1215.02(d) Marks Comprised Solely of gTLDs for Domain-Name Registry Operator and Registrar Services
A “registry operator” maintains the master database of all domain names registered in each top-level domain, and also generates the “zone file,” which allows computers to route Internet traffic to and from top-level domains anywhere in the world, and a “registrar” is an entity through which domain names may be registered, and which is responsible for keeping website contact information records and submitting the technical information to a central directory (i.e., the “registry”). The terms “registry operator” and “registrar” refer to distinct services and are not interchangeable. Further, “registry operators” and “registrars” are distinguishable from re-sellers, which are entities that are authorized by registrars to sell or register particular Internet addresses on a given top-level domain. See Internet Corporation for Assigned Names and Numbers, Glossary, http://www.icann.org/en/about/learning/glossary (accessed March 19, 2014).
A mark composed solely of a gTLD for domain-name registry operator or registrar services fails to function as a trademark because consumers are predisposed to view gTLDs as merely a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services. Therefore, registration of such marks must initially be refused under Trademark Act §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127, on the ground that the gTLD would not be perceived as a mark. However, the applicant may, in some circumstances, avoid or overcome the refusal by providing evidence that the mark will be perceived as a source identifier. In addition, the applicant must show that: (1) it has entered into a currently valid Registry Agreement with the Internet Corporation for Assigned Names and Numbers (“ICANN”) designating the applicant as the Registry Operator for the gTLD identified by the mark and (2) the identified services will be primarily for the benefit of others.
If the gTLD merely describes the subject or user of the domain space, registration must be refused under Trademark Act §2(e)(1), 15 U.S.C. §1052(e)(1), on the ground that the gTLD is merely descriptive of the registry services.