Re: [ga] A TLD for Trademarks

["kidsearch" <kidsearch@xxxxxxxxxxxxx>]

There is a lot we agree on here Richard, we just see different ways to
achieve them. I'll post my responses below.

----- Original Message ----- 
From: "Richard Henderson" <richardhenderson@xxxxxxxxxxxx>
To: "kidsearch" <kidsearch@xxxxxxxxxxxxx>; "Joop Teernstra"
<terastra@xxxxxxxxxxxxxx>; <ga@xxxxxxxxxxxxxx>
Cc: "Danny Younger" <dannyyounger@xxxxxxxxx>
Sent: Tuesday, December 20, 2005 4:52 AM
Subject: Re: [ga] A TLD for Trademarks


> Hi Chris,
>
> It may well be you are right (I don't have a monopoly on facts, on the
law,
> or on the truth!). I just don't know.

I have the monopoly on all the facts. Just ask me. :) No one does thats why
we have these discussions.

>
> But I am not convinced that ICANN is *obliged* to run Sunrise procedures
to
> pander to the IP community every time a New TLD is launched.

I don't either. But with generic sounding tlds it's the only way. That is
why I advocate for specific tlds. There would be no need for a sunrise
period in .computers. If someone filed apple.computers and felt they could
defend the upcoming court action by Apple Computers, more power to them.
It's their business, not ICANN's or ours.

>
> If ICANN wishes to assert that .reg or .tm is the place where Trademark
> holders may claim automatic rights (based on authenticated Trademarks)
then
> it can do so. 'Sunrise' mechanisms are surely not inevitable, obligatory,
or
> indeed required.

That just gives them another tld they are protected in IMHO. Also what if I
sell Apple Guitars and Steve Jobs sells Apple Computers and we both have a
trademark, who gets the .tm? first come first serve? Ok, then how does that
help the thousands of small businesses with trademarks in their geographical
areas that are similar? A .tm tld would only grant protection to one company
even if thousands have a similar mark. This is not helpful IMHO.

>
> Meanwhile, my understanding of WIPO precedents and decisions is that
> challenges by Trademark holders etc only succeed where the registrant of a
> name has been shown to have registered that name "not in good faith": in
> other words either (a) to defame a Trademark holder (b) to 'pass off' as
the
> trademark holder (c) to try to sell the Trademark holders 'name' as a form
> of blatant speculation (d) to use the famous name to lead people to links
to
> other websites etc.

Yeah, well they seem to have all kinds of ways to say you registered in bad
faith. Bad contact info is even one. If I file an arbitration through WIPO
against you, they use your contact info in whois to notify you. If you don't
get that notice due to a bad email address, phone number, etc, too bad for
you. By not responding you lose the domain name in most cases.

Also not having a website built is considered bad faith. What if I'm very
poor. I plan to build a website, but have just saved up and finally
purchased the name. I am saving up to have my website built someday. It's my
lifelong dream. But someone files and arbitration against this person and to
show bad faith they simply say they have no website there. When you register
a domain name, it doesn't say in the registration agreement that I must
build a website on that name within a certain period of time.

With generic tlds and a limited number of them we create the need for
companies to go after similar names within that limited space even if they
have to hijack the names from legitimate users. With an unlimited amount of
tlds that poor person whose dream it was to have a website can register it
in a tld that won't get him/her sued for their name.

The problems created by limited space are numerous. Big companies have a
legal staff. They can sue you over any name they want to sue you for. If you
cannot afford to defend it, then you will lose the domain name. I think most
of that problem gets solved when you expand the market vs limiting it.

>
> I had a specific experience when I registered a .com website a few years
> ago. Here in the UK we have an extreme right-wing political party called
the
> British National Party, which basically wants Britain to be kept for
> 'whites' and would be glad if other ethnic groups could be induced to be
> repatriated (at least that is the historic leaning of their organisation).
> Many people here in the UK feel that it is a racially-motivated
> organisation. So when I saw that britishnationalparty.com was available
for
> registration, I decided to register it and run an infoemation site on the
> party and its policies. It ran for several years, was informative, had a
> lively forum, and I made sure it was not defamatory, did not link to other
> websites I owned, and was not for sale. In other words I was using it in
> good faith, as an information site, and using my right of free speech.

I'd have to look it up but I have a similar example for you. It was either
DodgeViperFan.com, ViperFan.com or something like that. I have a good
memorey just short, but the name isn't what is important here. A guy with a
dodge viper really loved his car. He built a website all about it and
invited others to come talk about and post pics of their dodge vipers.
Dodge's own magazine wrote an article about the website, prasing it as one
of the best fan sites they have ever seen. 2 years later, they sued him and
took his domain name from him as too similar to their trademarked name. he
didn't register in bad faith and this goes on all the time.

A rule could be easily adopted and defended in court if we opened up the tld
market for the creation of new tlds to everyone. If steve jobs had
apple.computers, it would be easy to defend his mark. If someone else had
apple.guitars, it would be very difficult for him to take their domain name
from them.


