Letter to ICANN from Prominent Dot Brand Applicants re Formation of a 'Single User Single Entity' Constituency

What is the significance? ICANN’s eccentricity is in part explained that it is ‘captured’ by the domain industry. With the advent of dot brands, real world players move toward the domain industry and the domain industry must now move toward the real world.

June 28, 2012

Dr. Steve Crocker, Chair – Board of Directors
Internet Corporation for Assigned Names and Numbers 12025 Waterfront Drive, Suite 300
Los Angeles, CA 90094-­‐2536

Re: Need for Representation of Single Entity/Single User gTLD Registries

Dear Dr. Crocker,

We write today to informally notify you, the ICANN Board, and the ICANN Community of our intention to form a new constituency/stakeholder group to represent the needs of the forthcoming single entity/single user contracted parties, of which we are members. We are very excited at the prospects of bringing a new perspective and new community to ICANN’s multi-­‐stakeholder process.

By expanding the space for gTLDs, ICANN has opened the door to a wide range of new business models and participants. As would be expected, this change will bring not only exciting advances and innovations to the Internet, but will inevitably result in a need to allow these new voices to be represented and heard.

As single entity/single user applicants, we have spent time since Costa Rica individually and with a broader group of applicants reviewing the various constituencies and stakeholder groups already represented at ICANN. This has included a review of their charters and bylaws. As a completely new type of contracted party, we do not have a home to represent our unique community. In addition, the existence of conflicts with other contracted parties makes it challenging for us to reside within their stakeholder group.
We will continue our discussions with similarly situated applicants and ICANN staff to define the best vehicle and position for this new constituency or stakeholder group over the next several months, and will hold a meeting in Toronto to further refine our position and our remit.

Thank you very much. We look forward to working with you and the larger community.

Respectfully yours,

Stacey King Richemont DNS Inc.
Laura Covington Yahoo! Inc.
Russell Pangborn Microsoft Corporation
Martin Sutton HSBC Holdings plc

Mr. Rod Beckstrom, CEO, ICANN
Mr. Akram Atallah, Interim CEO, ICANN
Mr. Fadi Chehade, Incoming CEO, ICANN
Ms. Heather Dryden, Chair, Government Advisory Committee
Mr. Kurt Pritz, Senior Vice President, Stakeholder Relations, ICANN
Mr. Ray Plzac, Chair, Structural Improvements Committee
Mr. David Maher, Chair, Registries Stakeholder Group
Mr. Robert Hoggarth, Senior Policy Director, ICANN
Ms. Samantha Eisner, Senior Counsel, ICANN
Ms. Diane Schroeder, Director of Board Support, ICANN


New gTLDs By The Numbers

Valideus, which assisted entities such as Amazon in the new GTLD process, created this Powerpoint of the new TLD applications:

New gTLD Reveal Day By the Numbers[3]



I don’t dislike LeBron. And Bosh is cool because he actually looks like a raptor. But I’ve been rooting for OKC. Maybe because the team was built with good draft choices and not free agency. The thing that bothers me the most is that I think the officiating is a little disconcerting. IMHO, the number of times that Wade and LeBron got questionable ‘and ones’ in their favor, and the number of times Westbrook didn’t get those calls, add up to margin of victory. But maybe that’s just sour grapes.

Any way, some guy alleges he used DURANTULA in connection with his band, and that Kevin Durant is now infringing. Durant will be defended by Shane Battier, unless they go to a zone.



Leason Ellis Obtains Consent Agreement Enjoining Publication of 'Trademark Catalog.'

Our firm, Leason Ellis, obtained a final consent agreement against USA Trademark Enterprises of Florida and Timea Csikos and Andras Nemeth (residents of Hungary), permanently enjoining the defendants from selling a catalog of trademark registrations. LE had alleged that defendants had engaged in false advertising and unfair competition by marketing the catalog to trademark registrants. The defendants denied wrong-doing or liability, nevertheless all defendants are now barred from engaging in intellectual property-related activities in the US.

