Editor’s note: This story has been updated to include comments from John Jennison, a patent attorney representing Nanning Billin Network Ltd. and MLS Network Inc. According to Jennison, William Hicken is no longer the owner of the service mark "MLS," having sold it to Nanning Billin after renewing the mark in October.
Multiple listing services that have banded together in the hopes of creating and managing a new generic top-level Internet domain — .MLS — say they expect opposition from the company that owns and operates MLS.com.
A total of 54 MLSs representing more than half of U.S. MLS subscribers have joined the MLS Domains Association, which was formed in 2010 and plans to apply this year to the Internet Corporation for Assigned Names and Numbers (ICANN) to create and manage the ".MLS" top-level domain.
If ICANN grants the nonprofit group the authority to manage a new ".MLS" domain, the MLS Domains Association says it would permit only MLSs and Realtor associations to register .MLS names. The MLS Domains Association maintains that consumers should have a reliable way to distinguish websites operated by MLSs from third-party referral and lead generation sites.
Some third-party sites — including MLS.com — have registered dot-com and dot-net domain names that incorporate the term "MLS," even though they have no official ties to multiple listing services.
MLS.com — a HomeGain.com partner site that refers traffic to dozens of real estate brokerage websites, including ZipRealty.com — is registered to Yang Lin, president of China-based Nanning Billin Network Ltd. Nanning Billin also owns the website multiplelistingservice.com, which redirects visitors to MLS.com.
Nanning Billin owns the registered service marks "MLS" and "MLS.com America’s real estate portal," having purchased them from a South Carolina corporation, MLS Network Inc., and is attempting to register "DOTMLS." The company has informed the MLS Domains Association that it intends to oppose the group’s application to ICANN through a "rights objection."
Although the MLS Domains Association says it believes any such objection would be unfounded, it expects "some kind of fight" with Nanning Billin going forward.
John Jennison, a trademark attorney for Nanning Billin and MLS Network Inc., confirmed via email that Nanning Billin is prepared to challenge the MLS Domains Association’s planned application to ICANN to create and manage a .MLS top-level domain.
"If (the) MLS Domains Association decides to continue with the application for the top level domain .MLS, then Nanning Billin Network Ltd. expects to review all of its legal remedies and rights to protect its MLS federal trademark rights, and that includes the right of objection to the MLS Domains Association application for .MLS," Jennison said.
Officials with the MLS Domains Association say there are signs Nanning Billin may be preparing to file its own application with ICANN to create and manage a new ".MLS" top-level domain.
On Jan. 8, Nanning Billin sought to register the term "DOTMLS" as a U.S. service mark, in two applications filed outside of the ICANN approval process.
Attorneys with the U.S. Patent and Trademark Office have rejected both applications, one which would cover the use of DOTMLS in providing "consulting services in the field of domain name registration," and the other for "registration and transfer services" of domain name registrations.
"Registration is refused because the applied-for mark consists solely of a top-level domain name," said Trademark Examining Attorney Myriah Habeeb in a Jan. 30 letter rejecting the application to register DOTMLS as a service mark for providing domain name registration consulting services.
In rejecting the application to register DOTMLS as a service mark for domain name registration and transfer services, Trademark Examining Attorney Seth Rappaport noted that "MLS stands for ‘multiple listing service.’ "
"Since the applicant is providing domain name services related to multiple listing services and/or domain name services for real estate listing entities, the applicant’s mark is merely descriptive of the identified services," Rappaport noted.
Nanning Billin has six months to respond to the rejections. Habeeb and Rappaport both requested additional information from the company, such as whether it intends to create and operate a registry for .MLS as a new top-level domain or sign a contract with ICANN.
Jennison said there is usually a three- to four-month backlog before applications are examined, and that the U.S. Patent and Trademark Office "examined the applications out of turn." He said "there appears to be inconsistencies and timing questions with the examination" of the DOTMLS service mark applications.
If Nanning Billin does intend to apply to ICANN to create and manage a .MLS top-level domain, "we think our application will be superior," said attorney and consultant Brian Larson of his client, the MLS Domains Association.
ICANN has an approval track for "community based" Internet destinations, he said.
"If you can claim you represent that community — such as if there’s a trade association backing your application — the community-based applications trump the generic applications in the ICANN process," Larson said.
