Re: [ga] ICANN benefits

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

Peter.

Thank you. I try to post stimulating messages ... and hope to provoke more
meaningful focused discussion.

Tim

----- Original Message -----
From: "Peter de Blanc" <pdeblanc@usvi.net>
To: "Tim Langdell, PhD" <langdell@technologist.com>; "Sandy Harris"
<sandy@storm.ca>; <ga@dnso.org>
Sent: Saturday, April 07, 2001 12:02 PM
Subject: RE: [ga] ICANN benefits


> Tim, that is one of the most rational 'posts' i have seen on this list in
a
> long time.
>
> to all: Let us use Tim's post as a model of what this list could be:
> substantive, objective, and thoughtful.
>
> Thank you
>
> Peter de Blanc
>
> -----Original Message-----
> From: owner-ga@dnso.org [mailto:owner-ga@dnso.org]On Behalf Of Tim
> Langdell, PhD
> Sent: Saturday, April 07, 2001 1:03 PM
> To: Sandy Harris; ga@dnso.org
> Subject: Re: [ga] ICANN benefits
>
>
> 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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