RE: [wg-b] Position Papers

["Hartman, Steve" <HartmanS@Nabisco.com>]

As a preliminary matter, I note that the first paragraph of my initial
remarks were omitted from the version that was distributed. The first
paragraph read:

"As others have pointed out, the non-commercial proposal would not prevent
the misleading use of famous marks in domain names. The non-commercial
proposal states that rules should be established to resolve conflicts
between domain name disputants. One factor such rules would have to take
into consideration would be whether the domain name over which there is a
dispute is a recognized trade designation and how well known it is.
Therefore, the non-commercial proposal begs the very question wg-b is to
address."

I do not have an immediate answer to what happens to
nabisco-labor-abuse.com. Such a domain name requires balancing the free
speech issue against the cost of deception and mistake. Most likely a court
will ultimately decide the issue, if for no reason other than I doubt we
will come to agreement on the matter. One would have to keep in mind that
nothing prevents the use of Nabisco's name in the course of discussion on a
website. How much speech is stifled by deleting such domain names from the
domain space, and is that price justified by avoiding the possibility of
deception/mistake? We would probably disagree. However, in the case of
nabisco.com, the outcome is quite apparent, I believe.

Many once famous marks have become generic through public misuse and the
failure of trademark holders to counteract that misuse. Escalator was once a
trademark but fell into the generic abyss because its owner failed to
protect the mark. Many years ago Nabisco lost its rights to "Shredded Wheat"
because that is how the public came to identify the product. "Murphy Bed"
almost met that fate, but was rescued by a court and the term's owner at the
last minute. Kimberly-Clark, the owner of the Kleenex trademark frequently
advertises the fact that Kleenex is a trademark and not a generic term to
prevent the mark from becoming generic. Nabisco does the same with Oreo, and
many corporate trademark owners follow suit. The risk that one's famous mark
will become generic through public misuse is one reason that famous mark
holders are sensitive about the unauthorized use of their brand names.

Steve


> -----Original Message-----
> From:	Mark C. Langston [SMTP:skritch@home.com]
> Sent:	Monday, December 13, 1999 12:34 PM
> To:	wg-b@dnso.org
> Cc:	mpalage@infonetworks.com; Hartman, Steve
> Subject:	Re: [wg-b] Position Papers 
> 
> 
> On 13 December 1999, "Hartman, Steve" <HartmanS@Nabisco.com> wrote:
> >
> >The assertion that famous mark holders seek to remove words from the
> domain
> >name dictionary is inflammatory and misleading. For one, there are
> different
> >kinds of famous marks (as there are different kinds of marks generally).
> >Some are fanciful, made-up terms, which never were never words in a
> >language. I would like to believe, being trademark counsel for Nabisco,
> that
> >Nabisco and Oreo are famous marks. Oreo is not and never was a dictionary
> >word. The same is true for Coca-Cola, Exxon, and Kodak, arguably famous
> >marks. Other possibly famous marks are proper names of one sort of
> another,
> >but not dictionary words: Marlboro and Mars come to mind. The removal of
> a
> >term from the domain space does not necessarily mean the removal of a
> >dictionary word from the domain name space. Removing a non-dictionary
> term
> >from the domain space will generally not interfere with the communicative
> >value of the Internet. There are infinitely many non-dictionary terms to
> >chose from.
> >
> >More to the point is that domain names are more than addresses; they
> serve a
> >communicative or advertising function and, to the extent they do,  are
> >hybrids of addresses and trademarks. Trademark owners are concerned that
> >their trademarks will be used in domain names in a misleading or
> deceptive
> >manner. Famous mark are especially vulnerable to such abuse. Protecting
> >famous marks from their misleading use as domain names protects the
> >communicative value of the Internet, and therefore should be a goal not
> just
> >for trademark holders, but for everyone interested in preserving the
> unique
> >phenomenon the Internet is. To allow only the owner of trademark Exxon to
> >own Exxon.[anything] probably makes sense.  The domain space is not being
> >deprived of a dictionary word, so the communicative value of the Internet
> is
> >preserved. Indeed, by eliminating those domain names (eg, Exxon.anything)
> >that have the greatest potential for confusion and deception, the
> >communicative value of the Internet is enhanced.
> >
> >In evaluating the various proposals we should focus on the proposals that
> >promote the communicative value of the Internet.
> 
> 
> Then what of parody, protest, and free speech?  Whence 
> nabisco-labor-abuse.com?  Whither mars.com for, say, a company that
> sells LEO travel, or plots of land on the Red Planet?  What becomes of
> avoidcocacola.com?
> 
> On the issue of famous names, there's a category of psychological
> research (industrial/organizational psychology) that overlaps the
> arena of famous marks, which I really should look up for details, as
> it applies here.  It's the phenomenon (whose name I forget, hence my
> need to look it up) in which a famous mark becomes so common that
> its value is diluted simply via use.  E.g., "kleenex" is commonly used
> to mean any facial tissue, and not just that particular brand.  Xerox
> now commonly refers to any means of photocopying in normal usage, not
> just products produced under than brand.  The famous mark, rather than
> maintaining its exclusivity, becomes an overused generic term for 
> any product in that category.
> 
> Those interested in further details, please ask...I've sent a request
> to a former colleague of mine in .au who still works in the field, and
> I'll pass along any information that's forthcoming.
> 
> However, with all the talk about the legal definition of a famous
> mark v. how the average consumer actually views these marks, I think
> it's important to consider hard data from a field that's been studying
> this for many years.
> 
> -- 
> Mark C. Langston
> mark@bitshift.org
> Systems Admin
> San Jose, CA
> 
> 
>