Re: IP/TM Concerns & New GTLDs (was:Re: [wg-c] Who should votefor new gTLDs)

["Kevin J. Connolly" <CONNOLLK@rspab.com>]

>
 "Mark C. Langston" <skritch@home.com> 07/28/99 04:58PM wrote
>
>On 28 July 1999, "Kevin J. Connolly" <CONNOLLK@rspab.com> wrote:
>
>
>>The problems of new GTLDs go far beyond any dispute resolution policy.

{snip}

>I'll acknowledge that TM/IP interests want to protect their exclusive
>marks, and that any new market presents the opportunity for someone
>to infringe, knowingly or otherwise.
>
>I'll also acknowledge that TMP/IP interests want to maintain their
>exclusive use of their marks and IP, while minimizing the cost of
>doing so.
>
>What I don't understand is the difference it makes if it's 1 or 100
>new TLDs.  They're all in the same root. 

The trademark infringements that the TM/IP community is concerned 
with are not in the root, they are in the Second Level (and Higher) 
domain names.  There is already a tremendous transactional cost in 
searching the big three and the significant ccTLDs.  Adding 100 gTLDs 
(which are perceived as having more acceptability than most ccTLDs) 
will exacerbate the problem.

> They're all more or less
>searchable.

Most of them are less searchable, if only because there's no uniform 
protocol.  And there's no assurance that future gTLDs will be as 
searchable as .com <smirk>

>  And putting a DRP in place that was agreed to by the
>TM/IP interests says to me that the TMP/IP interests are satisfied
>with the DRP.

As I have said before, the ADR process is a necessary but not sufficient 
condition for approval by the TM/IP community of new gTLDs.  The 
increased transactional cost brought about by pell-mell enlargements of the 
TLD name space still threatens to overwhelm the process.

>
>The only thing that's left is the trouble and expense the TM/IP
>interests must go through to protect their famous marks or other
>IP.
>
>The 'trouble' aspect seems, in my opinion, to be a red herring.
>It can be made as easy or as difficult as ICANN decides to make
>access to the root servers.

Again with the root servers?  Nobody takes the prospect of "infringing" 
gTLD names seriously.  The infringements will come about when SLD 
names are registered in the new gTLDs.

>
>That leaves the expense.  To a certain extent I believe that the
>expense should be accepted as part of the cost of maintaining 
>exclusive use.  If the benefits of exclusive use are outweighed
>by the cost of maintaining it, perhaps nonexclusivity should be
>considered.

This would make trademark the exclusive purlieu of the very rich 
and powerful.  This would not be good for consumers, the world 
economy, or the growth of e-commerce.  The vast majority of trademarks
are held by little guys trying desperately to establish brand recognition
in a marketplace filled with big marketing powers.

>
>> It is already more expensive to browse the namespace under .com,
>>.net and ..org for potential clashes than it is to peruse the
>>trademark space for the U nited States, Canada, Mexico, Japan and
>>Europe combined.  This much has been known since September 1996, when
>>a number of trademark organizations implored CORE's kickoff meeting
>>to do something to control the cost of protecting trademarks on the
>>Internet.  The ADR system is not a solution to these problems;
>>developing a solution will require the development of robus t
>>protocols with a coherent (ideally, uniform) interface for perusing
>>the regist ered names and a reliable method for ascertaining by whom
>>names have been registere d and for what purposes.
>
>Ok, fair enough.  Can we agree that the ADR is supposed to be 
>a partial solution to the problem?  If so, let's consider the 
>issue you raised:  The difficulty of searching the roots.  This
>is another issue entirely, and there should probably be another
>WG on it.  
>
>However, I will comment on it briefly:  Any powerful, easy-to-use
>root search will almost certainly be abused by those wishing to
>make a profit from information contained therein, e.g., contact 
>information.  I may not hold a TM, or have any IP to speak of, but
>I do have a name, address, and phone number, and I'm sure many people
>would be very upset if such a database were thrown wide open, without
>constraint.
>

I'm still completely at a loss to understand this.  Are you suggesting that all 
domain names (second- and higher-level names) can be found by perusing 
the root zone file?  It's news to me, but then, as I've been told so many times, 
I'm a lawyer and therefore presumptively 404 on technical issues.  So maybe 
you can explain it to me in terms I can understand: how does perusing the root 
resolve problems about infringing SLD names?

>Additionally, I'm entirely unclear as to how you propose to
>ascertain intent from such a database.

There will of course be more than one database.  Some registries will permit or 
require a statement of purpose when registering a SLD name.  Other indicia of 
intent include the content of the website (if any) or the absence of a website 
associated with the domain name.

>
>>This cannot be done in an environment where the root is opened to as
>>many domain names as there are registry operators, each with its own
>>protocols, pri vacy policies, and dispute resolution policies and
>>procedures.  
>
>I don't think anyone's proposing the growth of namespace without
>limit.  However, there are serious proposals to grow it by more than
>a handful of TLDs.
>
>> It is certainly bea u geste to propose a domain name
>>policy for ICANN against which the international trad emark community
>>is certain to fight.  The legitimate concerns of trademark holders h
>>ave already delayed and complicated the process to date.  No policy
>>for expanding the TLD name space which ignores the interests of the
>>trademark community is likely ever to see the light of day.
>
>Which is fine.  What bothers me about all of this is that a policy
>which ignores the interests of the rest of the community may see the
>light of day. 
>
>If the TM/IP interests are against expansion at all, and wield such 
>power, why was the question put to this WG?

The TM/IP interests are not the Illuminated Seers of Bavaria.  They have 
tremendous influence but they are not behind everything that happens.

>
>>Whatever we recommend to the NC and ICANN, we are wasting our time if
>>we do not take steps to preserve legitimate trademark interests.  
>
>We are also pursuing folly if their interests are the only ones
>accounted for in our documents.

That's a given.
>
>>As
>>indicated, the ADR system is a necessary but not sufficient step to
>>doing so.  Another inevitable step is a go slow approach.  Only a few
>>TLDs can be added to the root in the first sta ge (even seven is
>>probably too high a number; three is more likely to win over th e TM
>>community).  
>
>Would the TM/IP community be agreeable to a plan which set an upper
>limit by a certain date, with a slow timetable for expansion?
>E.g., 2 or 3 new TLDs a month for several years?  One every
>two months for 5 years?  Something along those lines?

You'd have to ask them.  I'm not a member of the TM/IP constituency.

>
>There's still the burning issue:  which TLDs?

It's pretty much a foregone conclusion that this WG will not even attempt to
propose a list of gTLDs or an implementation schedule within the time frame
set by the Names Council.  So we would probably do better to consider the
broader policy issues surrounding gTLDs.
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