Re: Trademarks, random strings, sharing, reserved words

[Albert Tramposch <0002082489@mcimail.com>]

Brad Templeton wrote:

>> If anyone has a suggestion that would cover the multiplicity problem *and*
>>allow for user-friendly domain names, I would love to hear it (and will send
>>them a cigar!).
>I don't smoke,

Sorry, I meant it more symbolically.

>but I feel that there have been many workable plans.
>First of all, the plan that trademarks must include their context solves almost
>all the problems except for extremely strange geographic splits of TMs.

The president of a reputable trademark search firm has told me that there are
over 80 registrations in the U.S. alone for the trademark GENESIS in the same
class.  This is true in many instances and, sadly, makes the addition of "goods
and services" to a trademark-specific domain name unworkable.  Besides, many
trademarks are registered in multiple classes or for multiple goods and
services, and the owner would not like to have to be limited to choosing one
class or one good or service.


>Ie. it is legally possible for one company to hold a TM in 25 states and 100
>countries and anotehr company thold the same exact TM in the other 25 states
>and another 100 countries, but this is very rare.  Perhaps numeric codes
>should be used there.  But this is very rare.

The idea that the random number tag should be used only when it is necessary is
very appealing.  Obviously, it would not be needed in every case.  How do you
think it can be applied in practice?  If one trademark owner gets a domain name
in .tm.x now with no random number tag, and a second trademark owner applies for
the same domain name two years from now, how would you handle this problem -- it
is too late to give the first owner a random number;  giving a random number DN
to the second owner when the first owner has a user-friendly DN seems unfair
(note that one premise of the .tm.x system is that it would not suffer from the
first-come, first-served limitations, which would still be found in the gTLDs).



>So let's have many top level domains, and nobody is *stopped* from using their
>TM.   They are only stopped from using it in a form in which it is not a TM,
>namely without a context.

Some have suggested and supported this approach.  The counter argument is that
pirates will simply register in all of the spaces available, or, on the other
hand, one trademark owner will register in all of the spaces to prevent piracy,
but in doing so will also close out other legitimate trademark owners.  If the
number of available spaces is large enough to prevent this, we find ourselves
back in the policing dilemma.


>While nobody suggests an infinite number of domains, I fail to see why having
>many is a policing nightmare.   Frankly, I think it's the complete opposite.
>Trademark policing in the old media world is a nightmare.  Doing it in the
>online world, where you can easily make (and in many cases already ahve)
>comprehensive online directories is a trademark policer's wet dream.

Speaking of which, it is the number of potential lawsuits which is daunting, not
just the problem of detecting infringement and sending cease and desist letters.



>We must get rid of the special status of .com.  This status causes people
>to think that "foo.com" is the only "real" domain for somebody using the name
>"foo" and thus you have conflicts.  If people stop thinking that the problem
>is resovled, mostly.

This is the point of establishing 7 new gTLDs.  If 1000 were established, that
would increase the value of .com, because .com would remain the most easily
recognizable gTLD.  Creating a modest number of new competing gTLDs, which will
soon gain user familiarity, seemed to be the best way to quickly decrease the
advantage that attaches to .com.


Albert Tramposch
WIPO
IAHC member, speaking on my own behalf