When ownership, established use and trademark law collide.
You've Built Something. Does That Count?
Imagine you've operated a business using wallet/ on Handshake for years.
You've put in the work, built a reputation and made the name part of your identity.
Then someone applies to operate .wallet through ICANN.
Same name. Different naming system.
Does your history count for anything? Or do you need a trademark before anyone takes notice?
In Monday's article, ICANN's New Dots, Someone Else's Problem?, we explored what happens when naming systems use the same name. Today, the question is whether a trademark is needed to protect what you've built.
Ownership Isn't the Whole Story
Owning a Handshake name doesn't automatically give you trademark rights. Trademarks generally protect names that identify businesses, products or services, rather than names held simply as internet addresses.
And registering a trademark isn't always essential. In some circumstances, genuine commercial use can establish rights without formal registration.
There's also a difference between holding a name for investment and actively building a business around it. Neither automatically gives someone priority over an identical name in another system, but established use shouldn't be overlooked.
ICANN has a Legal Rights Objection process for eligible trademark holders, including those relying on unregistered rights. Simply owning wallet/, though, doesn't automatically qualify you to use it.
That leaves an important question: how should established Handshake use be recognised before a conflict begins?
Operating a Dot Isn't the Same as Using Every Name Beneath It
Consider .com.
Verisign operates the extension, but millions of businesses and individuals register names beneath it. When a trademark complaint concerns one of those names, it's generally directed at the registrant, not Verisign simply for running .com.
Now consider an owner of wallet/ who allows someone else to register shop.wallet/.
If that registrant infringes a trademark, should the wallet/ operator automatically be held responsible?
Not necessarily. Handshake operators don't have automatic immunity, and their legal position isn't identical to Verisign's. Their own conduct and the relevant law still matter.
But the distinction is worth making:
Operating a namespace and infringing a trademark aren't automatically the same thing.
The first question should be who used the disputed name, and how.
Recognition Before Conflict
Handshake owners building real businesses should keep records of their use, understand their responsibilities and consider trademark advice where appropriate. Operators who offer registrations beneath their names should also think about clear terms and a process for handling complaints.
But responsibility shouldn't rest entirely with existing owners.
Applicants seeking new ICANN extensions should check whether the same name is already being used in other naming systems. Identifying established activity early could save both sides considerable expense.
A trademark can help protect a business. It doesn't guarantee control of an equivalent extension elsewhere. And Handshake ownership alone doesn't establish legal priority.
Still, shouldn't years of genuine use count for something?
Before we argue over who has the right to a dot, shouldn't we first recognise who's already using it?
Own the Name | Own the Rules | Own The Dot