LE has received a payment from USA Trademarks of $10,000, which will be donated to the US Trademark Office, with the hope that it will be used to further the PTO’s efforts to educate trademark owners with regard to activities such as those enjoined here.

We received a copy of said catalog, which will be raffled off at next year’s Meet The Bloggers in Dallas

LE v USA Trademark consent agreement


There Could Be More Than 50 Shades Of Gray in .BOOKS

An interesting wrinkle in protecting against cybersquatting in an ‘open’ .BOOKS TLD: book titles qua book titles are not subject to trademark protection.


LV Claim re Hangover 2 Not Plausible, Let Alone Particularly Compelling

In the comedy ‘The Hangover: Part II,’ one character roughly moves another character’s luggage, and that character, whom we know to be a buffoon, says ‘Careful, that, that is a Lewis (sic) Vuitton.” (you can see the exchange beginning at approximately 1:40 in the clip above). LV gets a copy of the DVD, slows it down, and determines that what looked like an LV during its 3 second cameo, is not in fact an LV, but rather is a Diophy, which is apparently an LV counterfeit. LV sues Warner Brothers, producers of the film, on trademark grounds. WB moves to dismiss.

Held: The Court notes the heightened standard for pleading Lanham Act claims regarding use of marks in artistic works. LV alleged (1) that consumers will be confused into believing that the Diophy bar is really a genuine Louis Vuitton bag; and (2) that LV approved the use of the Diophy bag in the Film. However, LV did NOT allege that Warner Bros. used the Diophy bag in order to mislead consumers into believing that LV produced or endorsed the Film, which might have been actionable. However:

The Court concludes that Louis Vuitton’s allegations of confusion are not plausible, let alone “particularly compelling.” First, it is highly unlikely that an appreciable number of people watching the Film would even notice that Alan’s bag is a knock-off. Cf. Gottlieb Dev. LLC v. Paramount Pictures Corp., 590 F. Supp. 2d 625, 634–35 (S.D.N.Y. 2008) (Chin, J.) (no confusion of plaintiff sponsoring defendant’s film where “it would be difficult for even a keen observer to pick out [plaintiff’s] trademark” since “it appears in the background of the scene” and “occupies only a minute fraction [of] the frame for three segments lasting approximately three seconds each”). In this regard, Louis Vuitton is trying to have it both ways: arguing that the Diophy bags are so similar as to create consumer confusion but at the same time so obviously dissimilar that someone watching the Film would notice the slightly different symbols used on the Diophy bag. Yet, the Diophy bag appears on screen for no more than a few seconds at a time and for less than thirty seconds in total, and when it is on screen, it is usually in the background, out of focus, or partially obscured by other things. Like the appearance of the plaintiff’s mark in Gottlieb, the Court finds that the difference between the authentic and knock-off bag is so difficult to even notice, that a claim of confusion under the Lanham Act “is simply not plausible.” Gottlieb, 590 F. Supp. 2d at 635.

Furthermore, Louis Vuitton’s position assumes that viewers of the Film would take seriously enough Alan’s statements about designer handbags (even about those he does not correctly pronounce) that they would attribute his views to the company that produced the Film.This assumption is hardly conceivable, and it does not cross the line into the realm of plausibility. See Twombly, 550 U.S. at 570.

Lastly, Louis Vuitton is objecting to a statement made by a fictional character in a fictional movie, which it characterizes as an affirmative misrepresentation. However, this assumes that the fictional Alan character knew that his bag was a knock-off; otherwise, he would simply be (innocently) misinformed about the origin of his bag. For these reasons, the Court concludes that the likelihood of confusion is at best minimal, and when balanced against the First Amendment concerns implicated here, it is not nearly significant enough to be considered “particularly compelling.” See Twin Peaks, 996 F.2d at 1379.

lv hangover decision


Guest Rant: It's All About The Free Market Until The Domainers Get Hurt

Editor’s Note: Google’s and Amazon’s TLD applications for certain ‘generic’ terms indicate they would be run as ‘closed’ registries, that is to say, third parties can’t own the names – all domain names would be the property of the registry operator. Various commentators (mostly aligned with the domain industry) have reacted negatively to this news. This guest rant is in response to the criticism that these proposed closed registries are counter to the ‘open spirit’ of the Internet. This rant is left “anonymous” to keep the opinions from being named as those of the blogger’s employers, friends, family, neighborhood, or others (unless we experience a glitch and accidentally reveal the name, in which case please note the opinions are the blogger’s own and no one else’s).

