Re: [wg-c] Retraction of previous proposal

["Rita M. Odin" <OdinR@arentfox.com>]

"Mark C. Langston" <skritch@home.com> 07/30 11:36 AM  wrote:

>Ok, this has gone back and forth for a while now.  It seems that
>nobody holding a TM wants *any* expansion at all, because if >there is
>expansion, the following assumptions will be true:

>1)  People will intentionally register SLDs that directly infringe on
   TM/IP interests.

>2)  It will cost far too much money to hunt down and litigate these
   infringements.

I am not arguing against *any expansion,* I am merely attempting to explain the issues with which IP owners are confronted and why they think it is necessary to take a slow, measured approach to adding gTLDs.  Perhaps, in light of the recent discussion (and your proposed solution below), you can see why it matters whether 1 or 100 new gTLDs are added?  

>If you are already assuming that people WILL register infringing >SLDs,
>and you're going to insist on complaining about the cost of >recovery
>after the fact, then I suggest you spend the $70, or whatever the >fee
>is, per SLD and buy yourselves the ones that directly infringe.  

Is that really a workable solution?  Is that the best use of limited resources?


>I don't mean to sound like I'm siding with the cybersquatters, >because
>I'm not.  However, it makes no sense whatsoever to sit there and
>complain that someone else is going to force you to spend >hundreds if
>not thousands of dollars and personhours litigating ownership of >an
>SLD, 

More like hundreds of thousands :-)

>when you not only had just as much chance as that person to
>register it, but you knew about the new TLD before they did.  It >may
>have been a symapthetic plea with NSI because many TM/IP >interests
>didn't start taking the net seriously until their interests had
>already been stomped on.

>But right here, right now, you have the upper hand.  You know >about a
>potential to register the SLDs before the evil people in the world >can
>take them from you.  Use it.

I (and by extension my clients) may know about the potential to register new SLDs, but what about the rest of the world?  Many of these "evil" TM owners that you so dislike are mom and pop shops that do not have, not can they afford, legal representation.  Even those TM owners who have representation can't necessarily afford to register every possible infringing domain name in every new TLD (ccTLDs are an issue as well) that comes along.  

Perhaps the better answer is to police the registry, the way that the United States Patent and Trademark Office (PTO) polices trademark/service mark registrations, to ensure that no domain name that "so resembles a mark registered in the Patent and Trademark Office . . . as to be likely, when used on or in connection with the applicant's [website] . . . to cause confusion, to cause mistake or to deceive." See Section 2(d) of the Lanham Act, 15 U.S.C. §1052(d).

>I'll offer this up as a proposal, in lieu of my other one, with one
>caveat: This proposal, like the last one, is somewhat off-the-cuff.
>As such, there may be any of a number of legal or technical >issues
>that I didn't entirely think through, or wasn't aware of.  I therefore
>reserve the right to trounce it at my own whim.

>proposal:
>Would it help alleviate matters is TM/IP interests were able to
>get first crack at the SLDs in the new gTLDs, ***solely for the >purpose
>of registering SLDs that directly infringe upon existing TMs or >IPs***?

Please try to remember that the legitimate TM owners are the "innocent" party here.  Why are they required to go above and beyond the call of duty to proactively prevent infringement of their rights?  Yes, if they want to protect their rights they have a duty to claim the rights, i.e., by federally registering their marks thereby putting all people on constructive notice of their claim.  However, once they do that, they should be free from purposeful infringement.  Do they have a duty to register every possible variation of those marks?  The answer is no, they do not.  Either the PTO or the courts will enforce those rights against all confusingly similar marks.  Why are they not entitled, like other property holders, to the assumption that their property is theirs and that anyone who misappropriates it is in the wrong?

>I.e., X days before the new gTLD goes live, the TM/IP interests >will
>be allowed to purchase, at a normal price, all the SLDs they >want that
>are direct infringements.

What constitutes "direct infringements?"  How are all TM owners made aware of this opportunity?  What happens with conflicting legitimate claims to the SLDs?

>E.g., Coca-Cola can buy cocacola.$FOO, coca-cola.$FOO, >coke.$FOO,
>coke-adds-life.$FOO, etc.  However, they can't go buying things >like
>redwave.$FOO and cocabean.$FOO ad nauseum.

That's fine for Coca-Cola who has a team of in-house attorneys to handle the analysis/registration aspect of a project this huge, but what about the smaller companies?

>Of course, the question is, who polices this?  Well, we could >argue
>that the TM/IP interests do, but we've seen where that goes.  >We could
>make the registry police it, but we've been down that path too.


Have we?


>How about we let the world police it?  A lot of people have >adequate
>BS detectors.  If someone sees a domain that the TM interests >have
>registered under this plan that's questionable at best, the person
>just calls shenanigans on them.  The ADR is implemented, and >chances
>are it becomes expensive for the TM to battle for a domain it
>shouldn't have gotten away with in the first place.  So it'd be in
>their best interests to play it straight.

Why don't we make it easier to stop the infringers by providing (1) a comprehensive, searchable, reliable and universal database of all domain name registrants, (2) mandatory submission to jurisdiction and (3) a workable dispute resolution policy?

-- 
Mark C. Langston         Let your voice be heard:
mark@bitshift.org         http://www.idno.org 
Systems Admin         http://www.icann.org 
San Jose, CA          http://www.dnso.org