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Irregularities surrounding O.COM RSEP reveal coloring outside the lines.
Let’s take some crayons and draw a picture of the current state of affairs regarding single-character domain names (SCDNs), and specifically O.COM.
During the public comment period for the current O.COM RSEP, ICANN’s own Intellectual Property and Business constituencies recommended implementation of rights protections mechanisms (RPMs) for intellectual property, including Sunrise and Priority Access periods. It is curious that such hard-won protections are being so easily set aside by Verisign and ICANN.
No matter, however, because this isn’t just about trademarks. This is also a simple issue of internationalized domain names (IDNs). We can forego the finer points of trademark law, because Verisign has, since at least July 2013, been unequivocal in the commitments it has made numerous times in correspondence with ICANN, in response to questions raised by financial analysts during quarterly earnings calls, and which can still be found—in living color—on their website blog today:
Use Case No. 2: John Doe does not have a registration for an IDN.com second-level domain name. John Doe registers a second-level domain name in our Thai transliteration of .com but in no other TLD. That second-level domain name will be unavailable in all other transliterations of .com IDN TLDs and in the .com registry unless and until John Doe (and only John Doe) registers it in another .com IDN TLD or in the .com registry.
The blog goes on to helpfully explain that VeriSign’s objective with this strategy is to avoid cost and confusion and will benefit the community by creating “a ubiquitous user experience.” Ubiquity appears to have a different meaning here.
Just for fun, let’s apply Use Case No. 2 to the facts at hand regarding the single-character “O”, replacing John Doe with First Place Internet and substituting Hebrew for Thai.
First Place Internet does not have a registration for O.com second-level domain name. First Place Internet registers O in the Hebrew transliteration of .com but in no other TLD. O will be unavailable in all other transliterations of .com IDN TLDs and in the .com registry unless and until First Place Internet (and only First Place Internet) registers it in another .com IDN TLD or in the .com registry.
Since it seems that there might be a number of different ways to look at this predicament, let me break it down, super-simple style:
Want this to be a trademark issue? Then First Place Internet owns USPTO Registration Number 1102618 which is active and, having been registered in 1978, is older than I am.
Want this to be an IDN.IDN issue? Then, at precisely 2018-07-31 T14:29:51Z, employing its validated Trademark Clearinghouse SMD file for its U.S. Trademark # 1102618, First Place successfully registered VeriSign’s Hebrew o.??? (o.xn—9dbq2a) IDN domain name in VeriSign’s Sunrise Period.
Want this to be about an open and transparent DNS? Read VeriSign’s words and then get acquainted with the United States Federal Trade Commission and the U.S. Securities and Exchange Commission.
We have rules in America that intend to ensure a level playing field—that seek to even things out between a rich, powerful and dominant industry player and its competitors and consumers. First among these is something my grandfather taught me when I was a little boy (still younger than USPTO Reg. No. 1102618): a person lives up to their commitments. Years of mandatory annual compliance training provided by the publicly-traded corporations that I’ve had the privilege to work for reinforces the significance of commitments made publicly in correspondence to a so-called regulator, to investors and analysts during quarterly earnings calls, and to an unsuspecting public in policy stated on the corporate website.
Over the years, I’ve learned—sometimes the hard way—that this rule means having to do something I didn’t want to when I misspoke and then had to make it right.
If this auction proceeds and Verisign is permitted to color outside the lines by welching on commitments it has made and that can still be found on their website today, then multi-stakeholder governance will have failed—not to mention any sense of fair play—and the image of an open and equitable DNS dies by the auctioneer’s gavel.
Maybe it’s appropriate and relevant to ask: Is Verisign’s trademark—USPTO Registration Number 3060761 for “It’s a Trust Thing”—dead from discontinued use?
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“Is Verisign’s trademark — USPTO Registration Number 3060761 for “It’s a Trust Thing” — dead from discontinued use?”
Someone relying on what is known as “naked licensing” as the only claim to be using a trademark for which they bought a registration and licensed it back for free, is in no position to get cocky when it comes to subsisting goodwill in the now meaningless piece of paper for a stylized logo they bought.
In case anyone is curious as to how an ostensible “internet” company owns a 1978 trademark registration in a stylized logo for sealed beam marine lights, then have a look at the central “O” in Optronics at OptronicsInc dot com. That stylized logo is the subject of the trademark registration our “let’s be fair and transparent” correspondent is blathering on about here.
Let’s be honest for a change, Greg. First Place obtained a formal assignment of that registration for no purpose whatsoever relating to any desire to obtain goodwill in a mark for sealed beam marine lights. They bought it solely as a ridiculous stunt to make some claim to this domain name, just as others seek, obtain or attempt to enforce dubious “rights” for similar gamesmanship and over-reaching.
