An interesting and informative exchange between Albert Tramposch and Ellen
Rony, well worth a look to understand some basic issues surrounding
trademarks.
Antony
Robert Shaw wrote:
>December 8, 1997: An index of submissions made to Notice-97-03:
>"Proposed Trademark Dispute Resolution: Draft Substantive Guidelines
>for Administrative Domain Name Challenge Panels" is now available
______________________________________________
Apparently the comments I sent to both the iPOC and to Mr. Tramposch
didn't get posted. Perhaps someone on this list who is a member of CORE or
PAB can add these e-mail exchanges to the index for those who wish are
tracking the ACP proposal.
Private messages from Albert Tramposch are posted here with his permission.
===================================================================
August 28, 1997
To: atramposch@mcimail.com
From: erony@marin.k12.ca.us (Ellen Rony)
Subject: Re: gTLD-MoU News (August 27, 1997)
I went through the entire, painfully slow, 25-slide PowerPoint
presentation. One particular item caught my eye on slide #12
"ACPs: FCFS; honors use on Internet as creating rights (2 years=presumption)"
See: http://www.gtld-mou.org/docs/acps/sld012.htm
A "statute of limitations" protection for domain name users is certainly
an issue that merits discussion. Under the current NSI scheme, a domain
name can be operational for years and yet an earlier trademark registration
can trump the domain holder's rights in the domain name.
While I think it's absurd to keep untrademarked users of domain names in a
position of endless vulnerability, I am curious about this gTLD-Mou slide
#12.
Under whose authority is it suddenly determined that two years on the
Internet creates a presumption of automatic rights in a name? Have the
WIPO members voted on this? Is it incorporated into some international
treaty ( I doubt that; nations have spent more than 100 years trying to
find consensus on other aspects of intellectual property)?
If the "substantive norms" for the ACP were drafted by the iPOC (yeh, yeh,
"changed by POC with advice from PAB"), does that mean that an 11-member
committee thinks it can decide for all the Internet what constitutes rights
in domain name? Not.
I am not a signatory to the gTLD-Mou (or even the stop-gTLD-MOU) and thus
am not a member of iPOC, PAB, CORE,or, for that matter,ISOC, INTA, IANA,
WIPO, NTIA, ITU, FNC, NSF, ISI, SRI....and the list goes on and on. But I
am a member of the Internet community, and it is statements like that on
slide #12, which seem to have emerged from the ether, that make people like
me really question the gTLD- MoU definition of "rough consensus".
I also sent my query to the iPOC.
===================================================================
Date: Fri, 29 Aug 1997 05:04:48 -0400 (EDT)
From: Albert Tramposch <0002082489@MCIMAIL.COM>
Subject: Re: gTLD-MoU News (August 27, 1997)
To: erony <erony@marin.k12.ca.us>
Cc: poc-submit <poc-submit@gtld-mou.org>
Thank you for your message. The 2-year presumption is included in the
draft Substantive Guidelines for ACPs, which have been posted on the web
site for comments since March. Please see section V.A, second paragraph,
of the guidelines at http://www.gtld-mou.org/docs/raps.htm; and
paragraph 73 of the earlier version at http://www.iahc.org/docs/
acp-guide.html. To date we have had no criticism of this provision. In
fact, many people have appreciated the fact that use on the Internet
would be valued under the ACP procedures, as it is not in other fora (as
you have mentioned).
As to the question of who decides about such a presumption (which is only
a presumption of some rights which must be taken into account by an ACP,
not a "statute of limitations"; it is applicable to ACP procedures only,
and does not affect court actions), it is you and the other members of
the Internet community which decides. The substantive guidelines have
been open for comment since March, and are still open for comment. Major
changes were made in the second draft which is on the web site as a
consequence of comments submitted. Further changes will also be made on
the basis of comments to the second draft.
>From your message, I am not sure whether you support the concept that use
of a domain name on the Internet should give rise to rights in an ACP
proceeding, or if you oppose that concept, or if you support it but think
that it could be expressed in a better way.
