Trademarks, domain names, and ICANN: an evolving dance.

• Author: Falco, Sheri Lyn
• Position: Internet Corp. for Assigned Names and Numbers

The aim of this article is to provide insight into the various policies trademark owners can utilize to ensure protection of their domain name-related trademarks on the United States Patent and Trademark Office ("USPTO") (1) Principal Register (2) as well as the various mechanisms trademark owners can use to protect their registered or non-registered marks against third party activities within the domain name system. The article will examine the USPTO's policies regarding trademark registration on the Principal Register for marks that contain top-level domains ("TLDs") (3) as a part of the domain name in the applied for mark as well as for marks that consist solely of a TLD.

In reviewing the dynamic evolution that has occurred in the relationship between trademarks and domain names, the role that the Internet Corporation for Assigned Names and Numbers ("ICANN") (4) has had, and continues to have, in shaping and framing global trademark protections is of great significance. This overview will also present the options all trademark owners have to protect their marks that are used as domain names or as TLDs by third parties without their authorization. In doing so, this article will highlight key trademark protection initiatives developed by ICANN historically, as well as recent initiatives developed as a part of ICANN's 2012 new gTLD* (5) program. This article will also provide an introduction to independent initiatives by certain TLD registry operators (6) who strive to further enhance the trademark protections within their specific TLDs.

THE USPTO'S POLICIES REGARDING DOMAIN NAMES AND TLDS

A few years after the emergence of the commercial Internet the USPTO established policies that require trademark examiners to, in large measure, discount the TLD in their assessment of a potential mark's trademark registerability. (7) In its Trademark Manual of Examining Procedure ("TMEP"), (8) the USPTO states:

[W]hen a trademark, service mark, collective mark, or certification mark is composed, in whole or in part, of a domain name, neither the beginning of the [uniform resource locator ("URL")] ("http://www.") nor the TLD has any source-indicating significance. Instead, those designations are merely devices that every Internet site provider must use as part of its address. Advertisements for all types of products and services routinely include a URL for the website of the advertiser, and the average person familiar with the Internet recognizes the format for a domain name and understands that "http," "www," and a TLD are a part of every URL. (9) The USPTO has indicated, when "viewing a domain name mark (e.g., ABC.COM or HTTP://WWW.ABC.COM), consumers look to the second-level domain name for source identification, not to the top-level domain (TLD) or the terms 'http://www.' or 'www.'" (10)

The USPTO further states, "If a proposed mark is composed of a merely descriptive term(s) combined with a non-source-identifying TLD, in general, the examining attorney must refuse registration ... on the ground that the mark is merely descriptive." (11) With respect to generic marks the USPTO states, "[A] mark comprised of a generic term(s) combined with a non-source-identifying TLD is generic and without trademark or service mark significance." (12) In light of these USPTO policies, obtaining federal trademark registration on the Principal Register for a domain name mark has been challenging.

The USPTO accepts the concept that a domain name can serve as a source identifier but indicates that it is possible only if "[t]he mark ... [is] presented in a manner that will be perceived by potential purchasers to indicate source and not as merely an informational indication of the domain name address used to access a website." (13) The TMEP states:

Only in rare instances will the addition of a TLD indicator to a descriptive term operate to create a distinctive mark. There is no bright-line, per se rule that the addition of a TLD to an otherwise descriptive mark will never, under any circumstances, operate to create a registrable mark. If the TLD is capable of indicating a source, the addition of the source-indicating TLD to an otherwise unregistrable mark may render it registrable .... Thus, when examining domain name marks, it is important to evaluate the commercial impression of the mark as a whole to determine whether the composite mark conveys any distinctive source-identifying impression apart from its individual components. The examining attorney must introduce evidence as to the significance of the individual components, including the TLD, but must also consider the significance of the composite to determine whether the addition of a TLD has resulted in a mark that conveys a source-identifying impression. (14) Courts have also held that in rare, exceptional circumstances, a term that is not distinctive by itself may acquire additional meaning by including a TLD such as ".com" or ".net" and can render it "sufficiently distinctive for trademark registration." (15) While both the USPTO and the federal circuit have acknowledged that a mark composed of a domain name can serve as a source identifier, both have exercised restraint when applying this to marks that are domain names or TLDs. (16)