>
> The leaders of this political party put pressure on me to hand over "their
> name" to them. They phoned me. They mailed me. They threatened to take me
to
> court. I took advice. The key issue was whether I was using the domain
name
> in "good faith". If a person is using a domain name in good faith, then
they
> should be allowed to within ICANN's policies. It should then be left to
the
> "Trademark holder" to take legal action if they think they have grounds
to.
> Significantly, the British National Party backed off. I do not believe
WIPO
> could have shown that I was acting in 'bad faith' because I wasn't.

I'm glad you kept to your guns on that one. Would you have, could you have
done so if they sued you in court? Even if you could have, we must remember
others cannot.

>
> Similarly, as an English speaker (or even if I wasn't) why the heck
> shouldn't I have the right to run a www.apple.zzzzz if I want to,
exercising
> my right to use a generic word from my own language. I strongly object to
> companies hijacking *MY* language and reserving *MY* own generic words for
> their private right and privilege. To me, *that* is acting in bad faith
> towards ordinary people and their freedoms!

I agree with you. Opening up the market for the creation of a lot of tlds
would also let me use that word if I wanted to.

>
> So if at all possible, I believe that TM 'rights' in the context of domain
> names should be *restricted* wherever possible. And in my view they would
be
> best restricted within a .reg or .tm enclosure. Say .computers comes up
and
> Apple wants to identify this name as about them. If they get their first
and
> obtain the name, then fine. If not, then they can prove that another
> registrant is using it in bad faith. But if that person is just using it
> fairly (maybe a website about all the different types of eating apples
that
> are listed on the internet or how the apple industry should be
computerised)
> then Apple Computers should not worry. They still have the official
> 'Trademark' identifier at .reg. or .tm.

That would be fine, again, if only one trademark were ever issued using the
word apple. Which trademark holders get to have the protection you speak of
and who doesn't?

>
> I am not convinced that there is, as yet, international (or
national-level)
> agreement that Domain Names are Trademarks. Indeed, I believe that ICANN
and
> others involved in Net policy, Net governance, and Net co-operation should
> do everything in their power to create a recognition and understanding
that
> Domain Names are *not* Trademarks at all, but rather they are simply
> number-strings with use as words in language, a language belonging to all
> people. ICANN's promotion of a .reg or .tm scheme for limited
identification
> of trademark status would go a long way towards creating the climate of
> understanding that Domain Names are not Trademarks at all.

Domain names are not trademarks, however, if you use someone's trademark who
has spent thousands or millions making that mark famous, and you use that
trademark to defame or compete with them causing them harm in some way, then
you are infringing on their rights. I'm for plans that protect trademark
holders and still protect the little guy as well.

I know it sounds repetitive but imagine if there was a tld for every
category in the phone book. .plumber, .electrician, .hairdresser,
.computersupplies, .officesupplies, etc. Would you be confused as to
apple.hairdressers vs apple.electrician? No. It would allow more companies
to protect their mark in the category in which they filed it, but would
limit them to only that protection and would not grant them ownership of a
string of letters as the current system of generic tlds does now.

>
> If someine chooses to abuse someone else's trademark rights through
> deliberate misuse of a domain name, then that is a separate matter and
> should be challenged in the courts. In the case of
BritishNationalParty.com
> I did not misuse the name - indeed I ran a very useful information site
> which people of all persuasions used and found helpful. I was acting in
good
> faith. I was not challenged, and I believe I would have been challenged if
> they could have.
>
> It is time that WIPO and other agencies were persuaded to more clearly
> define what does and does not constitute 'bad faith'. But ICANN's role
> should *not* be to go hand-on-hand with the IP community, but to
rationally
> provide the IP community with a limited TLD where their legitimacy can be
> proved and recognised. The rest of the TLDs and their domains should
remain,
> like our language itself, free for everyone to use.

Changed limited tld to limited tlds and we agree 100%. I'm for limiting them
to protection for their mark in the tld that corresponds to their mark.
Probelm solved.

Chris McElroy
http://www.newsandmediablog.com
http://www.wholettheblogout.com
http://www.mostwantednewspaper.com

