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

[Milton Mueller <mueller@syr.edu>]

Rita M. Odin wrote:

> 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)

Doesn't matter. My point is simply that determining whether confusion or commercial use exist requires *looking at the use of the domain name* ex post registration. It cannot be determined pre-emptively or in advance. Therefore, any solution to the TM problem that attacks registration in advance of use goes well beyond the protections of trademark law. More importantly, it violates the policy rationale of consumer protection and turns the trademark into a sweeping monopoly on a character string.

> 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.)

Your use of the phone book is a very good example, because consumers regularly deal with the fact that there are five or six different businesses named "Ford" in the Yellow pages and possibly 40 or 50 Fords in the white pages. Your concern about domain names seems to me to be a variant of the Internet mania that has driven the stock price of money-losing companies to the stratosphere. It attributes magical power to domain names which they don't have.

> 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.

The domain name is probably the most insignificant part of a consumer's experience of an internet site. This is why everything depends on the use of the name. If there are deceptive logos and imitative color schemes and similar products, then yes, infringement is a problem. But the mere similarity or identity of the character string in a domain name is not all that significant most of the time.

The importance of domain names as a means of locating a site has been vastly overrated.

> Their inability to do so will cause confusion and distrust of the reliability/credibility of the Internet as a vehicle of commerce.

That must be why Internet commerce is currently tripling (or it is quadrupling?) in size every quarter.

> 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.

I agree that it is a vicious cycle. I also agree that it will not go away *just* because we add many gTLDs. It will go away when TM lawyers look at domain names not in isolation but in the context of how people really use the Internet and how their companies marketing promotes their image and their site. You will get millions more hits from click-through banner ads on the Yahoo site or from search engines than you will ever get from some schmuck typing in your domain name key by key.