There are a large variety of definitions of what “free market” means, depending on which economic theory you take on: from capitalist and laissez-faire notions to socialist economics. It seems, however, that the definition of “free market” within the economic theory of the new gTLDs is a “free for all”; or at least for those who care and make money off of it.

There has been a bit of chatter on the old inter tubes over the past day or so about – shock of all shock – registrants for generic gTLD strings that are going to maintain them as closed registries. That those entities have applied for the gTLDs only to control something that should be “open” to all – because, I guess, the string is generic.

There is no doubt whatsoever that there needs to be space on the Internet – a large space – free from control where free speech, art, communications, etc. can occur. (Many of us would love it if that space were free from fraud, cybersquatters, spam, phishing, pay-per-click, affiliates, advertising, and commercial sites as well.) And those spaces do and will exist.

It seems the argument made by many “outraged” by the closed gTLD generics is that companies should only be offering generics under open models. So in other words, a business not in the business of running a registry for the sake of running a registry and providing a space for the Internet as a whole, is not welcome unless under a brand designation.

But under this argument, when you look at those who did apply for “open” generic gTLDs, doesn’t that just mean you are creating a monopoly in those who have been in this game and controlled much of this space anyway for a long time. The actual break out here is that you are having businesses come in and get active in this space: open or closed.

Maybe the answer is that all generic gTLD strings be run by a non-profit for the public good, in a “free market” manner, and NO ONE makes money off of them? I would vote for that.

Let’s be real. This is not about more choice; most people don’t know, or care, about the new gTLDs. This is about creating some interesting innovations on the web and moving forward technology and money; pure and simple. We see the money that is there already: $350 million. But some of the innovation I expect to see, innovation everyone will indeed gain from, will come from those who applied for the closed generics – the Googles and the Amazons – and not necessarily from the purveyors of pay-per-click or from those who have been in the game controlling it to date. Simultaneously, there are lots and lots of these new gTLDs where there will be open space and you can still have an entry to market; post your content; engage in speech; etc.

What ICANN, and those who have been arguing for the expansion of the gTLDs for years, have done is, plain and simple, privatized the Internet. Those companies everyone is complaining about as grabbing, in effect, “public land” did not argue for the opening of the space (in fact some tried to stop it). And now they are being criticized for doing exactly what ICANN and the community wanted them to do; simply because others now face some real competition for the space.

It seems to me, that what has happened is actually less monopolistic than what has happened to date. For the first time in recent memory, there are new significant entries to the market of ICANN.


SDNY Departs From First-Filed Rule Enjoining Declaratory Action

SDNY departs from first-filed rule, enjoining Florida action as it was ‘improper anticipatory’ action filed one day before ‘natural plaintiff’s’ SDNY action.
sdny declaratory judgement miller fabircs


Second Circuit Affirming Rule 11 Sanctions

Lower court background here.

2d cir rule 11 hoisin


Initial Fun Facts From The TLD List

After a first scan of the list: the winner is .APP, with 13 applications. The only obvious trademark conflict I saw involved .COACH (2 applications) and .MONSTER (2 applications). (UPDATE – Google filed by .ING, but ING didn’t. Also, .SAS filed for by two different applicants) Google and Amazon will butt heads over several generics. L’Oreal filed for .BEAUTY. There appear to be approximately 195 strings that have 2 or more applicants. Seven of these are in non-roman characters (the Han characters for INFO, ENTERTAINMENT, GUANGDONG, .WEBSITE, .NETADDRESS, .WEBSTORE and .WEIBO). The longest strings appear to be .TRAVELERSINSRUANCE and .NORTHWESTERNMUTUAL.

Here is a rough list of the most-filed for strings:

.APP 13
.INC 11
.HOME 11
.ART 10
.LLC 9
.WEB 7