Re: [wg-c] trademark law & new gTLDs

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

Milton Mueller  wrote:

>> Because: (1) the likelihood of confusion analysis does not depend upon the classification of the goods/services but, rather, upon the relatedness of the goods/services, which is a fact based determination (i.e., there can be a likelihood of confusion even if one party's goods

>I agree--note the dependence of any form of infringement on a case by case analysis of how the domain name is actually used.

I couldn't help but notice that you didn't address my second point (i.e., while use of a mark has to be "commercial" it doesn't have to cause a likelihood of confusion to dilute a famous mark under §43(c) of the Lanham Act)  Therefore, although there is a factual determination (i.e., whether the mark is famous and whether the allegedly infringing use is commercial) the consideration is not about the manner of use, other than the initial inquiry as to  whether it is "commercial" or not.  

The problem becomes the ease with which a "commercial" use can be hidden behind the claim of "non-commercial" status of a site on the Internet.  The lines are blurry, which is why we can't distinguish between "commercial" and "non-commercial" domains for purposes of accessability of contact information and the ADR mechanism when an alleged "non-commercial" site is involved.

[snip] . . .

>>This analysis actually support's Jon's point: a greatly expanded name space actually helps the cause of legitimate TM/IP protection. It will affect consumer expectations in the right way. It will undermine the automatic reliance on dot com, 

In theory, perhaps, but the reality of the market is what we are talking about.  The reality is that consumers expect to be able to use a trademark/service mark to locate a specific source on the Internet (much the same way they expect to be able to use a mall directory or phone book.)  Consumers want/need to be able to rely on trademarks/service marks as source indicators on the Internet the same way they do in the grocery store. Their inability to do so will cause confusion and distrust of the reliability/credibility of the Internet as a vehicle of commerce.  While there are, of course, other uses for the Internet, commercial use is a reality that we need to be concerned about it.

Because of this threshold consumer expectation, TM owners are concerned that potential customers (1) will be diverted by competing businesses who are milking their goodwill or (2) will begin to see their marks as less distinctive (less of a source indicator).  Therefore, in order to prevent this, TM owners feel that they have no choice but to warehouse their marks.  It is vicious cycle that will not go away just because we add many gTLDs. Adding many gTLDs at this stage will only exacerbate the problem.  Willing consumer expectation to change is not going to make it change.

>and encourage the notion that domain names are unique addresses and not a crude index.

All addresses are a type of index, aren't they?  They help you find someone or something . . . that's their entire purpose.

As an aside . . . present policy of the PTO is to treat the presence of .com (or any other generic TLD) the same as inc. or co. in a mark.  That is, it has no trademark significance (doesn't add to the distinctiveness of the mark).  By definition, the only "unique" aspect of a domain name is the part that is not used by others.