration by the GAC of its assessment of the public-policy ramifications of registration of ccTLD codes as trademarks will likely eliminate any controversy in this case. In light of the discussion of principles between ICANN and SGNIC, SGNIC has stated that it is "presently reviewing our application as to whether we should proceed or withdraw them"; that review would be informed by the GAC's advice. Similarly, the GAC's advice could inform ICANN's decision on whether to oppose SGNIC's trademark application in the event it is not withdrawn.

3. It should be noted that the IANA establishes ccTLDs based on the list of two-letter geographic designations contained in the ISO 3166-1 list. Thus, the ISO, which publishes the codes for many different uses (including the IANA's use of the codes for ccTLDs) has an interest, in common with those of ICANN and governments, in ensuring the public is free to use the ISO 3166-1 codes without hindrance by registrations of those codes as trademarks.

[For related correspondence, see Message from Lim Choon Sai to Louis Touton (14 March 2003).]


Attachment 1
16 January 2003 Message from Louis Touton to SGNIC General Manager

-------- Original Message --------
Subject: ICANN Inquiry Regarding .sg Trademark Application
Date: Thu, 16 Jan 2003 21:03:34 -0800
From: Louis Touton <touton@icann.org>
To: agneslee@nic.net.sg, dna@nic.net.sg

To: General Manager, SGNIC
Administrator, SGNIC (administrative and technical contact)

As reflected in various articles in the Singapore press, it has been brought to ICANN's attention that Singapore Network Information Centre (SGNIC) Private Limited filed trademark application T99/10980B on 30 September 1999 for the mark ".sg" and that this application was published in Trade Marks Journal No. 098/2002 on 25 November 2002.

The purpose of this message is to raise our very serious concerns with this situation and to inquire about SGNIC's reasons for pursuing this course of action. Because the period for opposition to the application will soon close, we urgently request that SGNIC provide a response no later than the close of business, Singapore time, on Monday, 20 January 2003.

ICANN, as the body responsible for coordination of the domain-name system globally (the "IANA function"), serves in a position of trust to perform its mission for the public good. The IANA has established ccTLDs to facilitate and promote the spread of the Internet globally and has designated managers from time to time to operate them, with the delegated duty to serve the Internet community during the period of that operation. As noted in RFC 1591 ("Domain Name System Structure and Delegation" by Jon Postel, March 1994) and repeated in ICP-1 ("Internet Domain Name System Structure and Delegation (ccTLD Administration and Delegation)", May 1999):

These designated authorities [TLD managers] are trustees for the delegated domain, and have a duty to serve the community.

The designated manager is the trustee of the top-level domain for both the nation, in the case of a country code, and the global Internet community.

Concerns about "rights" and "ownership" of domains are inappropriate. It is appropriate to be concerned about "responsibilities" and "service" to the community.

When SGNIC accepted the responsibility as manager at the time the .sg ccTLD was redelegated to it in June 1999, it did so according to these conditions. The filing of a trademark application seeking to claim proprietary interests in the ".sg" name appears to conflict with the above principles and to be incompatible with the basis on which the .sg delegation was made to the administration of SGNIC.

The ICANN Governmental Advisory Committee (GAC) has repeatedly spoken quite directly to this question. In clause 4.2 of its "Principles for the Delegation and Administration of Country Code Top Level Domains" (which as noted in the 8 March 2000 communique "represents the views of the national governments, distinct economies and multinational governmental and treaty organisations that comprise the GAC"), the GAC stated:

4.2 No private intellectual or other property rights should inhere in the ccTLD itself, nor accrue to the delegee as the result of delegation or to any entity as a result of the management, administration or marketing of the ccTLD.

Similarly, in its 24 August 1999 communique the GAC stated that "the Internet naming system is a public resource and that the management of a TLD Registry must be in the public interest. . . . Accordingly, the GAC considers that no private intellectual or other property rights inhere to the TLD itself nor accrue to the delegated manager of the TLD as the result of such delegation."

These assessments reinforce the longstanding policy that a manager designated by the IANA operates the delegated ccTLD as a matter of "service" and "responsibility" to the community, and is not entitled to claim "rights" and "ownership" over the ccTLD that it has been entrusted to operate for the public good.

In view of these principles, ICANN is gravely concerned by SGNIC's action in seeking to claim ownership of trademark rights in the .sg country code. (The above discussion temporarily leaves aside the issue of whether the name .sg qualifies for registration as a trademark.)