But I can surely see why you don’t want to engage in a discussion over the “finer points of trademark law” since you are woefully uninformed of some of the blunter ones. Sticking to crayons is probably a good move for you. When you do get out of kindergarten, you may someday learn that depending on a bare trademark license, such as the ridiculous license-back provision in the assignment of that logo mark, as the claimed “use” is constructive abandonment.
“We have rules in America that intend to ensure a level playing field —
a person lives up to their commitments.”
Yes, Greg. The relevant commitment here being that in order to offer a registry service, the registry files an RSEP. Then, there’s a public comment period, a staff report and a board vote.
Cutting through the crap about your grandfather and your age, First Place Internet hasn’t even owned this trademark registration for a full year. If that assignment was a baby, then it would still be too early to use your crayons.
In case anyone is unclear about that trademark assignment, it was done in June of last year - AFTER the RSEP was published, and two days before the public comment period closed. So, please spare us the BS about longstanding interests. The entire POINT of obtaining that assignment from an owner that didn’t care about O.com, was to engage in these theatrics, and not to protect any sort of actual goodwill owned by First Place Internet in sealed beam marine lights.
Full disclosure: I have no active, past or contemplated engagements with Verisign, Overstock, Oprah, or Oakley for that matter. Some 13 years ago, I defended First Place Internet against an over-reaching trademark claim on one of their valuable dictionary-word domain names, from which they seem to have learned the wrong lesson entirely.
John: Thanks for your comment. Based upon your response, crayons may not have been remedial enough, although it's curious that a trademark attorney reserves such vitriol to make irrelevant personal attacks rather than focus on the fact that RPMs designed to protect trademark owners are being set aside. Regardless, this isn't a trademark issue - it's an IDN issue and the "relevant commitment" here, after I wipe off the effluvia from your sneering vitriol, is the one made in Use Case No. 2. In the future, spare me the drunk-texts.
There have been long discussions in the RPM PDP working group about potential “gaming” of the TMCH and sunrise periods for new gTLDs with figurative marks, “token use” marks, etc. What some see as “gaming”, others see as intentional policy design, though, so I suppose it depends on one’s point of view. Perhaps if more people got involved in the working group, things might change.
If one does a search at USPTO.gov for “VerandaGlobal.com” as owner, one finds a number of other 1 character marks.
George, thank you for your comment. One has to dig through quite a bit of sneer to find anything in Mr. Berryhill’s comment to judge as “correct.” My own reading of the materials presented by First Place on DomainIncite suggests that any trademark ownership maintained by his company is intended as an insurance policy of sorts - and doesn’t represent the primary thrust of First Place’s claim to any single-character domain. This intellectual property “Plan B” as it were, seems to have been created to close off what surely would have been the rejoinder to their primary claim related to IDN registration were it made absent possession of a corresponding trademark. Speaking bluntly here, I find it highly offensive and rather insulting to any person possessing both a reasonable degree of common sense and fair play, that the focus of the two responses to my post has been to utterly ignore the main points of my post to Instead beat a trademark drum whose lesser relevance is explicitly asserted as not the “relevant commitment” at issue here. Rather, these two comments seek to impugn the rightful ownership of intellectual property in lieu of recognizing that critical, hard-won intellectual property rights protection mechanisms have been disregarded by ICANN and VeriSign in the first instance, an egregious injury to First Place and to all intellectual property rights-holders which is further compounded by a wanton rewriting of history and the public record by two parties that between them control the DNS in order to make-believe that statements made, and which are still found on both parties’ websites today, somehow happened in an alternate universe where reality has a tenuous grip at best. Focus, people. The issue here isn’t just about trademarks - read past the first couple of paragraphs. A reasonable person can only assume that these pitiful attempts to ignore the actual relevant commitments - by leaping onto the argument that my post explicitly states is not the primary focus - are conceding the points.
In February 2018, First Place attempted to work with Overstock but Overstock was not interested.
VeriSign offered opportunities to register “O” IDN .com SCDNs to anyone willing to purchase them, and despite First Place’s engagements with Overstock, Overstock neglected to register a VeriSign “O” IDN .com SCDN by July 31st 2018. Simultaneously, VeriSign maintained its IDN Implementation Plans including Use Case No 2. Further, VeriSign unambiguously reinforcement its commitments to .com IDN and .com registrants in its 2014 shareholder’s earnings call transcript.
In July 2018, First Place fairly registered o.??? and First Place has the domain name in fair and proper use. Those lacking facts and foundations need to recognize an unfair O.com RSEP process. ICANN did not follow Bottom-Up Processes for VeriSign’s unprincipled O.com RSEP. Of significant note, in 2014 ICANN did follow Bottom-Up Processes in approving a Technical Bundle RSEP in order to avoid confusion and ensure rights consistent with VeriSign’s IDN Implementation Plans and its Use Case No 2 commitments: See https://www.icann.org/en/system/files/files/pir-request-21may14-en.pdf