Re:.. [wg-review] Trademarks and UDRP

[brianappleby@netscape.net]

Firstly, apologize for the long response.

At least in the US, trademark law offers effective protection to trademark holders.  The applications and limitations of the trademark laws are clear, the so-called cybersquatting laws and UDRP process and procedures are not.  

The analogy of the tree and the houses is off the mark.  And the assumptions regarding costs and suffering are askew too.  

If your website is your stake on the Net, your place to post and share and transact business, it is more like your own home or place of business.  The URL to your place is like the address of the location where you live, it’s how people find you, contact you, remember you, and associate with you.  In the real world, the value of your place is also a combination of your tangible property, i.e. you website or home, plus the perceived value of the address, i.e. a good dot.com name or the street or part of town where you live.  A good dot.com is like a Park Avenue address in the real world.  

Now, what if a bunch of rich people on the other side of town would like to have a Park Avenue address too?  They have money but don’t want to go buy a high-priced property at the existing Park Avenue location, rather, they use their money to influence political powers to re-name the streets so now their street becomes (the new) Park Avenue and (the old) Park Avenue becomes something like Parkside Road.  

Some of the people on (the old) Park Avenue got their place because they were smart enough to buy in early as they could see the potential for future development.  Others bought in later and paid for the honor.  But everyone could say that the situation was fair and reasonable and made sense.  

The dot.com addresses are, and will be for awhile, the premium addresses on the web (the reason being: the general public has made dot.com part of their language, it is the default TLD).  The fact that for each word or phrase there is only one available dot.com address is the nub of the issue.  Often more than one entity wants the same dot.com name and some of them are big and nasty enough to use unfair ways to grab them.  For each word/phrase there is a unique trademark available for each of the various types of commerce or application.  This is why your songbird trademark will not be challenged by other trademark holders who are using the same name/mark but operating in different segments of commerce.  

But what if there is a business named Songbird which was established in 1952, is registered in every locale in the world but is in a different industry: let’s say some type of technology development field.  It would only be natural that they might desire to hold the songbird.com domain.  If they are bigger, older, and better known, can they acquire the name?  If they use WIPO as arbitrator I wouldn’t bet against it.  

WIPO is making many more examples of bad-faith arbitration every day it seems, but the Madonna.com case is a well-known and simple example to illustrate the point: one domain name, many legitimate, good-faith entities associated with the name.  Trademarks are not only region-specific, they are also industry specific (in US anyway).  

Some domain name holders are being abused, even losing their livelihoods, maybe even destroying their families and lives because of this distasteful situation.  Small business is the largest employer and the heart and soul of American business.  

Trademark holders are at best, and arguably, losing some unknowable opportunities due to the fact they were either too slow or too stupid not to register all the domain names they should/would need to develop a strong competitive advantage on the Internet through to their enhanced ease of accessibility to their sites for their target audiences.  These loses are, and can be, only implied and poorly estimated.  

Over time, the political process will hopefully bring us well-reasoned, fair policies, similar in spirit to pre-1999 trademark laws.  The people will eventually rise above the privileged few, but it will probably be a bloody struggle to get there.  If ICANN was truly what it was set-up to be, if it were doing the job it was intended to do, and doing what it says it is doing, the mess could be avouched.  This is the frustrating situation which a large segment of this audience is trying to improve.  The irony is if they were only more elegant in the way they lie and in choosing what they lie about, they would probably get away with it.  We won’t let them!

Kent Crispin <kent@songbird.com> wrote:
>
> On Wed, Feb 21, 2001 at 06:54:00PM +1100, Dassa wrote:
> > One of the things that have always confused me was why trademark
> > issues were ever allowed to enter into formation of the domain policies. 
> 
> There is no mystery at all.  When the Internet became a commercial 
> medium, domain names had an impact on TM holders.
> 
> Suppose you and I were neighbors in a housing tract on a hill
> overlooking San Francisco Bay.  We both paid a premium because we had
> "view lots".  You are a little uphill, and behind me. 
> 
> I plant a redwood tree on my lot.  In a few years (it's a very fast
> growing variety of redwood) it's 200 feet tall and its branches extend
> out 40 feet on either side, completely blocking your view.  I have
> caused direct damage to you, because I have reduced the value of your
> property.  It's my tree, on my property, and I may be very fond of it
> since I raised it from a baby.  But it is damaging you.  (*)
> 
> The Internet grew up in the backyard of academia, but it grew very
> rapidly, and has spread to other backyards.  In fact, for some years now
> the bulk of that growth has been in the backyard of commercial interests
> -- it is no accident that the vast majority of domain name registrations
> are in .com. 
> 
> Domain names impact trademarks.  There is no avoiding that fact; there
> is nothing that can be done about it, and hence an accomodation must be
> reached.  It doesn't matter that the Internet originally started in an
> academic environment -- it long ago outgrew that backyard.
> 
> > Trademarks are localised to particular regions as are business names
> > etc.  Domain names are not regionalised in their use, not even the
> > country codes. 
> 
> It doesn't matter that there are different semantics for TMs and DNs. 
> All that matters is that they impact each other.  In many cases the
> impact has serious economic consequences, but (in pure dollar amounts)
> mostly for TM holders.
> 
> [...]
> 
> > I am also concerned about the issue of the UDRP and associated rulings
> > being applied to third and forth level hostnames/domains.  I have
> > already personally witnessed attempts to threaten UDRP and law courts
> > over third and forth level domain names.  Just where is it going to end?
> 
> It's hard to say.  The battles will continue for several years,
> probably, and eventually some combination of case law, legislation, and
> UDRP precedents will stabilize.  *Where* it stabilizes is not really
> that important, in the long run -- just *that* it stabilize.  I firmly
> believe that if the rules were well-known and dependable, then people
> would simply deal with them.  Free expression would just route around
> the rules, whatever they might be, as it always does.  The real problem
> here is that the rules are in flux. 
> 
> (*) In fact I live in a house with a view of San Francisco Bay, and I 
> have a cherry tree that I have to prune down every year to keep from 
> impacting my uphill neighbors view.
> 
> -- 
> Kent Crispin                               "Be good, and you will be
> kent@songbird.com                           lonesome." -- Mark Twain
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