ICANN & .MUSIC gTLD: Upholding US vs. International trademark law

.MUSIC is a registered trademark since 2009.

.MUSIC is a registered trademark since 2009.

It seems that no-one is willing to tell it like it truly is: despite its multi-national personnel and leadership, ICANN is clearly upholding the laws of the United States and the USPTO in particular.

This shocking revelation comes as a further slap in the face of established entrepreneurs, such as Constantine Roussos of the .MUSIC brand and a gTLD applicant.

It does not get any simpler, really; Roussos and his company have applied for the .MUSIC gTLD and have had several years of a headstart, via the use of the .MUSIC brand and its assorted registered trademark.

The registered mark for .MUSIC can be found in the European database of trademarks, or by clicking here.

According to Roussos, one ICANN panelist asserts that the registration of the .MUSIC mark was not “bona fide“.

This hilarious claim is a classic example of ineptitude by those who have been bestowed with the approval of the gTLD applications.

In the US, the USPTO does not permit trademark applications that begin with a dot. In the European Union and other countries, however, there is no such restriction on the type of brand, product or service that can be trademarked.

It’s clear, that ICANN does not take into account this obvious difference and is actively enforcing US laws only.

The scandalous result, is that applicants such as Constantine Roussos, who have spent millions of dollars to build a brand, are facing competition in the gTLD market by behemoths such as Google, who have no track record of use, nor own a trademark.

In our opinion, ICANN’s role needs to be investigated further, because the current process of applying for or opposing gTLDs is clearly ridden with legal and practical holes; meanwhile, applicants that are not as big as Google are being used as “guinea pigs” in the process.

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Comments

15 Responses to “ICANN & .MUSIC gTLD: Upholding US vs. International trademark law”
  1. Konstantinos Zournas says:

    Although you are right in the ICANN part that their are playing by US rules and favoring US applicants, I am not sure I understand how you can trademark something you haven’t used or owned. In this case a new gTLD.

    Yes Constantine Roussos had a trademark but all “music” trademark holders could have filed an objection and all should have failed. This is a generic new gTLD. All applicants should be able to compete.

    Also a dot next to a word means nothing. I can trademark “…..music” or “.music.” or “music.” This doesn’t make it a new gTLD or a domain or anything else except for a simple dot like this one: .

  2. DomainGang says:

    Konstantinos – The brand is “.MUSIC” and the mark is registered in several classes that include digital music services. One of the classes covers domain registrar services. The use of the mark isn’t under dispute, as the use predates (2005) that of the registration of the mark (2009). In other words, the mark would not have been allocated, if there were no prior use 🙂 In that, the USPTO requirements and those of the European trademark registry match. The breaking point is the explicit provision by the USPTO that no mark applications that start with a dot can be registered. ICANN panelists that claim that the .MUSIC mark is not “bona fide” or decide based on the USPTO rules and regulations regarding marks, are clearly biased.

  3. Konstantinos Zournas says:

    I don’t dispute the mark in other classes(or maybe I do). I dispute the mark in connection with a new gTLD. (I can’t help but comment that not all marks have actual prior use. Bur that is another trademark registration problem.)

    Bona fide mark or not, it couldn’t have been used to stop a generic new gTLD applicant. Even without that panelist’s biased remark and by accepting the .music trademark the outcome in the dispute couldn’t have been any different.

    Hhhmmm… Now that I think of this…
    Does Constantine Roussos have a domain registrar called “.music”? I don’t remember hearing about that, so how is he registered in that class?

    Also a domain registrar is not a domain name or a domain registry.

  4. DomainGang says:

    The point is, that the .MUSIC is a registered mark in several classes, including that for domain services. Surely, it’s not the primary class, but that’s irrelevant. The mark is valid (active) and it should be respected as such. Here’s the mark (international class 45)

    “Domain name reservation, registration, maintenance and management services; domain name searching services; domain name registry services, namely co-ordinating the assignment of domain names and address space; technical and legal research relating to Internet domain names.”

