ICANN | TLD Correspondence | Letter to Shepher Corporation d/b/a biz.com
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Letter to John M. Cone, Lawyer for Shepher Corporation d/b/a biz.com
(23 October 2000)

23 October 2000



John M. Cone, Esq.
Akin, Gump, Strauss, Hauer & Feld, L.L.P.
1700 Pacific Avenue
Suite 4100
Dallas, Texas 75201

Dear Mr. Cone:

I am responding to your 27 September 2000 letter to Michael M. Roberts, in which you assert that:

1. Your client, Shepher Corporation, holds service mark rights "as a service mark in connection with the registration, sale and leasing of second and third level domain names and providing Internet services and commerce including Web site hosting."

2. Use of the top-level domain .biz for the registration of domain names would infringe claimed rights in "the trade name and service mark .BIZ."

3. If ICANN selects .biz as a top-level domain to be established it would be liable for contributory infringement of Shepher's rights.

We have carefully reviewed the assertions made in your letter, but do not find them persuasive.

Although Shepher apparently obtained a domain-name registration for "biz.com" in June 2000 and has since put up a web site offering to register third-level domains under that second-level domain, those facts do not appear to confer on Shepher any rights with respect to registrations of names under the top-level domain .biz. The name "biz.com," with respect to the activity of registering third-level domain names within that domain, does not indicate the source of any services, but instead describes the type of services that are being provided.

Moreover, Shepher's claim to service-mark rights, even if it were valid, would not extend to rights over "the trade name and service mark .BIZ," as claimed by your letter. The service of registering third-level domain names under .biz.com is a different service than registering second-level domains under a top-level domain such as .biz. Although your letter asserts that Shepher is engaged in "the registration, sale and leasing of second . . . level domain names," it is not clear how that is technically possible.

The United States Patent and Trademark Office (PTO), which is responsible for examining claims to service-mark rights in the United States, has made clear that a domain name, when used as a registry under which lower-level domain names are registered, does not function as a source identifier subject to service-mark rights, but instead is an informational description of the names being registered. Particularly pertinent to Shepher's assertion of rights to the "service mark .BIZ" as applied to registration services, in September 1999 the PTO issued Examination Guide No. 2-99 concerning the procedures for examining applications for trade and service marks composed of domain names. Section II.D of the Guide states:

"If a mark is composed solely of a TLD for 'domain name registry services' (e.g., the services currently provided by Network Solutions, Inc. of registering .com domain names), registration should be refused under Trademark Act §§1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1503 and 1127, on the ground that the TLD would not be perceived as a mark. The examining attorney should include evidence from the NEXIS® database, the Internet, or other sources to show that the proposed mark is currently used as a TLD or is under consideration as a new TLD."

This conclusion that there are no service-mark rights in domain names with respect to registration services under those domain names is supported by judicial decisions as well. In Image Online Design, Inc. v. CORE Ass'n, Case No. CV 99-11347 RJK (C.D. Cal. June 22, 2000), the plaintiff asserted trademark rights in the name "web" as applied to the service of registering domain names under the top-level domain .web. The court granted summary judgment to the defendants, finding as a matter of law that there could be no trademark rights in the name "web" based on its use in connection with the provision of registration services under the .web domain:

"In sum, Plaintiff's use of the mark .web in connection with domain name preregistration services does not confer trademark protection. As a gTLD, .web does not indicate the source of the services; instead, it indicates the type of services. The Court finds that .web, as used here, falls out of the ambit of trademark categorization. Further, even if it could be categorized, .web is simply a generic term for websites related to the World Wide Web. Accordingly, the mark is not protectable." (emphasis in the original)

This result appears to apply not only in the United States, but in other major countries as well. ICANN's Governmental Advisory Committee (GAC), which consists of representatives of approximately 30 governments (including the United States) and intergovernmental organizations (including the World Intellectual Property Organization) issued a communiqué to ICANN in August 1999 which gives the following advice to ICANN:

"The GAC reaffirmed its May resolution 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."

In sum, it would appear that Shepher's activities in registrating third-level domains under the domain name "biz.com" do not confer on it any rights to exclude others from engaging in the registration of second-level domain names under the possible top-level domain .biz, either in the United States or elsewhere.

As your letter notes, ICANN is in the process of reviewing several applications for establishment of a .biz top-level domain. ICANN has not made any decision whether or not such a top-level domain should be established, but in the event that .biz is selected ICANN intends to move forward with contractual discussions with the selected applicant, with the goal that a .biz top-level domain be added to the root-zone under Amendment 11 to the Cooperative Agreement between the United States Government and Network Solutions, Inc. In the event that this occurs, it would not appear to infringe any rights of Shepher, contributorily or otherwise.

Yours truly,

Louis Touton
Vice President and General Counsel

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