Re: [wg-review] Trademarks and UDRP

[Kent Crispin <kent@songbird.com>]

On Thu, Feb 22, 2001 at 09:12:17PM +1100, Dassa wrote:
> |>-----Original Message-----
> |>From: owner-wg-review@dnso.org [mailto:owner-wg-review@dnso.org]On
> |>Behalf Of Kent Crispin
> |>Sent: Thursday, February 22, 2001 3:46 AM
> |>To: wg-review@dnso.org
> |>Subject: Re: [wg-review] Trademarks and UDRP
> |>
> |>
> |>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.
> 
> An impact certainly, doesn't explain why they have been allowed to
> dominate the dns scene since as it appears they have been. 

Your use of the word "allowed" is odd.  Where do you suppose we would 
get the power, or the moral authority, to prevent TM interests from 
pressing their case?

Three points:

1) They don't dominate.  While big IP intersets have been very
influential, in fact the Internet is swamping them, and they are running
scared.  DN issues are only a small part of the problem for them. 
Moreover, TM disputes happen only in a very tiny fraction of domain name
registrations, and a large percentage of those are clearly
cybersquatters.  

Moreover, the UDRP is in many ways a defeat for TM interests, not a
victory.  You may not be familiar with the early history, but prior to
ICANN, NSI's dispute resolution policy was effectively: "if a TM owner
wants the domain name, give it to them".  Some attorneys (notably Carl
Oppedahl) have argued that the domain name registry should simply have
stood aside.  Other attorneys have argued that there is no way to
prevent a clever attorney from involving the registry in the case, and
that Phil Sbarbaro's (NSI's main attorney in this matter) had a
brilliant strategy that kept the registry out of any large lawsuits, and
thus allowed the vast growth of the domain name business.

2) We have no moral right to try to keep TM owners from pursuing their 
case in whatever way they can.

3) We can't stop them, because they are us.  Songbird (my company) is
about as small as you can get, but I have a registered TM for Songbird. 


> 
> |>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.  (*)
> 
> Doesn't hold to the situation.

You misunderstand the point of my parable.  I'm only trying to 
illustrate the fact that domain names potentially damage the TM owners.
The point isn't "view of the world".  The point is that developments in 
one area can impact the rights of others in other areas, and when that 
happens, legal and political battles will occur.

[...]

> |>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. 
> 
> The commercial interests realised the potential and jumped on the bandwagon, yes.
> 
> |>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.
> 
> No, I refute that statement.  Domain names do not impact on
> Trademarks,

Sorry.  There is absolutely no question that DNs impact TMs.  It is
simply undeniable that consumers will make a connection between the TM
name "Coca-Cola" and the domain coca-cola.com.  If you use the domain 
coca-cola.com for any purpose you will get hits from people looking 
for the soft drink companies site.  Period.

I register the domain "songbird.com".  There is a company that makes
hearing aids named "Songbird Hearing, Inc".  They do extensive national
advertising for their TM, "Songbird".  I get about 3 mail messages a
week from people who have looked all over the songbird.com web site,
trying to find the information on hearing aids.  Everyone of those
people represent a potential sale to songbird hearing; a direct impact
on their bottom line.

To repeat:  there is absolutely no question that DNs impact TMs.

> no more than any registration of a business name would.

Sorry.  Registration of a business name *does* impact TMs.  Try 
registering the business name "Coca-Cola".

> It is all about market share and potential customers, not about the
> actual trademarks.  I see no reason why any accomodation has to be
> provided. 

You are not in possession of correct information.

> |>> 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.
> 
> If that was the case, there would be an argument to say that holding a
> domain name entitles one to a trademark consisting of that name or any
> derivatives.  I also question the dollar effect on TM holders, any $
> effect is not directly related to the trademark in most situations but
> more in the potential customer base which is not directly related to the
> trademark.

The customer base is *precisely* the issue with TMs. 

>  I also fail to see why the DNS should be used to resolve
> such issues that are purely commercial in aspect.  The same type of
> resolution is not been seen between the TM holders and all the other
> bodies involved such as the different regional law courts and
> business/trademark registration requirements.  Why should the TM holders
> gain such an advantage over the DNS when they obviously haven't in the
> more traditional approaches. 

TM interests in the US won passage of the "anti-cybersquatting" law.  
They did this because they were losing ground with the UDRP.

-- 
Kent Crispin                               "Be good, and you will be
kent@songbird.com                           lonesome." -- Mark Twain
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