We would be very interested in having your exact views on this subject,
so that we could take them into account in finalizing the guidelines.
Many thanks,
Albert Tramposch
iPOC member, speaking on my own behalf
=================================================================
September 18, 1997
To: Albert Tramposch <0002082489@MCIMAIL.COM>
From: erony@marin.k12.ca.us (Ellen Rony)
Subject: Re: gTLD-MoU News (August 27, 1997)
Thank you for responding to my query. The gTLD-MoU web site is many
layered, and I confess that I did not see the
http://www.gtld-mou.org/docs/raps.htm to which you refer.
[snip of earlier message]
I have not contributed to the debate because I am not a signatory to the
gTLD-Mou, not a member of the PAB, and therefore cannot vote. But since
you inquired, I have to respond that I think it is unwise to create a new
quasi-legal requirement with no case law to support it. I think we have to
look at other solutions than to make the blanket statement that if a
company was asleep for two years, it is blocked out of any rights to a
particular name.
I like the approach put forward by DISC.COM, a company challenged by a
trademark owner of the popular DISC name. The domain registration has
established an "intermediate home page" where both companies with the DISC
name appear. A consumer simply chooses one, which may link to a different
URL. In this case, the trademark owner's desired name was already
registered, so it went with a second choice, DISKLINK.COM. But the
trademark owner cannot complain about consumer confusion because the
Internet user only goes through one additional step to find the appropriate
DISC.
The gTLD-MoU completely ignores the 1.5 million registrants under .COM,
.NET and .ORG. A workable scheme for gTLDs should embrace the pre-existing
and predominant ones. The two-year provision for the new gTLDs, but not
for the existing TLDs, would give rise to further confusion. Say a
trademark owner was initiating a challenge to registrants in both .COM and
.FIRM (after March 30, 1998). And say in this example that one domain
registrant had claimed the trademark owner's name in both TLDs activiting
the domain on the same day. With the gTLD-MoU dispute provisions covering
only .FIRM but not .COM, the trademark owner might get two different
results, one through court and one through ACP.
It is clear that there needs to be some mechanism for *transnational*
domain disputes, and WIPO seems the appropriate umbrella for that, assuming
that its membership agrees. My understanding is that the WIPO membership
has NOT yet agreed to that responsibility. Further, I think a court of
competent jurisdiction within a particular country is a more appropriate
place for dispute resolution when both claimants have their principal place
of business in that country. Since trademark law is geographically-based
and context-sensitive, I think that attempts to graft it onto the DNS are
doomed. Some jurisdictions do not offer ITU registrations. Indeed, some
do not even have a requirement of prior use in commerce. Some don't
recognize common law rights in a name and further, some have 24-hour
turnaround trademark registration while the U.S. is running at about, what,
15.9 months? I posit that a domain name should be viewed as a new form of
intellectual property, alongside patents, copyrights and trademarks,
requiring its own registration policies and procedures.
Please do not assume that the only criticisms to the ACP plan are those
that find their way to the URL you sent me. More likely, those who have
problems with the plan or outright oppose it simply don't take the time to
comment upon how it might be improved.
The U.S. Department of Commerce's NOI only had only 395 responses among 30
million Internet users and 1.5 million .COM registrants. But anyone
involved in the ongoing development of the gTLD-MoU approach should mine
the submissions to the NOI for meaningful ideas that might improve the plan
your group has put forth. You'll find mine among them on August 18.
===========================================================================
Date: Mon, 22 Sep 1997 12:09:25 -0400 (EDT)
From: Albert Tramposch <0002082489@MCIMAIL.COM>
Subject: Re: gTLD-MoU News (August 27, 1997)
To: erony <erony@marin.k12.ca.us>
ou wrote:
>Thank you for responding to my query. The gTLD-MoU web site is many
>layered, and I confess that I did not see the
>http://www.gtld-mou.org/docs/raps.htm to which you refer.
