United States: Amazon’s Inability To Register Domain Name .Amazon Is An Interesting Case Study For New gTLDs

Last Updated: July 4 2014
Article by Joshua S. Jarvis

Do you want your company to control .app or .restaurant? Applying to operate a generic top-level domain (gTLD) isn't for the faint of heart.  Although several hundred companies ponied up the $185,000 application fee for over 1,900 total gTLD applications, that's only the first stage in the process.  Once filed, ICANN reviews each application for financial, technical, and operational competence, ensuring that each applicant has the financial wherewithal, technical savvy, and a comprehensive plan to safely operate the gTLD registry for at least the length of the initial ten-year contract term.

If an application passes muster, there are other potential obstacles to contend with.  If multiple companies apply to register the same string (for instance, there were thirteen applications for .app), the string is entered into a contention set, at which point companies must either work out a compromise or bid in an auction for the right to operate the gTLD.

Third-parties also have the opportunity to object to gTLD applications on various bases — string similarity (if a gTLD is similar to an existing TLD or to another applied-for gTLD string), legal rights (if gTLD string is confusingly similar to trademark owned by the complainant), community (if "substantial opposition to the gTLD application exists from significant portion of the community that the gTLD string targets"), and public interest (if the gTLD contradicts "generally accepted legal norms of morality and public order").

.Brand Battles

Even companies applying to register TLDs corresponding to their own trademarks (".Brand" TLD applicants) have encountered obstacles.  Outdoor retailer Patagonia, which shares its name with the geographic region in South America, applied to register .patagonia. The application drew objections based primarily on an outcry in Argentina.  Del Monte International's application to register .delmonte was refused after objections from Del Monte Corporation (which licenses the mark to Del Monte International) that the application was a breach of a longstanding DEL MONTE trademark license.  And two companies with a common history — Merck KGaA and Merck & Co., Inc. — each with legitimate trademark rights in different jurisdictions, tussled over .merck and .emerck, disputes that have boiled over into lawsuits.  A full list of various objections filed, along with their dispositions, is available at ICANN's Objection Determinations site.

Can Amazon Own .Amazon?

Amazon is the latest brand owner to be reminded that, when it comes to trademark rights, ICANN isn't the friendliest of venues.  Amazon applied for 76 gTLDs, including many generics, but also for the gTLD for its core brand, .amazon, as well as corresponding Japanese and Chinese character versions of the same string. As noted above, there are a variety of obstacles that can arise during the review of a gTLD application.  However, even outside of initial ICANN review, string similarity analysis, and formal objection procedures, gTLD applications can be defeated by ICANN itself, and by ICANN's Governmental Advisory Committee (GAC).

GAC Attack

The GAC (pronounced "gack") is a strange beast.  It is comprised of national governments and international economies (such as the EU), and exists to advise ICANN on issues of public policy.  While the GAC is only one of various constituencies that form ICANN's ostensibly bottom-up, multistakeholder organizational structure, in practice it possesses the power to single-handedly stop an gTLD application dead in its tracks.

Back in November 2012, the GAC issued an "early warning" at the behest of the governments of Brazil and Peru, and endorsed by other countries, notifying Amazon that granting exclusive rights to the .amazon domain would "prevent the use of this domain for purposes of public interest related to the protection, promotion, and awareness raising on issues related to the Amazon biome."  GAC early warnings do not constitute formal requests to ICANN that an application be denied, and Amazon opted to maintain its application.

Independent Objection to .Amazon

In March 2013, ICANN's Independent Objector (IO), whose job it is to monitor new TLD applications and act "solely in the best interests of global Internet users," filed a Community Objection, expanding on the arguments that the GAC had put forth in its early warning.  In April 2013, the GAC advised the ICANN Board to delay the .amazon gTLD applications, and in July 2013, it formally advised the ICANN Board to terminate the applications.  Under ICANN rules, such formal advice from the GAC creates a "strong presumption" that the subject application should not be approved.  At this point, things were looking dim for .amazon.

However, in January 2014 the International Chamber of Commerce, the independent organization that arbitrates Community Objections, refused the IO's Objections on the basis that the IO had a conflict of interest due to his professional ties with the governments involved, and also that the IO had not shown that there was "substantial opposition to the application" from the "Amazon" community, or that the delegation of the .amazon domain name "would lead to substantial detriment." But Amazon's victory dance didn't last for long.  On May 14, 2014, ICANN's New gTLD Program Committee, which is essentially the final authority on who's in and who's out, voted to follow the GAC's advice on .amazon, formally rejecting Amazon's application to operate .amazon and its Japanese and Chinese string counterparts.

Amazon's Options Going Forward

Amazon still has options, but they're not great.  On May 29, 2014, Amazon filed a Reconsideration Request asking the ICANN Board to reverse its decision, but given the GAC presumption and the New gTLD Program Committee's decision, this is almost certainly a longshot.  A more promising path may have been to seek relief via ICANN's Independent Review Process, but the time to do so has passed and it is unclear whether Amazon availed itself of that option.  It could also evaluate a legal route via the courts, or try once again to work with the relevant governments to come to an amicable arrangement (where, for instance, it might agree to protect certain second-level names from abuse – such as tours.amazon or peru.amazon – or keep them available to registrations that further the public interest of the "Amazon" region).

At this point, it looks like Amazon may be facing a stacked deck. We'll keep an eye on further developments.

To view Foley Hoag's Trademark and Copyright Law Blog please click here.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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