According to Real Estate Magazine, the Irish company Afilias, which own domains such as .mobi and .xxx, snagged the name after the Internet Corporation for Assigned Names and Numbers (ICANN) expanded the number of top-level domain names.
Since CREA owns the MLS trademark, it applied for the exclusive use of the .mls domain more than a year ago under the Legal Rights Objection (LRO).
Bill Harrington, general counsel of CREA, told the magazine, “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.”
However, round one of the name battle went to Afilias. The World Intellectual Property Organization panel ruled in favour of the company as CREA has a certification mar for a generic term in Canada only.
Sir Ian Barker, who made up the one-person panel, explained that “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).”
Harrington also noted that 10 other rights holders have filed similar LROs and lost every time. It’s a matter of scope. If you don’t have trademark registered in every country on the world, he said, it won’t be granted.
What’s next? CREA has until October to decide whether it wants to file a community application for .mls, which can be made when there’s an association with a specific domain name. But if it doesn’t proceed, or loses the community application, the name would go up for auction. Meaning whoever’s willing to the pay the most, gets the name.
As for The Realtor trademark, it’s owned equally by CREA and National Association of Realtors and the groups have exclusive rights.