As early as 1995 the worldwide organization of trademark owners and trademark attorneys, the International Trademark Association ("INTA"), "endorse[d] the principle that domain names as addresses on the Internet are capable of functioning as trademarks." (17) Despite this acknowledgement by the trademark community, the USPTO has been cautious and somewhat inconsistent in their decisions when it comes to granting trademark owners registrations on the Principal register. The USPTO's policy continues to reinforce the axiom that domain names are generally perceived as nothing more than an Internet address where the applicant can be contacted, and therefore, registration on the Principal register must be refused. (18)

TLDS AS TRADEMARKS ON THE PRINCIPAL REGISTER

Looking to TLDs themselves, as compared to domain names, (19) the USPTO has historically espoused a very clear line.

If a mark is composed solely of a TLD for "domain name registry services'" (e.g., the services of registering .com domain names), registration [should] be refused ... on the ground that the TLD would not be perceived as a mark. The examining attorney must include evidence from the [LEXIS(r)] 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. If the TLD merely describes the subject or user of the domain space, registration should be refused ... on the ground that the TLD is merely descriptive of the registry services. (20) Like the USPTO, most U.S. courts have not yet extended trademark protection to TLDs because they have held that the TLD is not a source indicator. (21)

However, the USPTO has recently acknowledged, "[a]s the number of available TLDs is increased by the Internet Corporation for Assigned Names and Numbers ("ICANN"), or if the nature of new TLDs changes, the examining attorney must consider any potential source-indicating function of the TLD and introduce evidence as to the significance of the TLD." (22) Several trademark experts and the author believe that when TLDs like .bank, .wine, .kids, .amex, and .bloomberg, exist, the TLD has emerged to serve as a source identifier. (23) Notwithstanding the above, the USPTO continues to generally reiterate its long-standing position stating, "consumers are predisposed to view gTLDs as merely a portion of a web address rather than as an indicator of the source of domain-name registration or registry services. Therefore, registration of such marks must initially be refused." (24)

While the USPTO's assessment of TLDs as non-source identifiers may have been appropriate historically, (25) it is no longer an accurate reflection of the significance TLDs now have and will continue to have moving forward. With the advent of ICANN's sponsored TLDs ("sTLDs") (26) in 2003-2004 and ICANN's new gTLD program in 2012, consumers have become and will continue to become increasingly aware that the TLD itself has a source identifying function. In turn, the consumer expectations associated with a TLD are changing and will continue to change. The USPTO acknowledges this shift and, in response to ICANN's 2012 new gTLD program, proposed revised rules for ascertaining the registerability of marks that are TLDs. (27)

In 2013 the USPTO published draft rules for examining trademark applications of gTLDs. (28) In the proposed draft rules the USPTO states,

[t]he Internet Corporation for Assigned Names and Numbers ... has begun a program to introduce new gTLDs. Some of the new gTLDs under consideration may have significance as source identifiers. To the extent that some of the new gTLDs under consideration are comprised of existing registered trademarks or service marks that are already strong source identifiers in other fields of use, some of the premises underlying existing USPTO policy regarding the registration of gTLDs may no longer hold true for such gTLDs.... Where the wording following the or "dot" is already used as a trademark or service mark, the appearance of such marks as a gTLD may not negate the consumer perception of them as source indicators. "Accordingly, the USPTO is amending its gTLD policy to allow, in some circumstances, for the registration of a mark consisting of a gTLD for domain-name registration or registry services." (29) In its proposed rule the USPTO clearly states that a TLD can be a source-identifier and prescribes specific pre-requisites for finding such source-identifying characteristics. According to the USPTO, a TLD can be a source-identifier if the gTLD matches an active U.S. trademark registration covering the same subject matter as the websites that will be registered under the gTLD. For example, if a registry operator...