Amazon And The Limited May Be Stripped Of Their Brands When It Comes To Vanity Domains

Written by Frank Hayes
July 23rd, 2013

After a week of meetings in Durban, South Africa, focused on vanity domain names, it looks like Amazon’s (NASDAQ:AMZN) application to use its own name is still being denied, while U.S. apparel chains Express (NYSE:EXPR) and The Limited won’t be able to block other applicants from grabbing their names. But one of the vanity-domain decision makers also acknowledged this week that all these cases may yet end up in court.

The quarterly meeting of ICANN, which is selling new top-level domains (what comes after the last dot in a web address) for $186,000 each, did result in the first four vanity domains being officially awarded, but none were for retailers or in the English language. At least some of the new names sought by U.S. chains should be awarded by the end of the summer, ICANN says. But what initially looked like just a very expensive way to acquire their own .brand names is now turning into a process that’s effectively stripping some chains of their brands.

The bellwether for retailers with vanity-domain problems is still Amazon, whose application for .amazon collected objections from several South American governments. (Apparently there’s a river by that name down there. Who knew?) ICANN’s Government Advisory Committee (GAC), which previously put a hold on Amazon’s application, met in Durban to consider it again—and came away ruling that Amazon shouldn’t get its own name in English, Japanese or Chinese because of its geographical meaning.

The ICANN board might overrule the GAC, but it’s not at all clear how likely that would be.

The Limited and Express have a different problem. Both filed trademark objections after a Seattle-based investment group calling itself Donuts Inc. filed applications for more than 300 names, including .limited and .express. Over the space of a week, both objections were denied by the World Intellectual Property Organization (WIPO), which is handling trademark disputes for ICANN. The WIPO’s judge’s conclusion in each case basically came down to “they’re just dictionary words so, as trademark holders, you’re out of luck.”

The 259-store Limited chain actually is out of luck—it didn’t apply on its own for the .limited vanity domain, so it has run out of options within the ICANN appeals system. Fortunately for 620-store Express, it does have its own competing application for .express, so it can still bid for control of the name at auction.

Donuts also applied for .coach, and the 896-store Coach (NYSE:COH) chain has its own competing application, along with a trademark objection that WIPO hasn’t ruled on yet.

Of course, any of those chains could also just pay Donuts to hand over control of the brand name. The fact that Donuts consists of a group of investors who don’t currently run any domain registries but has spent more than $50 million to grab hundreds of names might look like cybersquatting to some retailers. Apparently WIPO—which was brought in specifically because it handles cybersquatting cases involving .com and other existing top-level domains—doesn’t think so.

(For the record, Donuts didn’t apply for vanity domains based on at least two other equally generic dictionary-word names: .target and .apple. The fact that those are the trademarks of two chains that are much larger and more likely to protect their brands in court must just be a coincidence.)

And one WIPO judge doesn’t seem optimistic that WIPO’s decisions will be the last word when it comes to vanity domains. Last week, WIPO’s Sir Ian Barker rejected an objection by the Canadian Real Estate Association (CREA) over the .mls vanity domain, which was also applied for by Irish domain registry Afilias. Barker threw out CREA’s objection, saying that MLS (for “multiple listing service”) has become a generic term.

However, he added in his written ruling, CREA “would still be able to pursue its trademark rights in the Canadian courts.”

Considering the value of the trademarks that have been stripped from these retailers, there’s an increasing chance that court is where many of these cases will end up.


One Comment | Read Amazon And The Limited May Be Stripped Of Their Brands When It Comes To Vanity Domains

  1. Earl Jaforski Says:

    I don’t know if you can say this is stripping companies of their brands. If anything, it points to an abject lesson in brand strategy…. beware of the pitfalls of naming your company or product after a river, fruit or something so generic you might come across those who object to your attempt to control or block the use of that word or term.

    I think the South American countries raise a legitimate point. Consider if Amazon had called itself “Brazil” instead. Nobody would be batting an eye that Brazil might have an issue with any attempt to control that word.


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