To assist in our better understanding of the circumstances, we would very much appreciate SGNIC's providing a full explanation of the reasons for its seeking to register the name .sg as a trademark, and its views as to the effect that registration would have on ICANN's discharge of its IANA responsibilities for global coordination of the Internet (including its assessment of redelegation requests in appropriate circumstances). Because the time for opposition to the SGNIC trademark application will soon expire, we urgently a response no later than the close of business, Singapore time, on Monday, 20 January 2003.

If you wish to discuss this matter by telephone, my number is +1 310-301-5815.

Best regards,

Louis Touton
ICANN General Counsel
and for the IANA


Attachment 2
20 January 2003 Message from Lim Choon Sai to Louis Touton

20 Jan 2003

Dear Mr Touton,

We refer to your email of 16 January 2003.

We note the concerns of ICANN concerning our application for ".sg" trademark which was filed in September 1999. We are happy to provide ICANN with our reasons for the course of action we took and would value ICANN's views on some questions raised below. We are also open to consider any views ICANN may have concerning our applications.

SGNIC takes its responsibilities seriously as we have always sought to act in the best interests of the global and local Internet community. SGNIC is aware of the statements you have cited in RFC 1591, ICP-1 and the GAC Communique governing the operations of ccTLD managers.

SGNIC applied for a ".sg" trademark as we felt that we had acquired a sufficient business reputation in relation to the use of ".sg" as a mark or brand for our services. It has never been our intention to use this mark for profit or to assert claims against members of the Internet community who use ".sg" as a domain name or email address, as this would clearly be contrary to SGNIC's efforts to promote the use of the Internet such as introduction of personalized domain names and the shared registry system.

SGNIC also took this course of action in the public interest, to ensure that third parties who do not have a business reputation in ".sg" cannot assert rights against any other member of the Internet community and prevent the open and equitable use of .sg. In this connection, we have a number of concerns, which we would like to seek clarification from ICANN on.

a. ICANN's policies as set out in your email apply to TLD managers who have been delegated the responsibility of managing their respective TLD by IANA/ICANN but not to other persons and entities. It thus seems that other persons or entities may seek to protect their business reputation in relation to a ".sg" mark (subject to the laws of the jurisdictions in which they seek such protection) without regard to ICANN's policies on this issue;

b. Fundamentally, it is not clear based on ICANN's policies whether any other person or party may acquire intellectual property rights associated with ".sg" or other country-codes by acquiring a business reputation in connection with such words as used in relation to its goods or services. This issue would depend on the local laws of countries around the world (subject to any applicable international treaties) and is a matter, we note, which has been (temporarily) excluded from your email in the 3rd last paragraph.

If the answer to our concerns above are that it is possible for a third party to validly claim and acquire intellectual property rights in the nature of trademarks in ".sg" or other TLDs without regard to ICANN's policies, such parties may have a serious negative impact on the Internet community should they seek to assert their intellectual property rights against users, domain name registrars (and other service providers) or the relevant TLD manager.

It seems to us that ccTLD managers who have acquired a business reputation in relation to the relevant word or phrase (and not merely due to the delegation) may want to protect their intellectual property rights precisely because they are trustees of the delegated domain and to ensure that they service to the Internet community is not disrupted by third party claims to such rights. It is with this in mind that SGNIC applied for the trademarks in ".sg".

As to the possibility of whether a third party may actually succeed in registering such a trademark, we have recently noted a registration in Australia, "au.com", by Netregistry Pty Ltd ("Netregistry"). We note that Netregistry provides domain name registration services for various domains ending with ".au" as well as registrations ending with ".au.com" (available on their website, www.netregistry.au.com). As Netregistry is not to our knowledge a TLD manager, we presume that Netregistry's conduct is not in violation of ICANN's policies. Please note that we are highlighting this case as an example of a third party's successful registration of a mark which, includes both a country-code ("au") and a common gTLD/second level domain ("com").

In essence, we note that there may be two somewhat conflicting positions on how best to protect the Internet community in relation to the issue of intellectual property rights in country-codes and other TLDs. We would appreciate your clarification of ICANN's policies on this and in relation to the wider issues of the potential impact of third-party rights on the Internet community as a whole bearing in mind that third parties may apparently acquire rights in marks including country-codes and common gTLDs / second-level domains (and excluding any other words). ICANN's views on the above would certainly aid us and other TLD managers in our respective responsibilities to the Internet community.

We hope the above has helped to explain the reasons of our application and we look forward to your views on the questions we have raised .

Thank you.

Yours sincerely,


Lim Choon Sai
GM
SGNIC


Attachment 3
22 January 2003 Message from Louis Touton to Lim Choon Sai

CORRECTED 22 January 2003

Lim Choon Sai
General Manager
SGNIC

Dear Mr Lim:

This is in reference to your letter of 20 January 2003, which in turn responded to my e-mail of 16 January 2003.

