ICANN | Letter from Louis Touton to Bank for International Settlements | 21 May 2001

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Letter from Louis Touton to Bank for International Settlements
21 May 2001

21 May 2001

By Mail and Facsimile (+41 61 280 9112)

Mr André Icard
Deputy General Manager
Mr Mario Giovanoli
General Counsel
Bank for International Settlements
Centralbahnplatz 2
CH-4002 Basel, Switzerland

Dear Messrs Icard and Giovanoli:

Your 22 March 2001 letter to Mike Roberts, ICANN's now-retired President and CEO, has made its way to my desk.

ICANN appreciates your calling to its attention the 16 August 1965 letter from the International Bureau circulating the Bank's initials to States then members of the Paris Union, with effect as to those then bound by the Lisbon text.

Under Article 6ter(1)(c) of the Paris Convention, the protection of abbreviations of international intergovernmental organizations provided by Article 6ter(1)(b) does not extend to exclude use or registration that is "not of such a nature as to suggest to the public that a connection exists between the organization concerned and the . . . abbreviations", nor is there any exclusion if "such use or registration is probably not of such a nature as to mislead the public as to the existence of a connection between the user and the organization." In simple terms, the Convention's protection of abbreviations of international intergovernmental organizations, where it applies, only extends to source-identifying uses of those abbreviations.

The relevant legal authorities make clear that use of a string of characters as a top-level domain in the Internet domain-name system does not constitute a designation of the source of the services associated with the top-level domain, but instead is an aspect of the service itself. 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.)

Similarly, the United States Patent and Trademark Office (PTO) has made clear that a top-level 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. 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 result appears to apply not only in the United States, but in other countries as well. ICANN's Governmental Advisory Committee (GAC), which consists of representatives of approximately 30 national governments 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."

Just as the introduction of an Internet top-level domain creates no intellectual property rights in the top-level domain name because it is not source-identifying, the use of that name as a top-level domain is not subject to exclusion under Article 6ter of the Paris Convention for the same reason.

While we appreciate the Bank's desire to formally assert whatever legal rights it may have, an exclusion of the use of the string "biz" as an Internet top-level domain is not supported by legal principles and would be contrary to the global public interest. With respect for the proper scope of the Bank's rights under Article 6ter, ICANN is proceeding with the introduction of the .biz top-level domain.

With best regards,


Louis Touton
General Counsel

cc: Francis Gurry, WIPO
Martin Lowen, NeuLevel

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