CREA fights for .mls domain name

Monday, August 19th, 2013

Danny Kucharsky

CREA is waging a battle to win exclusive usage of the .mls domain name on the Internet.

The fight pits CREA against Afilias, an Irish registry company that has about 10 years of experience in launching, operating and licensing such domains as .mobi and .xxx.

Round one of the battle has gone to Afilias, which estimates it would have about 50,000 registrations for .mls after three years, should it win .mls exclusivity.

It all began when the Internet Corporation for Assigned Names and Numbers (ICANN), the non-profit group that oversees the Internet, decided to expand the number of top-level domain names (everything that comes after the dot on a website such as .com, .gov, .org) from a few handfuls to thousands of names.

While the applications are extremely complex, anybody can apply, says Bill Harrington, general counsel of CREA. As a result, “all of the major trademark owners across the world have been applying for top-level domain names containing their trademark.”

Since CREA owns a number of trademarks in Canada, including MLS and Multiple Listing Service, it decided to apply for the .mls domain more than a year ago. Says Harrington: “If you’re the owner of a trademark, you want to protect your trademark and if .mls falls into the hands of a third party and they start selling .mls domains in Canada, it will weaken CREA’s MLS trademark.”

In an attempt to win the battle for .mls exclusivity against Afilias, CREA applied for a Legal Rights Objection (LRO), a process open to parties that have a legal right to the term under dispute.  The process is being handled by the World Intellectual Property Organization, which has an arrangement with ICANN.

“If we had been successful in our LRO, that would have knocked Afilias out of contention,” Harrington says.

However, sole panel expert Sir Ian Barker ruled in July that “the panel cannot see the justification for refusing to allow the applicant (Afilias) to operate in every country because the objector (CREA) has a certification mark for a generic term in Canada. Had the objector’s certification been other than a generic term, its case might have been stronger but MLS is a generic term used in English-speaking jurisdictions.”

Furthermore, “whilst the objector’s certification mark may be tolerably well-known in Canada, it is not reasonable to forbid the universal use by its applicant as a (top-level domain).”

In other words, Harrington says, Barker decided, “‘Yes CREA, you have a trademark but that shouldn’t prevent global Internet users from using it.’ This decision is stupid for a number of reasons.”

The primary reason is that if CREA obtained .mls exclusivity, it would license it out to international users but would protect .mls in Canada, he says.

“The difficulty with any third party getting it is there is no protection in Canada. They will start marketing .mls in Canada and if someone else other than CREA is marketing .mls, there are substantial trademark problems. It could get into a battle that goes on forever.”

CREA owns the MLS trademark in Canada because “we were smart enough to apply for a trademark in MLS after the early 1960s.” While MLS is prominent in the U.S., it’s a generic term there. “Nobody owns it because nobody applied for the trademark registration.”

Harrington believes the National Association of Realtors (NAR) once tried to apply for the MLS trademark in the U.S., but by the time it did so, the term was so prominent it was just another word in the English language. “If a term has become common in the English language, you can’t apply to trademark it.”

Since MLS is a generic term everywhere but Canada, the adjudicator decided “we’re not going to let a Canadian trademark affect the global use of MLS,” Harrington says. However, “the reasoning is flawed because CREA would not prevent global use of MLS.”

Harrington says 10 other rights holders have filed similar LROs and have lost in every case. The reasoning appears to be that if you don’t have a trademark registered in every country in the world, the LRO will not be granted, he says.

The LRO loss doesn’t mean CREA has lost the chance for .mls exclusivity. It still has a number of available options.

For example, CREA can also proceed with a community application for .mls, which can be made by organizations that have some sort of association with the domain name at play. CREA has until October to decide whether to proceed with this option.

If CREA decides not to proceed with the application or is unsuccessful, the domain name goes up for auction and the bidder with the deepest pockets wins.

Aside from aiming to protect its unauthorized use by third parties in Canada, CREA has not developed a strategy for .mls use.

However, CREA has a strategy for .realtor and will be licensing the domain name to members.

The Realtor trademark is owned in Canada by Realtor Canada Inc., which is owned equally by CREA and NAR. In the U.S., NAR owns the Realtor trademark.

The groups were alone in applying for .realtor and have obtained exclusive rights to the domain name. “We’re going to have a North American strategy for .realtor. We’re going to be encouraging our Realtors to get a .realtor domain and we’re going to be marketing that as the place to be for real estate in Canada,” says Harrington.

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