ICANN recognizes and is comforted by the shared purpose of ICANN and SGNIC to serve the public good by providing a stable, secure, and properly coordinated domain-name system for the benefit of the Internet community, both globally and in Singapore.

The effect of the policies discussed in my 16 January 2003 e-mail is that ccTLD codes should not be subject to any party's proprietary right to exclude others from the use of those codes. This principle applies to assertions of the right to exclude by both ccTLD managers and others. If there is an assertion of trademark rights by another party that threatens SGNIC's ability to continue to fulfill its duties to the public by registering, and providing DNS resolution for, domain names ending with the code ".sg", then ICANN is quite willing, in accord with its public-interest mission, to provide assistance to SGNIC in defending its ability to carry out those duties.

SGNIC's efforts to obtain a right to exclude others from use of the .sg domain by obtaining a registered trademark, however, appear not to be an appropriate way to carry out SGNIC's responsibility to serve the public during its period of operation of the .sg ccTLD. While it is understandable that SGNIC wishes to preserve its own ability to make registrations in the .sg ccTLD so that it can perform its assigned responsibilities, that preservation can be accomplished in many ways other than by seeking to secure a legal right to exclude others from using the .sg name.

In addition, SGNIC's action in seeking a trademark registration interferes with ICANN's responsibility, recognized under RFC1591, ICP-1, and clauses 7.1 and 7.2 of the Governmental Advisory Committee principles, to reassign responsibility for operation of top-level domains in appropriate circumstances. This responsibility is an important component of ICANN's overall responsibility to coordinate the operation of the global domain name system for the public good.

The penultimate paragraph of your 20 January letter requests clarification of ICANN's policies on how best to protect the Internet community in relation to the issue of intellectual property rights in country-codes and other TLDs. ICANN welcomes that request, and believes that the global Internet community would benefit from an authoritative and detailed public statement of the relevant policies. In that regard, the matter is being referred to the ICANN Governmental Advisory Committee for its advice on the applicability of public-policy considerations raised by these issues.

So that the Governmental Advisory Committee has adequate time to consider these matters, I hereby request that SGNIC agree to a two-month extension of time for the filing of oppositions to SGNIC's ".sg" trademark application as published in the 25 November 2003 Trade Marks Journal. (A greater extension of time would be desirable to allow the Governmental Advisory Committee to address the matter at its Rio de Janeiro meeting in the last week of March, but ICANN's Singapore trademark counsel advises that it is not available at this time.) I also request a two-month extension of time for the filing of oppositions to SGNIC's Class 41 application published on 18 December 2002.

So that ICANN can avoid having to file a notice of opposition before the process described above for issuance of policy guidance can proceed, please let me know no later than close of business (Singapore time) on Thursday, 23 January 2003, whether SGNIC will agree to the requested extensions.

Thanking you for your anticipated cooperation, with best regards,

Louis Touton
ICANN Vice President and General Counsel
and for the IANA


Attachment 4
24 January 2003 Message from Lim Choon Sai to Louis Touton

-------- Original Message --------
Subject: Re: CORRECTION: SGNIC Application for Trademark Registration of ".sg"
Date: Fri, 24 Jan 2003 10:37:31 +0800
From: LIM_Choon_Sai@ida.gov.sg
To: touton@icann.org
CC: Valerie_D_COSTA@ida.gov.sg

Dear Mr Touton,

Thank you for your email of 22 January 2003.

We note ICANN's views, in the third para of your email, that "ccTLD codes should not be subject to any party's proprietary right to exclude others from the use of those codes" and that this principles "applies to assertions of the right to exclude by both ccTLD managers and others." We would like to thank you for your offer of assistance should another party threaten SGNIC's ability to continue to fulfill its duties in relation to domain names ending with ".sg" by using assertions of trademark rights.

SGNIC is pleased to note that ICANN is referring the matter to the Governmental Advisory Committee for advice on the applicable public policy considerations and we are looking forward to an authoritative and detailed statement from ICANN/GAC on the issue (including clarification on third parties' acquisition of trademark rights in TLDs).

In the meantime, we support ICANN's referral of this matter to the GAC and therefore consent to ICANN's request for an extension of time in respect of our applications T99/10980B in Class 38 and T99/10981J in Class 41. We understand that you would have to submit your request for an extension of time to the Intellectual Property Office of Singapore (IPOS) with our consent. We would be grateful if you could let us know when you have made the request for IPOS so that we may accordingly notify our local trademark counsel.

In addition, we would like to inform you that we are presently reviewing our application as to whether we should proceed or withdraw them.

Yours sincerely,

Lim Choon Sai
General Manager
SGNIC

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