Image Online Design, Inc. v. Internet Corp. for Assigned Names & Numbers

Stated intention to license the use of a service mark is too speculative to form the basis of an infringement action.

Internet Corp. for Assigned Names & Numbers (ICANN) is a California public benefit corporation that administers the primary domain name system (DNS). The DNS converts numeric IP addresses into alphanumeric host names. Image Online Design (IOD) provides internet registry services through the service mark .WEB. IOD has used an alternate DNS system to accomplish their work.
In 2000, ICANN began accepting applications for corporations wishing to operate top level domain. IOD applied but was not selected. In 2012 ICANN initiated another round of applications for the right to operate a .WEB top level domain on ICANN’s DNS root system. IOD did not submit a new application because ICANN had stated that IOD’s previous application was still pending. ICANN did not select IOD to operate the .WEB top level domain and has announced its intention to another applicant to operate the .WEB domain.
IOD claims, among other things, that ICANN’s threatened use of the .WEB mark constitutes actionable conduct and ICANN may be enjoined from moving forward with its plans to license use of the .WEB domain.
The court noted that: no party had been chosen to operate the .WEB registry, the party chosen might have a claim to use the .WEB mark, ICANN might still choose not to use the .WEB mark, and ICANN’s use of .WEB might not create confusion with IOD’s .WEB. The degree of speculation led the court to find IOD’s claims not ripe for adjudication and to DISMISS.