You could also refer to www.wipo.int, under Trademarks and Internet Domain
Names, which focusses on the trademark aspects alone.
[snip copy from earlier message]
>
>I like the approach put forward by DISC.COM, a company challenged by a
>trademark owner of the popular DISC name. The domain registration has
>established an "intermediate home page" where both companies with the DISC
>name appear. A consumer simply chooses one, which may link to a different
>URL. In this case, the trademark owner's desired name was already
>registered, so it went with a second choice, DISKLINK.COM. But the
>trademark owner cannot complain about consumer confusion because the
>Internet user only goes through one additional step to find the appropriate
>DISC.
This option has been discussed and rejected, and keeps resurfacing. It is
attractive in some ways, but the trademark owners which would be required to
use it do not like it at all. There are several reasons for this. First,
they are no longer presented as unique on teh Web. Their customers have to go
through the extra step, and actually see all the other companies with the same
name. Second, they would be listed on the page along with all of the other
companies which could be confused with them. If those other companies sell
the same products, but are in another country and have their own trademark
registration, they could siphon off potential customers. Third, who will keep
the pirates off of the intermediate page? This simply shifts the trademark
problem from the domain name to the intermediary page, which I think it is
even less manageable. Someone has to decide who deserves to be on the page,
and who not, or else the pirates will flock there and, again, siphon off the
customers of the trademark owner, but with alacrity.
>The gTLD-MoU completely ignores the 1.5 million registrants under .COM,
>.NET and .ORG.
This is not at all true. The gTLD-MoU by its very terms brings .com, .org and
.net under its umbrella as soon as the cooperative agreement between NSI and
NSF expires.
>A workable scheme for gTLDs should embrace the pre-existing
>and predominant ones. The two-year provision for the new gTLDs, but not
>for the existing TLDs, would give rise to further confusion. Say a
>trademark owner was initiating a challenge to registrants in both .COM and
>.FIRM (after March 30, 1998). And say in this example that one domain
>registrant had claimed the trademark owner's name in both TLDs activiting
>the domain on the same day. With the gTLD-MoU dispute provisions covering
>only .FIRM but not .COM, the trademark owner might get two different
>results, one through court and one through ACP.
This will be fixed in the near future. However, you must understand the very
real political and operational difficulties of changing a system that is
already in operation.
>It is clear that there needs to be some mechanism for *transnational*
>domain disputes, and WIPO seems the appropriate umbrella for that, assuming
>that its membership agrees. My understanding is that the WIPO membership
>has NOT yet agreed to that responsibility.
The WIPO Member States have met twice to discuss the details of domain name
dispute settlement. The subject will be discussed at the WIPO General
Assembly meeting this week. The focus at this point seems to be to modify
some details to make the system better, but the system as a whole seems to be
generally acceptable.
>Further, I think a court of
>competent jurisdiction within a particular country is a more appropriate
>place for dispute resolution when both claimants have their principal place
>of business in that country.
Yes, in the few cases in which that will happen in the new global system.
>Since trademark law is geographically-based
>and context-sensitive, I think that attempts to graft it onto the DNS are
>doomed.
The only alternative is to not protect trademarks on the Internet, which would
be worse.
>Some jurisdictions do not offer ITU registrations. Indeed, some
>do not even have a requirement of prior use in commerce. Some don't
>recognize common law rights in a name and further, some have 24-hour
>turnaround trademark registration while the U.S. is running at about, what,
>15.9 months? I posit that a domain name should be viewed as a new form of
>intellectual property, alongside patents, copyrights and trademarks,
>requiring its own registration policies and procedures.
This possibility was discussed and unanimously rejected by WIPO member states,
in the May Consultative Meeting. However, the "two year" rule in the ACP
substantive guidelines recognizes the reality of the need for stability of
domain name holders, in being able to continue use on the Internet once they
become known.
>Please do not assume that the only criticisms to the ACP plan are those
>that find their way to the URL you sent me. More likely, those who have
>problems with the plan or outright oppose it simply don't take the time to
>comment upon how it might be improved.
