Re: [ga] A TLD for Trademarks

[Hugh Dierker <hdierker2204@xxxxxxxxx>]

Well written here Richard,
   
  I happen to have a monopoly on facts, law and the truth! And from that omnipotent place of all power I concur with you.
  IP interests already have the deck stacked in their favor. New TLDs should not give them a prior restraint law that weakens free speech rights.
   
  e

Richard Henderson <richardhenderson@xxxxxxxxxxxx> 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!

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.

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.

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.

Yrs,

Richard H

----- Original Message ----- 
From: "kidsearch" 
To: "Richard Henderson" ; "Joop Teernstra"
; 
Cc: "Danny Younger" 
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" 
> To: "Joop Teernstra" ; 
> Cc: "Danny Younger" ; "kidsearch"
> 
> 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" 
> > To: ; "Richard Henderson"
> 
> > Cc: "Danny Younger" ; "kidsearch"
> > 
> > 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-
> > >
> > >
> >
>

  


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