RE: [wg-b] WG-B Report

[Andrew Dalgleish <andrewd@axonet.com.au>]

> -----Original Message-----
> From:	Ellen Rony [SMTP:erony@marin.k12.ca.us]
> Sent:	Wednesday, April 19, 2000 06:42
> To:	wg-b@dnso.org; mpalage@infonetworks.com
> Subject:	[wg-b] WG-B Report
> 
> If trademark protection is needed, how should it be structured?
> 
> 	ER comment:  Establish a new, chartered gTLD called TMK.
> 	Only registered trademark owners need apply.
> 	If the trademark owners begin complaining about which
> 	one should get priority rights to the coveted name (for
> 	example, there are more than a dozen registrations for
> 	the mark "CLUE", then establish 42 gTLDs that
> 	correspond to the International Trademark Class of
> 	Goods and Services, e.g., .42TMK.  The Internet communuty
> 	may not know at the moment what type of services that number
> 	corresponds to, but it will be a simple education process
> 	and will lead to far less user confusion if the trademark
> 	community truly has that as its goal because the
> 	name of the gTLD will give more referential information
> 	to anyone seeking the site of a  particular mark holder.
> 
> 
[Andrew Dalgleish]  

I agree with practically all of Ellen's comments, but I must point this
out:

The domain name system provides a one-to-one mapping between a name and
a domain or site.
Trademarks potentially provides a one-to-many mapping between a name and
multiple products in multiple geographical areas.

Ellen's suggestion handles multiple product classes, but not multiple
geographical areas.
To do this you would need to use the country code as well.
(Possibly with a special exclusion for trademarks registered in .tv land
:-)

(I will accept your word on the product classes - the actual names and
numbers are irrelevant for this discussion)

I would suggest that the product class ".42" comes to the left of the
".cc", to allow for countries which do not (now or in the future)
recognize the same sets of product classes.
"name.42.cc.tmk" does uniquely identify a product in the correct
geographical area.

If and when we have a system for registering genuinely global trademarks
there will probably be the same (or similar) set of product class names.
At this point you use "name.42.tmk" to uniquely identify a product
registered with a global trademark (unless a product class name
conflicts with a country code).

E.g. "lotus.cars.tmk" does not conflict with "lotus.software.tmk".


The biggest problem I can see is the choice of string for ".tmk" which
is acceptable in a multi-lingual sense.
(Perhaps switching to ".42.tmk.cc" would help, although many countries
use multiple languages.)


There is no requirement for a list of "famous" marks.
There is no question as to how much "fame" is required to be on any such
list.
No single group in the community needs to be granted more rights than
any other group.
The consumer is protected by providing a clear non-ambiguous way of
finding the domain/site relevant to a given product (which is the whole
point of the exercise).
There are no conflicts between current or future trademark owners within
or across multiple product classes or geographical boundaries.
The rights of the existing trademark owners are protected against
cyber-squatters or trademark infringement though the use of existing
remedies.

IANAL, so I have some questions:
How does this affect the rights/obligations of registrars and/or
registries?
I imagine it would be a similar situation to the publication of the
yellow pages, or accepting newspaper advertisements.

How would this affect a consumers free speech right to use the phrase
"lotus.software.us.tmk"?
I imagine it is ok to use the phrase, but not to claim the domain name
is yours unless you actually own the trademark.
(particularly if we rplace ".tmk" with ".trademark")



If you resolve the one-to-many mapping problem, and there is no need to
further protect "famous" (or even non-famous) trademarks.

Think about it for a minute.

If you resolve the one-to-many mapping problem, and there is no need to
further protect "famous" (or even non-famous) trademarks.

As a late-comer to this WG, I believe this WG has spent most of its time
trying to come up with the right answer to the wrong question.



Regards,
Andrew Dalgleish

(The sunrise +/- N proposal is a fool's dream, and no-one was not given
sufficient opportunity to either assent or dissent.)