[wg-c] trademark law & new gTLDs

[Jonathan Weinberg <weinberg@mail.msen.com>]

	I've been off-list for a few days, so I'm going to play catch-up just a
little.  There's been some discussion of the breadth of trademark law in
cyberspace and elsewhere.  As folks have pointed out before (and as the
WIPO report recognized), a rule that would allow a trademark owner to get
rid of a domain name including a string similar or identical to its
trademark would give the TM owner rights substantially *greater* than those
granted by meatspace trademark law.  That's because meatspace trademark law
gives registrants protection limited to particular goods and services, and
limited to particular locations.  "Ford" is a trademark for automobiles,
and the Ford Motor Company can stop anybody else from using that mark to
sell automobiles.  The Ford Motor Company can also stop other people from
using the mark to sell motor oil — even though that's a different product —
because consumers seeing "Ford Motor Oil" would likely be confused and
think that it came from the automobile manufacturer.  But the Ford Motor
Company can't stop somebody from using the mark "Ford" to identify a
fashion modeling agency (and indeed, there is a fashion modeling agency by
that name).  Trademarks are also limited geographically — Anheuser-Busch
has the exclusive right to use the "Budweiser" mark in the US, but a
different, and unrelated company, has the exclusive right to use the mark
in Hungary.  So a claim that a trademark owner has the right to control
every instance of www.trademarkname.sometld (even though, indeed, there may
be other folks using the same mark in other product lines or other parts of
the world), is a claim for substantially more expansive rights than that TM
owner has in meatspace.

	OTOH, this isn't the trademark owners' fault.  It's valuable that
consumers not be confused when it comes to the origin of products, and the
fact is that consumers may be confused by a www.ford.com not in the hands
of the Ford Motor Company (although, come to think of it, other consumers
might be confused by a www.ford.com not in the hands of the modeling
company, and other (Hungarian) consumers might be confused by a
www.budweiser.com that *is* in the hands of Anheuser-Busch . . . ) The
problem is that consumers today tend to assume that www.foobar.com is
operated by whatever company named "foobar" they happen to be thinking
about at the moment.

	What's the answer?  You got it — MORE gTLDs.  In meatspace, consumers cope
just fine with the fact that there are a lot of businesses named Acme.
They know about the various businesses; they don't expect any particular
Acme to be the particular one they have in mind; and they don't get
confused.  If consumers learned that there were a lot of different domains
on the web named www.acme.sometld, they wouldn't expect any particular one
to belong to Warner Brothers (which has a variety of U.S. registrations for
"acme") or to Jef Poskaner (who in fact owns the acme.com domain), or the
Acme Glass Company, or anybody else.  The mere existence of the domain name
would no longer be confusing.  Further, we can achieve this result without
regard to whether the new TLDs we add are "chartered," as Kent suggests, or
general-purpose.  (Now, if I have a domain named ford.biz, *and* I use
www.ford.biz to sell cars, then plainly people will be confused no matter
how many gTLDs there are.  That's trademark infringement.  But that's a
different case.)

Jon 


Jonathan Weinberg
weinberg@msen.com