  5. michael berkens says:

    Here is the decision that Constantine is referring to:

    http://www.thedomains.com/2013/08/15/wipo-denies-another-legal-rights-objection-to-music-community-trademarks-of-objector-not-bona-fide/

    However that is only 1 of 5 different WIPO panels that have denied the objection

    This one says he doesn’t have standing to bring the objection:

    http://www.wipo.int/export/sites/www/amc/en/domains/lro/docs/lro2013-0062.pdf

  6. Domain Dave says:

    From the say one thing, do another department:

    http://forum.icann.org/lists/eoi-new-gtlds/msg00072.html

    1 Dec 2009

    Constantine Roussos:

    “(W)ithin the scope of ‘front-running,’ we agree that ICANN should impose
    rules against ‘front-running’ schemes for new TLDs, particularly relative to
    “pre-emptive trademarking.” Speculative trademarks filed for non-awarded
    TLDs should bear no weight in the ICANN new TLD process. We regrettably note that since ICANN Cairo, and before, several companies/initiatives were
    constrained to defensively seek trademarks for new TLDs after being faced by other companies/initiatives that secured speculative trademarks in an
    attempt to front-run the system. Perhaps they ‘hope’ to ‘benefit’ in their
    application and/or from an objection position. All new TLDs must be issued
    on the substantive merits of new TLD applicants and their applications, and
    not by any front-running scheme.”

  7. DomainGang says:

    Dave – At the time that post was made in 2009, Roussos and his company already owned the registered mark for ‘.Music’.

    Also, by posting only a portion of his comment, you’re shifting the focus away from the purpose of his comment: that TLD applicants should be at risk of losing their application fees, in order for such speculative bids to be avoided.

  8. Mary says:

    Mr. Zournas makes the case that no one should be able to claim trademark rights for a Top Level Domain for .Music because no one has owned a .MusicTop Level Domain. This is a flawed line of reasoning. By this reasoning, no one could claim ownership for .Microsoft, because Microsoft has not owned their own Top Level Domain before. Clearly this line of reasoning is untenable. If Microsoft can claim rights to .Microsoft, than Constantine’s company should have the same right to .Music. This concept of .Music being a so called generic is bogus. The only names that would be ‘generic’ Top Level Domains would be TLDs such as .DNS or .TLD. (In Trademark law, a name is generic if it merely describes the service being provided. Clearly the word Music in relation to a Top Level Domain does not describe the Registry services provided by an imaginary .Music Registry)

    If Trademark law were applied fairly and without prejudice in the context of the ICANN Applicant Guidebook, then Constantine’s company would have a right to the .Music Top Level Domain on the basis of Constantine’s International Trademarks.

    ICANN must drop the favoritism and stop trying to reinvent Trademark law. According to Trademark law in most countries (including the United States) companies can apply for Trademarks in lines of business in which they currently do not operate, but in which they intend to operate in the immediate future. The PURPOSE of Trademark law is to provide an orderly method for the claiming of business names as opposed to the unseemly prospect of paying off (or bidding for) a Trademark. What is more fair – and more American? First come first serve rights, or paying off a quasi-governmental agency for the rights to a mark based purely on who has the most money? THINK about it. So called ‘front running’ is merely the orderly, law abiding way that has been used for hundreds of years. No one ever made fun of or denied the rights of a soda company to apply for a Trademark in order to claim a name to make money. Why should prospective Registry providers not have the same rights as manufacturers or other types of service providers?

    That is why the USPTO should – and must – begin providing Trademark protection to Top Level Domains as a new business category.

  9. John Berryhill says:

    ” By this reasoning, no one could claim ownership for .Microsoft, because Microsoft has not owned their own Top Level Domain before.”

    That’s just silliness. “MICROSOFT” is a well known and inherently distinctive fanciful term which is only associated with one source. Furthermore, the rights signified by the mark have not accrued merely to obtain an illusory advantage in the TLD process.

    It is bizarre that people are claiming this is some sort of “ICANN US bias”. The panelists in these decisions have been:

    – A New Zealand native who practices in Spain

    – A Mexican

    – An Argentinian

    – A Singapore native who practices in the UK

    Hence, two of these decisions have issued from EU intellectual property lawyers who, I believe, understand EU law quite well, and likely more so than the bloggers and some commenters here.

    The notion that ICANN is somehow exercising voodoo powers over several non-US attorneys in a proceeding administered by a non-US organization, in order to result in some kind of US bias is completely unsupported by readily apparent facts.

  10. DomainGang says:

    John – This does not change the fact that the applicant of .music owns a registered mark.

    I don’t doubt that some of the decisions regarding Constantine Roussos’s oppositions were issued by non-US based panelists; however, they seem to observe a common line as dictated by ICANN, which apparently requires that such decisions are made using the USPTO “quirks” on dotted marks.

    If that were not the case, we’d see at least one dissenting opinion. Unfortunately, we are seeing a case where an indisputable trademark is being ignored as the deciding factor in those oppositions, and potentially, during the allocation of the .music gTLD.

  11. John Berryhill says:

    “This does not change the fact that the applicant of .music owns a registered mark”

    Yes, and if the ICANN policy said “anyone who owns a trademark registration gets a TLD”, that would be terrific. TLDH owns a registered trademark in Chile for the word “LATINO”. So what?

