User:WilloughbyAvenue/sandbox

.ECO® is a registered trademark of planet .ECO®, LLC., a Connecticut-based domain name-related services provider. planet .ECO® began using the word-mark “.ECO” in connection with the provision of its services in 2005. The .ECO word-mark was applied for on 4/20/2008, published on 09/09/2008, and became registered with the USPTO on 11/24/2009.

Trademark Scope

Registered marks related to .ECO® trademarks include:

• Registration No. 3716170 is .ECO in standard-character form for “Design, creation, hosting and maintenance of internet sites for third parties; Hosting of digital content on the Internet; Providing specific information as requested by customers via the Internet, in Class 42.
• Registration No. 5813887 is .ECO and design for “Computerized database management,” in Class 35.
• Registration No. 5851826 is .ECO in standard-character form for “Advertisement for others on the Internet; advertising and marketing services, namely, promoting the goods and services of others; compilation of advertisements for use as web pages on the Internet; providing and rental of advertising space on the Internet,” in Class 35.

.eco (gTLD) Context

planet .ECO® pursued both ownership, and administation of, the .ECO® trademark and .eco (gTLD) respectively.

One public applicant, Big Room Inc., announced a partnership with Afilias for their back-end and technical needs, and has applied for .eco as a Community gTLD for the environmental community. They have been working with a Council of 12 environmental groups on a Policy Charter for .ECO since 2008. The Council is currently chaired by the World Wildlife Federation (WWF) International and Akatu Institute (Brazil). Other members include Greenpeace, Green Cross International, and Green Belt Movement International. In addition, over fifty other environmental groups, including 350.org, Ocean Conservancy, Amazon Watch and others support the effort, making it one of the largest environmental coalitions ever assembled. The Executive Directors of the United Nations Environment Programme and the United Nations Global Compact also included letters supporting a community-designated .eco domain and welcoming a multi-stakeholder approach to administering it on behalf of the environmental community.

.eco was identified as a contentious TLD early on, with the main parties being Big Room Inc., and Dot Eco LLC. Dot Eco LLC was aligned with former Vice-President of the USA, Al Gore, and the Alliance for Climate Protection, the Sierra Club and Surfrider Foundation. Big Room Inc. was, at that time, largely associated with Mikhail Gorbachev, the Russian ex-president, Green Cross International and WWF International. In August 2009, Dot Eco LLC released a 'green paper' critiquing Big Room Inc.'s approach. Big Room did not respond to the critique other than that it was 'unfortunate'.

On September 28, 2011, Al Gore's organization, the Climate Reality project dropped its support to the Dot Eco LLC bid to give way to the application of Big Room Inc., which is supported by Michael Gorbachev's Green Cross International. A spokesman from Gore's camp explained that Climate Reality as a non-profit organization has limited resources and they decided to focus their campaign on global climate issues.  Despite losing Gore's support, Minds + Machines announced its intentions to apply for a .eco TLD whether they would do that under their own name or through a client or separate company was initially unclear.

Top Level Domain Holdings Ltd., the parent company of Minds + Machines which held 25% stake on Dot Eco LLC, confirmed that the company will apply for the .eco gTLD. Peter Dengate Thrush, Executive Chairman of Top Level Domain Holdings said,"...We believe the Dot Eco LLC consortium is exceptionally well placed to compete in every respect of its .eco application and run that gTLD in a meaningful manner. We are therefore delighted to continue give it our full infrastructural and financial support."  However, they did not apply through the Dot Eco LLC venture, but instead applied on their own behalf. Antony Van Couvering previously stated that applying for a community gTLD is too risky. He believes that the .eco TLD will not pass ICANN's Community Priority Evaluation, which means the company's application for .eco TLD will not be under community gTLD category.

planet .ECO® LLC, a small disadvantaged business based in Connecticut is the registrant and exclusive trademark holder of .ECO®. The small business is also a gTLD contender for the ".eco" string and filed an infringement case against gTLD contenders Big Room Inc. and Dot Eco LLC on March 2, 2012. The complainant asked the court to order Big Room and Dot Eco LLC to stop infringing on their mark, submitting further documentation and withdraw their application for the .eco string with ICANN. Dot Eco LLC responded to the complaint with an argument that the trademark was obtained illegally by planet.ECO and it should be cancelled by the court. In total, five trademark cancellation attempts were made by Big Room Inc. and Dot Eco LLC, all of which were unsuccessful. Dot Eco also argued that the complainant is is trying to prevent competition. On the other hand, Big Room filed a motion to dismiss because of lack of jurisdiction.