[wg-c] Do we need a TM law modification?

[Milton Mueller <mueller@syr.edu>]

Rita M. Odin wrote:

> But, if you are suggesting that all owners of TMs, in order to adequately protect their marks, must go out and register their marks as SLDs under every TLD, then you aren't really expanding the name space.  You'll have the same issue in every TLD that you have in .COM, namely a perceived shortage of acceptable name strings.

This argument is correct. But we need to take it a step further.

Pre-emptive registration is not a solution to the problem; indeed, the assumption by TM owners that they must protect marks by registering the names rather than policing for actual infringement actually contributes to the problem, by encouraging cybersquatting.

I want to make something explicit that has, I think, been an unstated assumption behind the fears of many TM lawyers about domain names.

Why do TM owners think that every name that corresponds to or resembles a trademark is an infringement? The problem is *not* really trademark infringement per se, which is actually quite rare in the domain name space--and privately, many TM lawyers have conceded this point to me. The number of people who register domain names and actually sell merchandise or services that confuse or deceive customers is absurdly tiny.

TM owners are really concerned about people who register names and don't use them but try to resell them. They are also concerned about perfectly legitimate uses of their names by noncommercial domain name holders. Why are they so concerned about this?

I think they have convinced themselves that their marks will become "generic" and therefore unprotectable if they allow unrestricted registration of domain names.

So here's my proposal, and I think this idea is kicking around. Can the TM laws be modified to clarify that failure to register a domain name corresponding to a mark does not constitute failure to police a mark?

In my opinion this would satisfy the only legitimate concern TM owners have about expansion of the name space.

How can the recommendations of this committee take this into account?