>
> Yrs,
>
> Richard H
>
> ----- Original Message ----- 
> From: "kidsearch" <kidsearch@xxxxxxxxxxxxx>
> To: "Richard Henderson" <richardhenderson@xxxxxxxxxxxx>; "Joop Teernstra"
> <terastra@xxxxxxxxxxxxxx>; <ga@xxxxxxxxxxxxxx>
> Cc: "Danny Younger" <dannyyounger@xxxxxxxxx>
> Sent: Tuesday, December 20, 2005 2:05 AM
> Subject: Re: [ga] A TLD for Trademarks
>
>
> > Again, Richard, it doesn't matter that you or ICANN or everyone on this
> list
> > says that with a .tm tld companies would only have mark protection
there.
> >
> > They will simply go to court and protect it in all the other tlds as
well.
> > Nothing we believe or say will change what will happen.
> >
> > Creating a .tm or .reg will just give them one MORE tld their mark is
> > protected in.
> >
> > Not even ICANN or WIPO can change the fact these companies will simply
sue
> > people for their domain names in all tlds as long as those tlds are
> generic
> > in nature.
> >
> > Until you have specific tlds that exactly relate to categories in which
> they
> > can hold a mark in you will always have the problem of reverse domain
name
> > hijacking.
> >
> > They will always be protected in all generic tlds like .com, .org, .net,
> and
> > .biz. Unless you change the court system in many countries all at once,
> that
> > is how it is.
> >
> >
> > ----- Original Message ----- 
> > From: "Richard Henderson" <richardhenderson@xxxxxxxxxxxx>
> > To: "Joop Teernstra" <terastra@xxxxxxxxxxxxxx>; <ga@xxxxxxxxxxxxxx>
> > Cc: "Danny Younger" <dannyyounger@xxxxxxxxx>; "kidsearch"
> > <kidsearch@xxxxxxxxxxxxx>
> > Sent: Monday, December 19, 2005 3:59 AM
> > Subject: Re: [ga] A TLD for Trademarks
> >
> >
> > > What I'm really saying, Joop, is that I'm opposed to 'Sunrise'
> privileges
> > at
> > > every launch for people who claim (often spurious) trademark rights.
In
> > the
> > > case of imachination.com, you clearly think that the identity you have
> is
> > > sufficient in itself, but presumably you don't expect the right to
> > 'reserve'
> > > the same name in each of the 100's of potential New TLDs? Because that
> > > really *would* be expensive and time-consuming for you. Therefore in
> your
> > > case, your .com is sufficient.
> > >
> > > However, if you really wanted to safeguard your trademark authenticity
> on
> > > the Net under my scheme, all you'd need to do is buy a .reg version of
> > your
> > > name (rather than 100's of versions in all future TLDs) and (if you
> like)
> > > get the .reg to resolve to the .com site.
> > >
> > > To my mind, having one authentic and authenticated trademark TLD is
far
> > > better than having people claim the right to "reserve" their name in
> tens
> > or
> > > 100's of New TLDs.
> > >
> > > With regard to compliance and enforcement problems, those are supposed
> to
> > > exist in existing 'Sunrise' provisions of existing TLDs. I think it
> would
> > be
> > > better to have just ONE TLD where the verification procedure was
carried
> > out
> > > really thoroughly ONCE, than to have these Sunrise processes repeated
> over
> > > and over again.
> > >
> > > I don't regard one more domain registration as being as financially
> > punitive
> > > as trying to buy your name in lots of New TLDs, although of course,
you
> > > would retain the right NOT to buy, even in a .reg version. For many
> > people,
> > > the 'Trademark' and identity problem is just not big enough to worry
> > about.
> > > However, for many people (and the entire IP community, and many of the
> > > domain speculator community) these repeated Sunrise/Trademark claims
are
> > > important. The introduction of .reg or .tm could bring to an end
> > "Trademark
> > > rights" in other TLDs, and also bring to an end the "Sunrise" issues
for
> > all
> > > New TLDs with all the compliance problems each of these tend to bring.
> > >
> > > As for heavy-handed... I don't think a .reg provision would be
> > heavy-handed,
> > > because no-one would be forced to buy a .reg... it would be a market
> > choice
> > > (providing your application could be verified). I personally believe
it
> > > would *lighten* the IP pressure on the rest of the name space.
> > >
> > > Kind regards,
> > >
> > > Richard H
> > >
> > > ----- Original Message ----- 
> > > From: "Joop Teernstra" <terastra@xxxxxxxxxxxxxx>
> > > To: <ga@xxxxxxxxxxxxxx>; "Richard Henderson"
> > <richardhenderson@xxxxxxxxxxxx>
> > > Cc: "Danny Younger" <dannyyounger@xxxxxxxxx>; "kidsearch"
> > > <kidsearch@xxxxxxxxxxxxx>
> > > Sent: Sunday, December 18, 2005 9:58 PM
> > > Subject: Re: [ga] A TLD for Trademarks
> > >
> > >
> > > > At 10:06 p.m. 18/12/2005, Richard Henderson wrote:
> > > > >I personally favour one clearly identifiable TLD for verified
> > trademarks
> > > > >(call it .reg or .tm or whatever) and the whole world knows that's
> > where
> > > you
> > > > >go to look for the official sites for recognised and established
> > > companies.
> > > >
> > > >
> > > > It's too late for that, Richard.
> > > >
> > > > Small businesses have trademarks too.
> > > > Any kind of forced corralling (whether in .org or .xxx ,.kids or
.tm)
> is
> > > > going to give more compliance and enforcement problems than it is
> worth.
> > > > You would introduce a heavy hand into the DNS.
> > > >
> > > > Do you think I would like my established brand imachination.com to
be
> > > > herded to a .reg corral and suffer huge rebranding expenses simply
> > because
> > > > my registered trademark is suddenly not enough protection any more?
> > > >
> > > >
> > > > -joop-
> > > >
> > > >
> > >
> >
>