ICANN filed this memorandum in support (pdf) of its motion to dismiss over lawsuit that IMAGE ONLINE DESIGN, INC a previously applicant for .Web filed against ICANN last year.
Here are the highlights of the ICANN filing:
In 2000, IOD executed a release in favor of ICANN so that ICANN would consider IOD’s application to operate a .WEB TLD. IOD knew that ICANN might decline to award IOD the requested TLD, or might award the TLD to a different entity, but IOD specifically released ICANN from claims related to IOD’s 2000 Application and ICANN’s establishment or failure to establish a .WEB TLD. The fact that twelve years passed before ICANN accepted new applications for the .WEB TLD does not mean that the language in the release is somehow less effective.
The release is just as enforceable today as in 2000.
In its 2000 Application, IOD released ICANN “from any and all claims and liabilities relating in any way to (a) any action or inaction by or on behalf of ICANN in connection with this application or (b) the establishment or failure to establish a new TLD.” (Request for Judicial Notice (“RJN”) submitted with ICANN’s Motion, California courts have routinely upheld
In fact, it is well-settled under California law that corporations “are entitled to contract to limit the liability of one to the other, or otherwise allocate the risk of doing business.”
Likewise, IOD was well aware of its potential trademark claims before it executed the release in the 2000 Application because it was in the process of litigating those claims.
Nothing in the Application purports to exempt ICANN from all forms of “fraud, or willful injury” to IOD’s property, “or violation of the law,” and IOD has presented no evidence or argument of any such intention or conduct on ICANN’s part. Indeed, the exculpatory clause does not permit ICANN to violate any and every law with impunity. It merely bars suit by IOD on claims relating to ICANN’s action or inaction with respect to IOD’s 2000 Application or “the establishment or failure to establish a new TLD.”
IOD’s Breach Of Contract Claims Should Be Dismissed.
IOD argues that ICANN breached a contract with IOD by failing to “consider” IOD’s 2000 Application for a .WEB TLD before accepting seven new applications for the .WEB TLD in 2012 as part of an entirely new TLD program.
To the extent IOD is arguing that to “consider” IOD’s 2000 Application ICANN must have issued a formal rejection of the application, IOD has failed to identify any contractual term requiring such action.
As ICANN demonstrated in its Motion – and as IOD failed to challenge in its Opposition – the documents forming the 2000 Application make clear that ICANN would “evaluat[e] all of the applications received” and, in mid-November 2000, “announce its selection of applications for negotiations toward agreements” with any applicants it approved.
There was no promise that ICANN would do anything other than announce the TLDs it selected for approval, which is exactly what ICANN did.
IOD claims, without citation, that statements made by a member of ICANN’s Board of Directors somehow support its breach of contract claim.
There is no allegation, however – and IOD cannot plausibly contend – that these alleged statements are somehow part of the contract ICANN and IOD executed before the statements were made.
As set forth in ICANN’s Motion, to state a claim for trademark infringement under 15 U.S.C. section 1114, IOD must allege facts plausibly suggesting that:
(1) it has a valid, protectable trademark; (2) ICANN used an infringing mark in commerce; and (3) the infringing mark is likely to cause consumer confusion.
1 First, the Complaint contains no facts plausibly suggesting that ICANN has “used” the alleged .WEB trademark in “the sale or advertising” of ICANN’s own services.
Nor is there any plausible justification – and IOD offers none – to infer that ICANN would use the .WEB mark to market its own services.
Second, assuming ICANN were to “use” the .WEB trademark in the sale and advertising of its own services, there is no likelihood of confusion because goods and services covered by IOD’s mark – “mouse pads,” “fanny packs” and “backpacks” – are totally unrelated to ICANN’s only operations, the coordination of the Internet’s DNS. Ironically, IOD claims that it is too early to make this determination (which contradicts IOD’s argument that its trademark claims are ripe), but the Court can determine as a matter of law that the goods and services are unrelated, which permits dismissal of the claims.
C. IOD’s Section 1125 trademark infringement claim remains deficient.
This Court already has found that the .WEB TLD enjoys no common law trademark protection under 15 U.S.C. section 1125 because the TLD does not indicate source to a potential domain name registrant or a potential web site visitor.
In short, the Complaint is devoid of any facts upon which IOD can plausibly state a claim for relief under Section 1125. IOD’s alleged .WEB mark is nothing more than a generic TLD, with no source-identifying function.
For the foregoing reasons, ICANN respectfully requests that its Motion to Dismiss be granted in its entirety.