Re: [wg-c] Retraction of previous proposal

["Mark C. Langston" <skritch@home.com>]

On 30 July 1999, "Rita M. Odin" <OdinR@arentfox.com> wrote:
>
>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? =

I can see the point, to an extent.  However, I also see that this battle
will be fought anew any time any kind of substantial expansion of the
net occurs.  And I see that this is completely counterproductive.  

>
>>If you are already assuming that people WILL register infringing >SLDs,
>>and you=27re going to insist on complaining about the cost of >recovery
>>after the fact, then I suggest you spend the =2470, or whatever the >fee
>>is, per SLD and buy yourselves the ones that directly infringe. =20
>
>Is that really a workable solution?  Is that the best use of limited =
>resources?

They're not limited.  The number of TLDs that can be created is limited
only by the number of registries willing to support them.  And yes, I
think it's a workable solution.


>>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=27t 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 =22evil=22 =

Well, since the TM/IP constituency is supposed to represent the TM/IP
interests for the entire world, that would be a problem that the TM/IP
constituency should address.  Unless you're stating here and now that
the constituencuy is not representative, global, or inclusive -- all things
which ICANN assumes, and upon which it claims to build its power.

And I'm not calling TM interests evil.  Those are your words.  I'm
merely upset that the TM interests want something for nothing.  It won't
happen.  TANSTAAFL.

>TM owners that you so dislike are mom and pop shops that do not have, not =
>can they afford, legal representation.  

...and yet they registered a TM.  How were they expecting to protect
their mark?  The world should just roll over because someone filed a 
piece of paper?  No.  The various countries and international organizations
have processes in place that are meant to be used by the mark holder
to protect the holder's mark.  If the holder can't afford the services
necessary to do this, it's not my fault, it's not your fault, and it's
not the world's fault.  And none of us should have to make special 
concessions to them because of it.

>Even those TM owners who have =
>representation can=27t necessarily afford to register every possible =
>infringing domain name in every new TLD (ccTLDs are an issue as well) that =
>comes along. =20

And yet they somehow manage to contest every possible infringing domain
name in every new TLD that comes along.  Which is more costly?  This
isn't complex, it's simple math.  X infringements at hundreds of 
thousands of dollars apiece, or the elimination of X infringements at
US$70 (or whatever the registry charges) apiece.


>
>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 =22so resembles a =
>mark registered in the Patent and Trademark Office . . . as to be likely, =
>when used on or in connection with the applicant=27s =5Bwebsite=5D . . . =
>to cause confusion, to cause mistake or to deceive.=22 See Section 2(d) of =
>the Lanham Act, 15 U.S.C. =A71052(d).

If the registry were a government-run agency, I'd agree with this.
They're not.  They're private enterprises.  As such, they should not
be expected to absorb the costs of protecting famous marks.

>
>>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 =22innocent=22=
> party here.  

How does the above proposal make them anything other than innocent?  I'm
offering up the possibility to beat the squatters at their own game.

>Why are they required to go above and beyond the call of =
>duty to proactively prevent infringement of their rights? \

Because if they don't do it proactively, they'll have to do it
retroactively, and everyone on the pro-TM/IP side of the debate has made
it abundantly clear how much *that* costs.

> 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.  

Exactly.  And that costs money.  And this whole dispute is over the TM/IP
holders' unwillingness to spend that money.


>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?

Why should someone expect that all other property that shares one or
more characteristics with the original property instantly becomes
their property as well?  You have a front lawn.  I have a front lawn.
Your lawn is green.  Mine is yellow.  Yours is used to sell lemonade.
Mine's where my children play on their swing.  They're both square.
Do you suddenly own my lawn?


>
>>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 =22direct infringements?

Ask a TM/IP attorney.  I'm not one.

>  How are all TM owners made =
>aware of this opportunity?  

Constituency, constituency, constituency.  Or admit that you're not
representative, and that ICANN is enacting global changes by fiat
rather than consensus.  Either way, it's beyond the scope of this issue.

>What happens with conflicting legitimate =
>claims to the SLDs?

If there are conflicting legitimate claims to the SLDs, then once again,
someone had better pay the appropriate people to argue it in the 
appropriate court.  Otherwise, someone's going to have to back off.

>
>>E.g., Coca-Cola can buy cocacola.=24FOO, coca-cola.=24FOO, >coke.=24FOO,
>>coke-adds-life.=24FOO, etc.  However, they can=27t go buying things >like
>>redwave.=24FOO and cocabean.=24FOO ad nauseum.
>
>That=27s 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?

Would these be those companies that bought exclusive marks and have 
no means by which to enact the processes to protect them?

Look, it's not our fault that lawyers charge ridiculous amounts for
this kind of litigation.  If you really want to reduce your costs, go
after the people who are soaking you for all you're worth every time
someone cries 'foul'.  But don't penalize the entire world because you
think protecting your investment is too expensive.


>
>>Of course, the question is, who polices this?  Well, we could >argue
>>that the TM/IP interests do, but we=27ve seen where that goes.  >We could
>>make the registry police it, but we=27ve been down that path too.
>
>
>Have we?
>

Haven't 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=27s 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=27t have gotten away with in the first place.  So it=27d be in
>>their best interests to play it straight.
>
>Why don=27t we make it easier to stop the infringers by providing (1) a =
>comprehensive, searchable, reliable and universal database of all domain =
>name registrants,

Because the very first thing that will happen when word of this gets out
is that millions upon millions of domain names will be registered with
phony contact information, or the databases will become encrypted, or
some other such block to this blatant and unjustifiable violation of
privacy will be put into place.

Why stop there?  let's make everyone have a worldwide ID, coded with
all their genetic, financial, and medical information, to be surrendered
on demand to any corporation that asks?  

What you want will never happen.  Not like that.


> (2) mandatory submission to jurisdiction and 

For the same reasons you claim that small TM holders can't afford
to protect their marks:  Individuals can't afford to go to court when 
one of the TM interests makes bullying noises.

You know what happens in those cases?  The individual surrenders.  It's
ugly, but it's a fact of life that the TM interests have brought about.
Suddenly it's unspeakably wrong when the TM interests are faced with 
the same prospect?

Please.

>(3) a =
>workable dispute resolution policy?
>

Great.  Show me one, please?

-- 
Mark C. Langston	     			Let your voice be heard:
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Systems Admin					    http://www.icann.org
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