Reproduced with permission from Electronic Commerce & Law Report, 17 ELCR 714 (Apr. 18, 2012).

Copyright 2012 by The Bureau of National Affairs, Inc. (800-372-1033)

By Amy E. Bivins

The Internet Corporation for Assigned Names and Numbers will not publicize who has applied for new generic top-level domain names until at least April 30, starting the clock on the public comment and objection processes, but legal disputes among rumored applicants are already beginning to surface.

At least one lawsuit has been filed by a new gTLD applicant, who claims that a pair of rivals infringe its “.ECO” mark. The applicant has urged the U.S. District Court for the Central District of California to step in and prevent their applications from moving forward (Planet.Eco LLC v. Big Room Inc., C.D. Cal., No. 12-1812, complaint filed 3/2/12).

The plaintiff, Planet.Eco LLC, a Connecticut company, obtained rights to the “.ECO” mark in November, 2009. It seeks an order requiring the defendants to refrain from filing any further application documentation for their proposed .eco gTLDs, and to withdraw from ICANN’s online application interface. It also requested a ruling that its .ECO mark is valid.

Gina L. Durham, a partner with DLA Piper LLP in Chicago, told BNA that lawsuits like this one could throw a wrench into the gTLD application approval process.

“While disputes relating to applications for new gTLDs will be subject to the dispute resolution proceedings set forth in ICANN’s Applicant Guidebook, there is an opportunity for a court action to impact the process,” Durham said.

“In the event of a legal proceeding initiated prior to or during an ICANN dispute resolution proceeding, the Panel appointed to decide the domain dispute matter has discretion to decide whether to suspend or terminate the dispute resolution proceeding in light of the court action,” Durham added.

Even if a gTLD dispute resolution proceeding is not formally suspended or terminated in light of a court proceeding, equitable relief ordered by a court could have a practical impact on how the new gTLD applicant might be able to commercialize the extension, Durham said.

“For example, if the court in the .Eco case were to enjoin certain activities, the party subject to the injunction would have to comply with those injunctive terms regardless of whether it is awarded a gTLD.”

As a result, rights holders might consider filing a lawsuit in addition to initiating objection proceedings if a new gTLD application infringes their marks, Durham said.

Can gTLD Strings Gain Trademark Protection?

The U.S. Patent and Trademark Office has rejected trademark applications for gTLD related marks, such as .music, as being merely descriptive of domain name registration services (16 ECLR 1956, 12/7/11).

Nonetheless, in the weeks leading up to the April 12 deadline for new gTLD applications, more .generic trademark applications have been filed that appear to be linked to new gTLDs, including a March 27 application for .SECURITY, a March 23 application for .SHOP, and a February application for .SAFE.

With respect to the possibility of seeking trademark protection for a proposed string, Durham said the issue presents a bit of a “catch-22” for applicants. “If a company’s true position is that a term is generic, then, in theory, it cannot be a trademark too,” Durham said.

“In terms of strategy for the gTLD applicant, whether to pursue trademark rights will likely be a case-by-case analysis in terms of whether that .gTLD may actually be appropriate for trademark protection, and what the long term business position will be with respect to the registry operating under the gTLD.”

One of the defendants in the .ECO litigation, Doteco LLC, argued in its March 22 answer and counterclaim that the court should cancel the plaintiff’s mark.

ICANN has processes in place to resolve new gTLD application disputes, and as a matter of public policy those processes should be followed, Doteco contended. It also argued that the .eco mark is generic, and that the plaintiff fraudulently registered it.

Plaintiff Planet.Eco LLC is represented by Michael L. Rodenbaugh, Erin Dennis Vivion, Rodenbaugh Law, San Francisco; and Jonathan Matkowsky, Matkowsky Law PC, New York.

Defendant Doteco LLC is represented by Tamany Vinson Bentz (Los Angeles), and Janet F. Satterthwaite (Washington, D.C.), Venable LLP.

Canadian-based defendant Big Room Inc. (which filed a March 26 motion to dismiss for lack of personal jurisdiction), is represented by Samir C. Jain (Washington, D.C.) and Bethany Stevens (Los Angeles), Wilmer Cutler Pickering Hale and Dorr LLP.