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.קום (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?
Written by Greg Thomas, Managing Director of The Viking Group LLC