They should come forward and speak. Community consensus can only mean
consensus of those that take the time to participate. I could just as easily
say that most of the supporters of the system have been silent, so that there
is virtual universal support! You would not believe this, however.
>The U.S. Department of Commerce's NOI only had only 395 responses among 30
>million Internet users and 1.5 million .COM registrants. But anyone
>involved in the ongoing development of the gTLD-MoU approach should mine
>the submissions to the NOI for meaningful ideas that might improve the plan
>your group has put forth. You'll find mine among them on August 18.
This is being done as we speak (so to speak).
Thanks for your comments.
Albert Tramposch
WIPO
iPOC member, speaking on my own behalf
========================================================================
September 25, 1997
To: Albert Tramposch <0002082489@MCIMAIL.COM>
From: erony@marin.k12.ca.us (Ellen Rony)
Subject: Re: gTLD-MoU News (August 27, 1997)
Thank you for your lengthy response. I understand that the issues are
manifold. Trademark owners who have invested sizable sums to develop name
recognition do not want to lose that investment in electronic commerce.
But there must be room for those with common law rights, generic
identifiers and surnames used as identifiers on the Internet.
I wrote:
>>Since trademark law is geographically-based
>>and context-sensitive, I think that attempts to graft it onto the DNS are
>>doomed.
You answered:
>The only alternative is to not protect trademarks on the Internet, which
would
>be worse.
On this point I disagree. The trademark paranoia that currently pervades
the Internet results in companies grabbing all possible variations of their
own name so that customers don't go to a competitor's site. We still have
an intermediate step because a consumer doesn't know which of the
variations is the operative one (e.g., Warner Brothers has 25 variations on
its name). And there are too many inequities between the way trademarks
are issued and protected in various countries to try to tie this issue to
the coattails of the DNS.
People use the DNS as a directory, even if it wasn't designed for that
purpose. Perhaps the DNS engineers should find a way to enhance WHOIS so
that a person can look up a company name and then click directly to the web
site from the list of similar names that are returned with the search.
Switch the focus to finding ways to accommodate multiple uses of the same
name in a hierarchical unique-names-only system.
As for the trademark issue, I just want to remind you of Jon Postel's
comment in
"New Registries and the Delegation of New Top Level
Domains," (a.k.a. Draft Postel, June 1996), the document which led to the
establishment of the IAHC.
Postel wrote, "The Domain Name System was created to simply name computers
attached to the Internet. There was no intention that domain names
identify products or services in any way, or that domain names have any
relationship to
trademarks."
=================================================================
Date: Fri, 26 Sep 1997 04:51:24 -0400 (EDT)
From: Albert Tramposch <0002082489@MCIMAIL.COM>
Subject: Re: gTLD-MoU News (August 27, 1997)
To: erony <erony@marin.k12.ca.us>
[snip copy from earlier message]
The current dispute settlement system is designed for the present DNS in
which there is no directory. When (and if) a universal directory
appears, I think that the dispute settlement system would change
accordingly.
When that happens, the trademark problems will shift to the directories
themselves (I happen to think that directories will be even more
difficult from a trademark point of view than domain names are, however).
>As for the trademark issue, I just want to remind you of Jon Postel's
>comment in
>"New Registries and the Delegation of New Top Level
>Domains," (a.k.a. Draft Postel, June 1996), the document which led to the
>establishment of the IAHC.
>
>Postel wrote, "The Domain Name System was created to simply name computers
>attached to the Internet. There was no intention that domain names
>identify products or services in any way, or that domain names have any
>relationship to trademarks."
Yes, this is (was) the vain hope of most engineers on the Internet.
Unfortunately, names in a commercial medium have trademark significance,
no matter what the original intent.
=========================================================================
_____________________________________________________________________________
Bonis avibus
Ellen Rony
Director, Alexander Works
21 Juno Road * Tiburon, CA * 94920
Phone: 415/435-5010
Fax: 415/435-5010
Email: erony@marin.k12.ca.us
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