Fresh top level domain name lawsuit dismissed but leaves door open for ACPA for TLDs
Judge grants motion to dismiss top level domain dispute.
A federal district judge has dismissed (pdf) a lawsuit brought by Del Monte International against Del Monte Corporation over the top level domain name .delmonte.
In doing so, the court also left the door open on the possibility of the Anti-cybersquatting Protection Act (ACPA) being applied to fresh top level domain names.
Here’s the background: Del Monte International (DMI), a licensee of the Del Monte brand as well as a trademark holder of the brand in South Africa, applied for the .delmonte top level domain name. Del Monte Corporation (DMC) filed a Legal Rights Objection to the fresh TLD application and won.
DMI subsequently sued. The lawsuit was weird – it essentially took a lawsuit one would file to stop a UDRP decision and applied it to the Legal Rights Objection for a fresh TLD.
The case was heard by U.S. District Judge Ronald S.W. Lew, Central District of California.
He determined that his court has jurisdiction over the case, and then turned to an evaluation of the ACPA for a top level domain rather than a second level domain name.
The language of the ACPA states that “any alphanumeric designation” on the Internet that is “part
of an electronic address” may be a domain name so long as it “is registered” with “a domain name registrar,
domain name registry, or other domain name registration authority.”
The question is whether ICANN is a “domain name registration authority”. Although courts have ruled that top level domain names aren’t subject to ACPA in the past, ICANN played a greater role in doling out fresh TLDs than TLDs in the past.
Lew writes:
By receiving and reviewing applications for fresh gTLDs and by ultimately delegating fresh gTLDs into the root zone, ICANN acts much like a traditional domain name registrar. And by performing regular audits and in delegating fresh gTLDs into the root zone, ICANN acts much like a traditional domain name registry. Even so, given the limited and circumscribed nature of the fresh gTLD program, construing ICANN as a “domain name registration authority” seems akin to cramming a square peg into a round hole.
He goes on to note that the reason ACPA was necessary in the first place is since the “application” and “registration” for a second level domain name occur simultaneously. That is not the case with fresh TLDs, which have a long process of review to stop any potentially trademarked registrations.
Also, since the domain name was never “registered”, the court found:
It follows that Plaintiff could not have “trafficked in” the .delmonte gTLD without a “registration” as without ICANN’s delegation of the .delmonte gTLD, Plaintiff had nothing to transfer for consideration. Simply put, Plaintiff cannot transfer something that does not exist. The same holds true for whether Plaintiff “used” the .delmonte gTLD.
Will this court’s decision play a role in future TLD disputes? It’s possible. It left the door open for ACPA applying to delegated TLDs:
The Court recognizes the paradoxical nature of this result – second level domain disputes adjudicated under the UDRP could be subject to review under the ACPA but disputes over top level domains may not. Still, this Court believes that extending the ACPA to cover such disputes would upset the balance reached by ICANN in formulating its fresh gTLD program. This Court is convinced that dismissal is warranted given the precautions set forth within ICANN’s fresh gTLD application process and the stark contrast between that application process and the second level domain registration system. Moreover, the Court cautions that this holding does not necessarily foreclose application of the ACPA in the context of successful gTLD registrations. The Court agrees with Defendant that owning a gTLD “carries with it a far stronger public association of brand ownership than any domain name registration.” The need for judicial review in the context of a successful gTLD application therefore is much more significant than in the context of an unsuccessful application.
