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

[Milton Mueller <mueller@syr.edu>]

This probably is not a fruitful debate.

Kevin J. Connolly wrote:

> There is a significant and growing body of federal case law which treats
> domain name registration as sufficiently similar to trademark registration
> that a domain name is treated by analogy to trademark.

Wouldn't it be more accurate to say:

"There is a significant and growing body of federal case law in which a small number of
domain name registrations are challenged on trademark dilution grounds"? (These challenges
constitute a fraction of domain name registrations lower than .0004.)

> The continued suggestion that domain names and trademarks are not related
> concepts is not likely to win acceptance outside of a small circle of technocrats.

No one said that they are not "related."
But they are related *only* when one acquires IP or TM rights in a domain name. The majority
of domain names have no intellectual property whatsoever associated with them. They are
simply words that form useful addresses. Of the 51,000 domain names for sale at
GreatDomains.com, how many would you guess have TM rights associated with them?

Domain names are also "related" to obscentity laws when a domain name is obscene. Its use or
publication might be challenged legally on those grounds, or protected under freedom of
expression guarantees. So, yeah, "domain name policy must be responsive to the IP
community," but by the same token "domain name policy must be responsive to the free
expression community, the anti-obscentity community, to domain name registrants and to
*lots* of other communities.

Haven't we trod that path many times before?

> >Whether a domain name registration conflicts with a tm application cannot and
> >should not be determined prior to use.
>
> That depends on the domain name.  There is no legitimate use for a domain name
> that maps into a famous trademark.

I don't think the US Congress agrees with you. Check out the proposed new US law on
cybersquatting,http://thomas.loc.gov/cgi-bin/query/C?c106:./temp/~c106oXn4at

Of note is this passage:
(B) In determining whether there is a bad-faith intent described under
    subparagraph (A), a court may consider factors such as, but not limited
    to--

<snip>

        (iv) the person's legitimate noncommercial or fair use of the mark
        in a site accessible under the domain name;

> Other trademarks' relationship to domain names
> cannot be determined in advance of use; but there is a significant class of trademarks
> which are absolutely preclusive of domain names being registered except by leave of
> the trademark owner.  Coca-Cola is simply the most obvious instance of this rule.

At best, you mean in the US jurisdiction. What we tend to forget is that domain names are
globally unique, and trademarks are not. There is no accepted list of "famous and well known
marks" that is globally applicable. Another reason why domain names are not trademarks and
should not be confused with them.

--
m i l t o n   m u e l l e r // m u e l l e r @ s y r . e d u
syracuse university          http://istweb.syr.edu/~mueller/