If granted the power to administer a .MLS top-level domain — Larson estimates it will cost nearly $1 million to win ICANN approval and $500,000 a year to operate — the MLS Domains Association’s mission would be to assign domains to MLSs and "educate consumers that only MLSs can operate .MLS sites," he said.
"None of this would prevent (Nanning Billin) from continuing to operate MLS.com," Larson said. "It’s not our goal to prevent people from doing anything."
In the hopes that ICANN will grant it authority to administer a new .MLS domain, the MLS Domains Association has already allocated more than 250 domain names to MLSs, including Atlanta.mls, Chicago.mls, MetroDetroit.mls, MyFloridaHomes.mls, PhillyListings.mls, Seattle.mls, SoCal.mls, and WestPalmBeach.mls.
MLS service marks
The National Association of Realtors has trademarked the Realtor service mark, and aggressively polices its use in domain names. NAR also restricts its own members from using the term "MLS" in their website addresses or marketing materials — something of a sore point with some Realtors who say third-party website operators aren’t bound by the same restrictions.
While it’s difficult or impossible to trademark a term that’s merely a description of services — such as "multiple listing service" — it’s possible to register a service mark that includes the term MLS, or even "MLS" itself, for a narrowly defined use.
More than a decade ago Jennison, the patent attorney representing Nanning Billin, helped another client — William M. Hicken, president of South Carolina-based MLS Network Inc. — register the term "MLS" as a service mark for several narrow uses that did not include real estate.
Within months of obtaining service marks on the term "MLS" in October 2001, Hicken filed a complaint against Maryland real estate broker David Therrien over that broker’s use of the domain name MLS.biz.
Although Hicken’s service marks covered only narrow uses including domain name "consulting and appraisal services," he won an initial victory when an arbitrator ordered Therrien to transfer the disputed domain, MLS.biz, to MLS Network.
But Therrien — a former Keller Williams chief technology officer — filed suit against Hicken in federal court to maintain control of the website.
"It is a well-settled principle of U.S. trademark law that, unless a mark is a ‘famous’ mark, the same or similar marks may exist in different classes as used in connection with different goods or services," Therrien’s attorney argued.
"Furthermore, marks which are not particularly distinctive are entitled to narrower protection than marks which are unusually distinctive."
After two years of litigation, Hicken agreed to a settlement that required him to pay Therrien $25,000 and drop his claims to the MLS.biz domain.
MLS Network acknowledged in the settlement that "its ‘MLS’ registered trademarks do not confer … any rights of ownership in or use of the MLS.biz domain name."
Hicken renewed one of the two "MLS" service marks last year. The other expired.
In October 2011, the U.S. Patent and Trademark Office granted Hicken’s application to renew the MLS mark originally granted in 2001 for "consulting and appraisal services in the field of registration, purchase and sale of businesses based on global computer networks, domain names for global computer networks, and/or toll free telephone numbers."
Another trademark governing use of the term MLS, granted to MLS Network Inc. "for consulting services in the field of computer software for language transaction," expired in February 2011.
In a newspaper advertisement published in September in support of Hicken’s application to renew one of his MLS trademarks, MLS Network listed an email address, "Bill@mls.com," as a point of contact for the company.
A request for comment emailed to that address generated no response. A man who answered the phone number for MLS Network (the phone number was published in the newspaper advertisement cited above) said Hicken was traveling and unavailable for comment. The man said Hicken sold his company to Nanning Billin.
Until recently, MLS Network Inc. also owned the service mark, "MLS.com America’s real estate portal," awarded in January 2007 for "advertising and promotion relating to the sale of services in the field of real estate for third parties" through the transmission of ads on computer networks.
Last month, Lin informed the U.S. Patent and Trademark Office that MLS Network Inc. had assigned the mark to Nanning Billin Network LTD, a China corporation. According to a database of online records maintained by the South Carolina secretary of state, a related company, Nanning Billin Network U.S. Inc., is headquartered in Columbia, S.C.
Jennison, the attorney representing Hicken, Lin and Nanning Billen in separate trademark office proceedings, said that after experiencing "substantial growth" in business interests and expanding into related areas, MLS Network sold the MLS.com domain name, businesses and MLS trademarks and the goodwill associated with them to Nanning Billin Network Ltd.
Jennison said the sale included the trademark MLS for consulting in the field of registration, purchase and sale of domain names that Hicken renewed in October.