The trademark issue

[Gilles LERAT <glerat@worldnet.net>]

>Date: Sat, 7 Dec 1996 15:37:59 +0100 (MET)
>From: Daniel Kaplan <dkaplan@terra-nova.fr>
>This is hiding your head in the sand: both problems are highly related, and
>saying "let the courts deal with that" creates several sets of problems:
>- disputes may include persons and organizations in several countries;
>- courts are slow and solving disputes ay take years;
>- trials are expensive: only the rich will go to court;
>- in the meantime, the Internet's image will be severely damaged by
>hundreds of ongoing disputes. We must design mechanismes that prevent that
>as much as possible.

There are several ways to try to prevent from trademark disputes  within the
registration of domain names.

The first solution would simply be to create new international top level
domain names, in the expectation that companies who couldn’t previously
register their trademark ( for any reason, including the fact that it has
already been legitimately claimed by another company with the same
name/trademark) can now get a chance to register it.

There has been for example a very interesting proposal by Thomas J. Hoffman
(http://www.iahc.org/contrib/draft-iahc-hoffman-tndn-00.txt) about creating
a new iTLD entirely dedicated to  trade names. 

This solution is a good approach. However, I feel strongly that, it will not
completely eliminate the problem, as most companies will want to *secure*
their names in as many iTLDs as possible.

> Date: Sat, 7 Dec 1996 12:40:22 -0800 (PST)
> From: Karl Auerbach <karl@CaveBear.com>
> I suspect that we'd end up with double registrations: trade/service-mark
> XYZ would be registered in both .com and .tm.

If I run a small company whose name is MacDonald’s, chances are I will not
have time to register it under the .BIZ or .TM domains (supposing these get
created) before the other well known MacDonald’s gets it.
To prevent multiple registrations, we would need to find a way to ensure
that companies already registered under .COM (or somewhere else) see no
interest at registering in newly created iTLDs.


The second solution is to allow only hierarchical iTLDS, and to follow rules
such as applied in France :	

		* No generic names (no  paris.fr,  tourisme.fr, ....).
		* Classification by categories.
		* Only one name per company.
Companies will only be allowed to register within their core business: Ford
could get the ford.car.biz domain to manage, Burger King might claim
burgerking.restaurant.biz.

This solution, while still manageable for a single country, is getting
harder to implement on a world wide scale. 
Besides, all problems will not get solved that way. There may be two
‘Infocom’ companies (Infocom is a name picked randomly) living in two
different countries, and wanting to register for the same subdomain.

But the main issue with this, is that companies want short names that people
people will remember easily. 
I agree with the following: 

>Date: Sat, 7 Dec 1996 11:08:54 -0700
>From: rick@yujean.com (Net Sales)
>for a business, the advantage of having your name.com is for ease of use
>for your customers and/or stakeholders.  knowing i wish to contact ibm, i
>guess at ibm.com, and voila, i get ibm.  if i have to guess whether it is
>ibm.com, or ibm.biz, or ibm.us.com, or ibm.ser, or whatever, then i don't
>find it easily.

It is easier for people to keep in mind www.volkswagen.com, than
www.volkswagen.car.com ( would it be:
volkswagen.car.com, volkswagen.auto.com or why not volkswagen.wagen.com  ??)

Companies will want to get short personal names, and if they cannot get them
from newly created iTLDs, they will turn to the only service that will
provide them what they want, namely the .COM registration service.

If we make strict rules on newly created iTLDs, registries running these
iTLDs will complain (with reason) that they are not treated the same way as NSI.

Now if you try to apply these strict rules (e.g. subdivision of the domain
space) for domains already registered under the .COM, you will find that
it’s simply not doable. 

> Date: Sat, 7 Dec 1996 16:52:40 -0800
> From: Simon Higgs <simon@higgs.com>
> Which is why .COM should be assigned to one of the 42 international
> trademark categories - namely 42. Misc. That way this issue is avoided
> completely.

I am not sure this is doable, because some of these domains have already
been used for more than two years.
A name becomes valuable when it’s used. People have got used to
netscape.com, therefore, you cannot *morally* force Netscape Corporations to
change its name to netscape.software.com (or whatever...)
‘Netscape.com’ has become at least as valuable as ‘Netscape’ (at least in
people’s minds).

If it is not possible to change .COM naming scheme, newly created registries
should be given the opportunity to get the same policy (free registration
under a first come first serve basis), otherwise many businesses will
continue to register under the .COM domain (which, if it happens, makes the
creation of new iTLDs useless).

Which brings us back to solution one. If newly iTLDs are created with (more
or less) the same freedom as .COM, every company whose name has already been
legitimately claimed (I am not speaking about illegitimate claims, here)
GETS A CHANCE to register its name.

That’s what I meant, when I said (in a previous message) that we should let
the courts handle the trademark issue.
I was just expressing the view  that « trying to solve the trademark issue
may not be the primary objective of the
IAHC, because the IAHC deals with management issue of domain name space. »
True, the trademark/DNS conflict needs some reflection, but it would require
so many resources ( because this is the first attempt of
internationalization of trademarks over a medium) that a stable mechanism is
unlikely to reach global agreement (IMHO) within one or two years.

I will end up quoting the very good draft by Jon Postel:
	«  Domain names are intended to be an addressing mechanism and are not
intended to reflect trademarks, copyright, or any other intellectual
property rights »

Maybe (it is just a suggestion), the way the IAHC could handle the trademark
issue is by emphasizing on the fact that registering a domain name does not
give a person (or a company) any legal rights over that name.
This also implies that an entity is not expected to register a domain name,
whenever it knows it has no legal rights over that name (if it does so, the
entity should expect legal trouble in courts).

I would be grateful to any kind of comments you might have on this message
(no flames, please).

Gilles LERAT,
IGtech 
75, rue de l’Ourcq Paris, FRANCE
E-mail: gilles@igtech.fr

Speaking for myself, not for my company.