Artemis Internet Inc. (“Artemis”), applicant for the .SECURE gTLD, thanks the Office for the opportunity to comment.
If ICANN designates the .SECURE gTLD to Artemis, Artemis will provide a unique registry and registrar offering under the service mark .SECURE. Specifically, Artemis’ .SECURE branded registry and registrar offering will (i) utilize proprietary back-end processes and a complementary governance structure to integrate the highest level of information protection for second-level operators of domain names registered within the .SECURE gTLD and (ii) enable consumers to identify the .SECURE mark at the end of a URL as a trusted mark for services provided exclusively by Artemis for consumers’ enhanced Internet safety.
As a potential gTLD operator, Artemis applauds the USPTO for revisiting the issue of allowing the registration of a mark that is comprised of a gTLD for domain name registry services. The USPTO presciently recognizes that gTLDs can no longer be rejected as mere abbreviations for entity types or classes. Rather, consumers will associate certain gTLDs with a single source for specific domains, especially those that are specifically designed to convey a particular consumer benefit.
ACCORDINGLY, ARTEMIS RESPECTFULLY REQUESTS THAT THE OFFICE OMIT THE PROPOSED REQUIREMENT OF PRIOR REGISTRATION OF THE SAME MARK IN THE SAME FIELD (SECTION II(A)(1)(A)). By carving out such a narrow niche for what in reality is only a handful of potential applicants, the prior registration requirement seems to frustrate the Office’s intent to revise its policy to reflect the changes to consumer perception about TLDs that will result from the anticipated Internet expansion. If the goal is to consider for trademark registration gTLDs that consumers “will perceive as a source identifier,” the prior registration requirement defeats this purpose. Specifically, the requirement would (i) extend protection only to major established marks and (ii) automatically disallow from registration new gTLDS which consumers may perceive as source identifiers. Artemis respectfully submits that any mark that is used in commerce to identify gTLD services can potentially serve as a source identifier without being associated with a currently registered trademark for unrelated services.
Omitting the prior registration requirement would enable the registration of marks for new gTLDs that provide unique registry and registrar services that consumers will solely associate with their respective gTLD providers. Artemis’ planned .SECURE offering falls into this category. As noted above, the .SECURE mark would serve as a source identifier for Artemis’ provision of trusted domain names — an offering which does not and cannot exist today because it requires operation of a new gTLD. For example, were consumers to see the domain name "famousbank.secure," they would recognize that the mark FAMOUS BANK identifies a source of banking services and the mark .SECURE identifies the rigorous information protection processes provided by Artemis to protect them and their confidential information.
.SECURE is not the only potential gTLD that consumers may associate with a sole gTLD provider. Any gTLD that restricts domain names to meet unique and selective criteria can potentially serve as a source identifier for those specific domain name registry services.
For example, Google subsidiary Charleston Road Registry has applied for the gTLD .ESQ and intends to offer domain names only to verified legal professionals under the .ESQ mark.* Thus, legal professionals and their clients would associate the .ESQ mark with Charleston Road Registry for offering these select and verified domain names.
Similarly, the Church of Latter Day Saints has applied for the gTLD .LDS. Church representatives, officers, employees and affiliated organizations could register .LDS domains which would provide a “trusted online source” where members of the LDS community can receive information that’s been authenticated by the Church and its leaders. Thus, members of the LDS community and other visitors to .LDS domains would identify the .LDS mark with the Church of Latter Day Saints.
Should the USPTO maintain its proposed prior registration requirement, an alternative resolution to the issues raised above would be for USPTO to permit an applicant for a gTLD mark who does not currently own a prior registration to register on the supplemental register as an interim step. When the applicant can show its mark has acquired secondary meaning among relevant consumers, the applicant would then be permitted to register on the principal register.
Thank you again for the opportunity to comment. It has been a pleasure to address you. We appreciate you taking time to consider Artemis’ perspective.
Legal Counsel and Director of Policy for Artemis
*The information presented here on .ESQ, and .LDS is taken from the publicly available portion of the respective gTLD applications. These applicants have not endorsed the contents of this comment.