[AfrICANN-discuss] New gTLD hopefuls play trademark games in EU, too

[Anne-Rachel Inné]

http://domainnamewire.com/2012/04/06/new-tld-trademark-eu/New gTLD hopefuls
play trademark games in EU, too Friday, April 6th, 2012

*French lawyer with ICANN, NAF, and WIPO connections helps new TLD
applicants file trademarks for prospective top level domains.*

I’ve chronicled many of the attempts by new gTLD hopefuls to “frontrun”
trademarks for new TLDs in the United States. Here are 115
examples<http://domainnamewire.com/2012/01/25/115-top-level-domain-trademarks/>
.

But that’s just in the U.S. system. And it’s not a huge threat since the
U.S. Patent and Trademark Office is rejecting these applications.

Yet there’s some trademarking activity in the European Union as well.

One of the prolific filers is Constantine Roussos, who is behind one of the
.music initiatives.

Back in 2009 he successfully registered two stylized trademarks for dot
music with the Trade Marks and Design Registrations Office of the European
Union. He later tried to file a similar one in the U.S. but was
rebuffed<http://domainnamewire.com/2011/06/14/u-s-shuns-music-trademark-ahead-of-new-tld-launch/>.


While ICANN doesn’t care about existing “dot” trademarks, it’s possible
these trademarks will cause TLDs to get tied up in the courts.

In 2010 Roussos
commented<http://domainnamewire.com/2010/07/21/music-initiative-says-it-will-use-trademarks-to-block-competitors/>to
ICANN:

Rest assured that if we, as .MUSIC are faced with the possibility of being
gamed and abused in a manner that we find illegal, we will use our
trademarks and other means necessary to do what we have to do to protect
ourselves and our respective community. While trademarks alone should not
be the sole determinant of earning a TLD, it is the only means we have of
protection, since ICANN has not incorporated any mechanisms to prevent TLD
applicant abuse, gaming and unfair piggybacking from other initiatives.

Now it’s not just .music Roussos is after. He has filed 21 additional
applications since December 30. They all have stylized logos like these:

The graphical mark applications cover these domains:

.cool
.hot
.love
.doctor
.blog
.app
.lawyer
.attorney
.artist
.video
.movie
.tunes
.store
.song
.property
.online
.mus
.law
.home
.film
.fashion

French intellectual property law firm Dreyfus & Associes assisted Roussos
with the applications. If the name of the firm rings a bell, that’s because
the firm was founded by Nathalie Dreyfus. She’s a member of ICANN’s
At-Large Advisory Committee. (This is according to
ICANNWiki<http://icannwiki.com/index.php/Nathalie_Dreyfus>.
ICANN’s ALAC membership page currently is a 404 error, so I haven’t
confirmed she’s still a member.)

Dreyfus doesn’t just help companies file trademarks. She also assists with
UDRP complaints. Oh, and she’s also a UDRP
panelist<http://www.domainarts.com/2011/10/21/my-personal-trainer-registers-sofitdc-com-receives-cd-from-sofitel-sent-by-a-wipo-panelist/>.


Her firm isn’t just helping Roussos with trademarks. It also helped new TLD
applicant StartingDot <http://www.startingdot.com/> file a bunch of
trademark applications in the European Union this year. Many of them
include a stylized logo similar to Roussos’ marks.

dot Luxe
dot Restau
dot Sport
dot Moto
dot Auto
dot Vet
dot archi
dot design
dot bio
dot immo
dot ski

(Dreyfus & Associes is listed as the representative on only some of these.)

Let the games continue.
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