    This may come as something of a shocker to you, but in nearly every UDRP in which I have successfully represented a domain registrant, the Complainant had a registered trademark somewhere.

    But my comment has to do with the accusations you are making against EU lawyers that they have a “US bias” of some kind. Where do you get off accusing people who are more knowledgeable about EU law than you are, that they are biased?

  12. DomainGang says:

    John – If the decisions are in line with a list of parameters obviously mandated by ICANN – such as the disregarding of existing European/International marks – then it’s very logical to assume the panelists have very little wiggle room in their decision-making, regardless of country of origin or professional expertise. The application/objection process for gTLDs cannot be equalized with the regular UDRP decisions, in my opinion. If it were, you would see a valid trademark such as .music prevailing over other applications on the mere basis of its existence and use.

    This is yet another demonstration of how hole-ridden the gTLD application and approval process has been. The application for .Music has become a true “guinea pig” and an example to avoid.

  13. Constantine Roussos (.MUSIC) says:

    Interesting comments and thanks for the support.

    My 2009 comments (Wow, that was over 4.5 years ago!) referred to the notion of WINNING a TLD merely on holding a trademark. In context the Guidebook was over 3 years away from being completed and my statements reflect the notion that an applicant should NOT be given a string based on a trademark filing which I still agree with to this day. However, if there is bona fide use, a strong global brand built with community support, also a strong recognition of the .MUSIC brand in both the ICANN community and music community with our Initiative in the class of domain names then others should NOT be permitted to free-load on others branding efforts. The WIPO decisions favor U.S law and also the Panelists are merely copying and pasting others’ decisions. There is one instance where a Panelist says we have no bona fide use without even explaining how our branding efforts are a scam and not bona fide (Panelist is avoiding the real issue of others gaining unfair advantage over our global branding efforts and bona fide efforts to create a global brand – which we did). Another panelist (Google case) does not bother do a basic EU Trademark search and says the trademark is in my name (which is not true it is in DotMusic Limited’s name) and rules against us on that technicality. Another Panelist makes the case about “reverse hijacking” which clearly shows that they do not understand the gTLD process and they are confused. This is not a UDRP case concerning a domain name. The worst bit is that the process should NOT have allowed decisions to be made public because they do prejudice Objectors significantly, especially ones made in the beginning. The copying and pasting of LRO decisions has been horrendous from Panelists and many arguments were weak at best (e.g saying that people will call us “dotmusic” not “.music” which is ridiculous since all our branding efforts say “.MUSIC”). Then have the argument with Donuts which says that because they applied for 300+ gTLD and put in millions of dollars their intent was not violate trademarks and everything was in good faith. How is that even a valid argument? I think the 300+ gTLD application shows they are trying to monopolize the space and WIPO panelist arguments do not see the big picture at all. People will when it is too late though if this continues.

    I could list so many things that went wrong with this process and the inconsistent decisions. Another issue is allowing Lawyers to be WIPO Panelist when they represent the interests of Portfolio Applicants in other Objections. For example, Doug Isenberg represents Amazon in their Community Objections. However he was allowed to be a WIPO panelist to render a decision against an Objector in an LRO with WIPO. How is that not a conflict? Note that Amazon was objected to by us in WIPO LRO and many others have as well and has won every case they were involved in. How is that not a conflict of interest?

    We are leaving all those serious issues for a later date. We might be getting slapped in the face right now but not for long. Seems the process was set up for a select few to come in, use loopholes (e.g private auctions or circumventing background checks) and “buy” the entire namespace (portfolio applicants Google, Amazon, Donuts, TLDH, Famous Four etc).

    In my opinion, the Internet is not for sale and ICANN is being irresponsible making 3rd parties make decisions based on a flawed Guidebook that does not serve the global public interest. The ridiculous decision to allow singulars and plurals and adding the auction component only serves ICANN’s pockets to maximize registration fees and auction money. Taking no responsibility is not a sign of leadership. ICANN could have easily ruled on generics that are closed/anti-competitive or plurals/singulars but chose to use 3rd parties to render those decisions. These 3rd Parties used the flawed Guidebook to render these decisions so it was by design that these decisions are being rendered. ICANN takes no responsibility since it is giving it to 3rd parties but any judge can clearly see the rules do favor maximizing registrations and revenue so one can argue there is a conflict of interest.

