Re: [ga] A TLD for Trademarks

[Dale Farmer <dale@xxxxxxxxxxxx>]

Richard Henderson wrote:

> 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.
>
> 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.
>
> 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.
>
> 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.
>
> 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.
>
> 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.
>
> 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!

    There is also the issue of the same word being used as a trademark by
two different entities.   Apple Records and Apple Computer come to mind.
Trademark law generally recognizes different categories, and it also allows
one to use one's own name, even though it may actually conflict with a
an existing trademark.  Just because McDonalds has the trademark, doesn't
mean that Joe McDonald cannot open a restaurant and call it McDonalds.
Trademark law is messy and full of inconsistencies, just within a single
country.  Trying to apply it internationally is, IMHO, just not going to work.
Too many legitimate claims on the same word out there.

    --Dale