Re: Trademarks, random strings, sharing, reserved words

[Albert Tramposch <0002082489@mcimail.com>]

Kent:

Just a few words of clarification in response to your response:


>> Unfortunately, IAHC does not have the power to make this pronouncement;
>It certainly does -- note the word "goal", above.  The wording could
>be something like this:
>	"The IAHC recognizes that Trademark law sometimes intersects domain
>	names.  However, domain names are inherently trans-national, and
>	Trademark is inherently localized.  Therefore, IAHC intends to follow
>	policies with the long term goal of making domain names orthoganal to
>	trademark issues."

Yes, IAHC has the power to *say* this;  it simply does not have the power to
*do* what the statement says.  There is no policy that IAHC can follow that
would make domain names orthogonal to trademark issues (except to change over
to exclusively random number domain names).  Many wish there were.


>>Why is this less important on the Internet than elsewhere? In
>> some ways, it may even be more important, because of the relative
>> anonymity of the sources of information on web pages.
>It is less important, because, with the exception of a very few
>names, trademarks are local, and domain names are international.
>...<
>And what does "united" mean to someone from Turkey?

"United" means a lot to someone in Turkey if they want to book a flight to L.A.
using United Airline's home page.  This is the point of the Internet:  it is
making commerce global in a big way.  In fact, the Internet is well on its way
to making many, many trademarks into global trademarks, including many that
would have remained merely local marks if the Internet did not exist.  The fact
that trademark -law- is local and the Internet global *is* the problem;  it is
not a reason why there is no problem.


>The municipality picked part of the address, the homeowner picked
>Koniston.  As far as I know, the homeowner could have picked "Pepsi"
>without fear of trademark infringement.

Pepsi would certainly object if soft drinks (or any drinks!) were being
distributed commercially from that address.

It may be that the accepted legal principle will eventually be that trademark
infringement or dilution cannot be based on the mere ownership of a domain name
which is confusingly similar to a trademark, if nothing takes place on the web
page itself that would constitute infringement.  Thus, if I choose Pepsi.gTLD as
a domain name, and use it for purely personal purposes (no commercial activity),
I may be free from infringement liability (although not from the threat of
an expensive lawsuit if Pepsi chooses!)

However, if the domain name is used in conjunction with a web page on which
commercial activity is taking place (even with respect to goods or services that
are not similar to those for which a famous trademark is registered), this
becomes the type of usage which could constitute infringement or dilution.

I would agree that imposing trademark law on Internet domain names would be
unfair, if the Internet were not going commercial.  But many, many web pages are
commercial activities.  I stayed at a hotel over New Years *only* because it was
listed on the Internet.  Many goods and services are sold over web pages (I just
ordered a video for my wife's birthday), and this business will increase
1000-fold once consumers feel comfortable sending their credit card numbers.
Web pages serve as media for advertising.  There is an Internet bank, which will
pay my bills and write my checks for me if I send them my money.  Even purely
entertainment pages have an effect on commerce, if they take someone away from
television and the advertisement they would have seen there -- soon (if not
already) the advertisers will switch to the web page.

The fact that the Internet is commercial means that it impacts the *current*
non-Internet commercial environment.  If commerce over the net amounts to $1
trillion by the year 2000, as projected, where do you think that money comes
from?  Is it newly generated consumerism?  No, it is a transfer of resources
from the existing channels of commerce, which are all subject to existing laws,
including trademark laws.  Other hotels, video stores, banks, have lost my
business because of the Internet.  Shall we transfer those resources to the net
without transferring accepted business rules as well?  Why?  Domain names are
being used like trademarks to channel trade in a multi-billion dollar commercial
environment;  why should they be immune from trademark law?  Why would
businesses in the non-Internet commercial environment stand for a situation
that would allow pirates to thrive on the Internet to take even more of their
business away?  There is already a great advantage to doing business over the
net (global access, convenience, perhaps duty-free status if the U.S. government
has its way).  Why should Internet businesses have additional advantages that
are not available to non-Internet businesses, particularly with respect to
universally accepted business rules such as trademarks?

It is true that there is no way to distinguish domain names which relate to
commercial activity from those which do not, so as to impose trademark law on
the one and not the other. Even if there were, some people would carry on
commercial activity in the personal space just to avoid the reach of trademark
rights.  The result is that trademark law applies to everyone on the
web, commercial or not.  IAHC's response to this was to create optional
random-number domain names, in part for those whose activity is not at all
commercial, or who do not need a name with some meaning, or who do not want to
be embroiled in trademark difficulties.  The loss is that Joe Pontiac may not be
able to set up his personal page as Pontiac.com.  This is a loss.  Perhaps a
great one.  But the cause is the commercialization of the net, not the existence
of trademark law.


>>IMHO (and mine
>> only), if the number of TLDs is infinite, the only new laws that will
>> result will be ones that require domain name registrars themselves to
>> check for conflicts with trademark (and other) rights before
>> registering a domain name, and to make them liable if they do not do
>> so properly.

>This doesn't make sense.  You said earlier that we couldn't get
>international recognition of DNS as a trademark free zone because of
>the international cooperation required.  Now you are saying that we
>*are* going to get the international cooperation required to force
>*all* prospective domain owners to check rights etc?

I was not clear.  My point was not that there would be an international
agreement forcing registries to check rights, but that there would be *national*
laws passed to assure that national trademark rights are not subverted.



>I think it is more likely that a national court
>would throw out a claim of trademark dilution against some company
>based on the existence of the domain name in some other national
>registry.

Unfortunately, I do not think that this is so.  It is likely that a foreign
company which is profiting from its accessibility to users of the Internet in
the United States will be subject to the laws of the U.S. as if it were a
U.S.-based company, even if its domain name is in an ISO3166 TLD.  Such activity
could also, conceivably, by itself confer personal jurisdiction in a U.S. court,
even if the foreign company has no other contacts with the U.S.  The situation
will not be much different in other countries.


>Registry liability is not an issue.  I think it has been abundantly
>demonstrated that all that registries need to do to avoid liability is
>file the equivalent of an interpleader.

Many people have held out hope for the interpleader process.  Unfortunately, the
only time it was tested in the courts, it was held to be unavailable on the
grounds that the registry was not a disinterested stakeholder, but rather was a
party to a contract (the registration itself) that was fundamental to the
lawsuit. (NSI v. Clue Computing, DC Colo, Civ Action No. 96-D-1530, 10/29/96).
In other words, the registrar created and issued the domain name for the purpose
of its use on the Internet;  it cannot therefore remove itself from the
conflict.

My point is that, if trademark issues are ignored now, registries may (and
probably will) find themselves faced with liability in trademark disputes in the
future.  The measures contained in the IAHC draft are intended in part to avoid
or delay that.



Albert Tramposch
WIPO
IAHC member, speaking on my own behalf