Re: [ga] ICANN benefits

["Tim Langdell, PhD" <langdell@technologist.com>]

Sandy

I heartily concur. Having been involved in numerous trade mark matters over
the last 20 years, the aspects that remains relatively "sane" in
international trade mark law are (a) it IS international -- that is, having
a US trademark does not give you automatic rights in the UK, or Germany or
Japan or etc, or vice versa, and (b) it protects the use of the same or very
similar marks as long as they use is distinct and consumers will not get
confused as to the true source and ownership of the goods or services
associated with  the mark.

The key problem with applying trade mark law unthinkingly to the Internet as
it stands at this moment in time, is that the vast majority of worldwide
commerce is under the ".com" domain. And where you have only one TLD (.net
has never gained the same favor) then of course you can only have one owner
of any given name: your example using "Sun" is a good one. While there can
only be one "sun.com" there are probably tens if not hundreds of entirely
legitimate owners of a trademark in the US alone of either the word "sun" or
some variant on it. Considering the world market -- which the Internet is,
we cannot and must not ignore that -- then the number of rightful owners of
the mark "sun" probably spreads to thousands. More, in the case where an
even more commonly used mark is used as an example (please, no one respond
that my figures are incorrect -- this is "for example" only and I am not
meaning to say I have researched the trade mark "sun" per se in all
countries world wide -- that said entering the search term "sun" in just the
USPTO TM database gives 6,820 "hits").

Even an attempt to rely on "famous names" (an old fall back in the IP world)
cannot work: you cannot say that the most famous name holder for a given
trade mark name is the one who should have the right to a given "TMname.com"
as what is "famous" varies from country to country/territory to territory.
And it is not inconceivable that two identical marks could both achieve
famous name status for two quite distinct markets within the same
country/territory.

Also, blind application of existing trademark registrations alone to
deciding who has a right to a given domain name does not allow for the quite
reasonable claim that one can build a worldwide commercial entity based
solely on the web (e.g. Amazon.com) which then can be argued to have
legitimate claim to a trademark (arguably "amazon.com" rather than purely
"Amazon" -- but I wont go deeper on that here .. ) even if there is a strong
rights holder in the same name (here "amazon") in any given territory in the
world. Rights are established (and preserved) through USE in most trademark
law worldwide: you do not have to register your mark to claim rights to
protect it or to claim ownership of it. Registration per se does NOT confer
ownership of a mark in any absolute sense (that is why most worldwide TM
registries have a process such as a right to petition to cancel, etc).

What we have right now is the equivalent of a single street on which
international commerce is asked to situate (yes I know there are country
codes -- but the dominance of ".com" cannot be denied). And applying the
rule that no two store fronts on this one street can have the same name even
if they have established ownership rights in that name elsewhere, is clearly
a broken model.

In sum, no matter what is done using the UDRP or by WIPO or ICANN or etc is
likely to be subject to reasonable criticism. So long as we have just ".com"
dominant, then they are in a no-win situation resolving name disputes in
many if not all cases.

Yes, I know that .biz is about to happen, but that is clearly not in and of
itself a solution as it will marginally lessen the current problem but come
no where close to curing it. Indeed, it is arguable that the introduction of
just one major new alternate to .com will worsen the situation, not help it
(I can go into that later if you wish ...)

In all, I can see no stronger argument for the need for more TLDs to enable
a more rational use of marks in worldwide Intent commerce: the need for more
usable English language (roman.roman) names, and the need for more
multilingual names. Ultimately, Trademark owners should welcome new TLDs not
fear them.

Tim




----- Original Message -----
From: "Sandy Harris" <sandy@storm.ca>
To: <ga@dnso.org>
Sent: Friday, April 06, 2001 9:07 PM
Subject: Re: [ga] ICANN benefits


> Dave Crocker wrote:
>
> > The law in most countries "institutionalizes trademark favortism".  It
has
> > done that rather longer than ICANN has been around...
>
> However, it also protects multiple uses of a trademark. Sun Microsystems,
> Sun Oil, the Sun and Surf Resort, ... and provides procedural safeguards
> for the rights of the alleged violator.
>
> > If you mean that the UDRP provides ADDITIONAL benefits to trademark
> > holders, well, that becomes a finer point of debate.
>
> It isn't entirely clear to me what the URDP was designed to accomplish,
but
> it seems cleat that in practice at least some decisions (bodacioustatas
leaps
> to mind) gave benefits to trademark owners that go way beyong anything
they'd
> be legally entitled to in any juritiction I know of.
>
> > As has been noted frequently, the UDRP needs enhancement.  But let's not
> > attribute more precedent to it or ICANN than is valid.
>
> Specifically, it needs better protection for the domain holders who are
> attacked using it.
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