    Allowing Donuts, Amazon or Google (and a select few portfolio applicants) to run the show or buy everything is not the recipe for new gTLD success. Donuts for example is trying to commoditize the entire namespace. Think .BIZ or .INFO. No community and no value. Our approach is a community approach (think .EDU or .GOV) but even the community criteria have not been edited (despite our countless efforts) and an arbitrary scoring system was put in place to settle those. And of course the portfolio applicants are selling the Koolaid that there is no such thing as community because it serves their story. Furthermore I find it strange that gTLD staff is leaving ICANN and joining portfolio applicants. You think there is no influence there? We are just one applicant for one string and we do feel that because of that we are being neglected by ICANN. This holds true for all the community applicants. Community gTLDs will get less registrations so not really in ICANN’s financial interest to allow those. If we fail community evaluation then everything goes to the highest bidder. So let me get this straight: our bona fide branding efforts are worthless (even if we spent millions over years to create this community-based brand) and it will be potentially auctioned out to the highest bidder? Our branding efforts will be “for sale” with ICANN as the main beneficiary and the winning auction Applicant reaping the benefits of all our work and outreach. Not one Panelist has bothered to look at the “unfair advantage” part. They merely ignored it because it fits their story and they are following the “herd” of WIPO panelists decisions and copying and pasting other decisions in theirs without really taking this process seriously and looking at the issues and how they will unfold. They will unfold in due time if this continues.

    I fear the worse for this new gTLD Program. I used to be one of ICANN’s biggest supporters and the new gTLD Program but what is going on is not in the global public interest. There is a lot of confidential information I can not disclose but in due time I assure you we will fight in the global public interest and ensure this space is not dominated by 4-5 companies who have found a way to game the Guidebook and try to control the Internet and namespace. The writing is on the wall but many people do not realize exactly what is going on here.

    There are bigger issues than .MUSIC and we will certainly fight for them. We will continue to fight the good fight and we are OK with all these portfolio applicants attacking us at every juncture. They want to run the entire show which is certainly not in the global public interest.

    Regards

  14. John Berryhill says:

    “Another panelist (Google case) does not bother do a basic EU Trademark search and says the trademark is in my name (which is not true it is in DotMusic Limited’s name) and rules against us on that technicality.”

    I’m surprised you are still going on about that. The panelists were to rule on the filings of the parties, not some sort of independent investigation. In fact, the rules say that.

    You filed your complaint with the original registration certificates. You did not include in your complaint the later assignments. The fact that the panelist ruled on the evidence YOU provided, is not a valid complaint. The fact that you continue to go on blaming others for your failure to present competent evidence, or the failure of your counsel to do so, even after this has been explained to you multiple times, is quite odd.

    Aside from which, the panelist did not reject the complaint solely on that basis. In each instance, the panelist said that even if they had been shown to be owned by the Objector, it would not have affected the result. Again, your continued inability to read the plain text of the decisions on that point is troubling.

    “I think the 300+ gTLD application shows they are trying to monopolize the space.”

    And what do all of the various generic-word EU trademark applications you filed show?

    The Oxford English Dictionary includes something on the order of 170,000 words. 300 out of 170,000 hardly constitutes a “monopoly” on anything.

  15. Constantine Roussos (.MUSIC) says:

    John, you conveniently ignore the fact that my company applied for one (string): .MUSIC. We are not monopolizing anything. Last time I checked we applied for a COMMUNITY gTLD not a corporate open gTLD. From what I understand Uni-Registry – Frank Schilling’s company that you represent – applied for 54 gTLDs.

    “The Oxford English Dictionary includes something on the order of 170,000 words. 300 out of 170,000 hardly constitutes a “monopoly” on anything.”

    So you agree with Amazon running .MUSIC, .SONG and .TUNES as closed registries and not allowing anyone to register (except Amazon to further their business) is not anti-competitive or monopolistic?

    Furthermore, you are neglecting the Pareto rule. Not all words are created equal. There are reasons why there are contention sets for .MUSIC, .MOVIE, .NEWS. .BLOG, .APP and so forth. Not all words are created equal online. The term “music” has a semantic meaning on the web and that word alone (without any longtail keyword permutations) has 277 million monthly searched according to Google. How many of those 170,000 words in the dictionary are that semantic and have such popularity? Donuts and other portfolio applicants (Google, Amazon – including Uniregistry) selected strings with great significance and traffic on the Internet. A monopoly is most pertinent in an area of high competition and demand. You think Donuts’ choice or Uniregistry choice of gTLD strings was random? Of course you looked at the numbers. I assure you Donuts combined search traffic for all their 300 strings exceeds the traffic for the other 169,700 dictionary terms combined. You are not comparing apples with apples.

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