WIPO, TLDs and Trademarks

Michael Froomkin writes "I am the public interests representative on a World Intellectual Property Group (WIPO) experts group panel advising on rules to sort out conflicts between domain names and trademarks. I have come to believe that WIPO's Interim Report, RFC 3, unfairly stacks the deck for large, corporate, trademark holders, and against small firms, consumers, and non-trademark holders. Please see A Critique of WIPO's RFC 3 for full details. It's long, and it is not pretty. "

No Subject Given

[Anonymous Coward]

What the hell does anyone expect? WIPO is pure larceny from the get-go. Massive appropration of the public domain and our common cultural and intellectual heritage on scale unprecendented in history. Just for starters. Dr. Mike needs to stick his head out of that ivory tower. The is the Golden Rule at work. "Them that has the gold makes the rules." Why am I not worried, though? Because of the Iron Rule. "Them that makes the rules, gets the gold." The parasite class that profits from the old ways of doing things is ancient history, deader than the dinosaurs. This is a last dying gasp of an attempt to preserve the illusion that they are in control. I advise anyone who gets one of these demand letters the professor refers to, to consider that asswipe is wasteful of our natural resources and that suitable alternatives should be employed whenever possible.

Sad commentary on awareness.

[Anonymous Coward]

Sifting through the chronic prattle of "me first!"
and "huh?" I am saddened to see that few
understand the vital importance of the issue.
So I'll try to make it simple for the level of
readership evident here.

The net is going to get fucked. You seem to
ignorant to care, at least not before it's too late.

[e-mail]

A New Domain Order

[Anders Andersson]

You are proposing a whole new trademark registry, besides those already existing in most countries. While this may be a good idea in itself, it does very little to solve the problem at hand, that of making lawyers and legislators understand that the DNS goes beyond mere commercial marketing. Giving them an entire TLD to play with could even be seen as admission on your (our) part that trademarks do have a place in the namespace.

In my opinion, if trademarks belong in the DNS at all, it's within the domains of those government agencies registering them in the first place. Thus, the U.S. PTO [uspto.gov] could set up TM.USPTO.GOV as a placeholder for all trademarks registered there [uspto.gov], and it would be up to them to devise a naming scheme that would allow every registered trademark to map to a valid and unique subdomain name. I wish them good luck with pictorial trademarks.

As for non-registered trademarks, establishing a registry in the form of a domain name (whether TLD or any other domain) kind of contradicts the idea of allowing non-registered trademarks in the first place.

We don't have to wait for the WIPO or any court to rule that the DNS should accomodate their view on trademarks before we set up a new system. In fact, we are well-advised to make preparations in advance, setting up an organization, devising new rules, and decide how to make an emergency transition in case a legal warhead happens to hit the present InterNIC. I suppose you don't need government authorization to join others in building a bomb shelter or stockpiling canned food?

Don't repeat AlterNIC's mistake however, that of polluting the existing namespace in order to seize control of InterNIC's web address [internic.net] (according to what I've heard, the guy behind AlterNIC [alternic.net] ended up in jail for that [news.com], thanks to the InterNIC having high-ranking friends [nic.mil] not wanting to see the integrity of .MIL being corrupted in that or any other way).

If anybody wants to test an alternate domain hierarchy, keep it well away from the current one. That goes for intellectual property lawyers too.

Suprised?

[willey]

This is what you get when large government-ish organizations filled to the brim with non-technical politicos have the opportunity to pass laws and make policy. Is anyone suprised? I really wasn't aware that there was a problem, anyhow. DNS needs to go anyhow. It should be replaced by strong cooperative protocols, NOT centralized or (even worse) nationalized structures. The people better come up with a solution before the governments do.

Mark

Myopic Bureaucrats...

[sjames]

Agreed 100% just change .tm to any arbitrary and unused TLD. I woul;d take it 1 step further, and require a registrant in the trademarked domain to sign an agreement that NO domain name in a non-commercial TLD infringes on their TM and that they will refrain from any legal actions to the contrary.

That may not be a total solution, but it at least removes the majority of individuals from the expensive arena of trademark disputes. Let the million dollar dream teams fight amongst themselves and leave everyone else alone.

To truly solve the problem though, we must also adress the problem of small businesses having their domain names hijacked by large businesses.

The root of that problem is not so much based in DNS or TLDs as it is in trademark law itself. Essentially, trademarks were waved into existance without providing a reasonable means to avoid accidental infringement. Unlike other (though not all, unfortunatly) areas of law, there is no set of reasonable behaviours that will certainly avoid trouble in the area of trademarks. Pick any arbitrary name. Now, without investing great sums of money (which will not BTW, provide guarenteed results anyway) determine if it is trademarked. To go a step further, choose an arbitrary string of letters. That seems pretty safe. Are you SURE that it's not trademarked in anotrher country? It could be a word in some language (unless it's qqqqqqq or something). That word might be trademarked (or equivilant).

Of course, I have a problem with any legal liability that cannot be avoided by either doing a DEFINED right thing or not doing a DEFINED wrong thing.

eDNS - it has already happen

[motyl]

Please visit http://www.edns.net/ [edns.net]

The alternative DNS system is working since over 2 years.

However it's spreading seems to have stopped. The present system seems to be good enough for most.

You really need not read more than this:

[thinker]

Executive Summary

Domain names are the human-friendly form of
Internet addresses. While designed to serve the
function of enabling users to locate computers in
an easy manner, domain names have acquired a
further significance as business identifiers and,
as such, have come into conflict with the system
ofbusiness identifiers that existed before the
arrival of the Internet and that are protected by
intellectual property rights.

WIPO RFC3 Executive Summary [wipo.int]

Translation: Looks like this Internet thing is
going to make us a lot of money. However, the
rules of the game are too simple, making it
difficult for us to manipulate them

Our lawyers must correct this oversight in the
usual manner, by lobbying governments to hold
summits (making the appearance of officiality),
and out of those drafting labyrinthine documents,
incomprehensible to all but them, ensuring the
continued necessity of their employ and the
employ of future generations of lawyers.

Only when we are satisified that our
recommendations are incomprehensible to both the
politicians and their constituents (and therefore
easily manipulated and extensible by us) will
they become law.

Go to it boys and girls!
---------------------------------
"The Internet interprets censorship as damage,

TM = Turkmenistan

[hta]

TM is the ISO country code for Turkmenistan,
and is therefore allocated by IANA for that
country to decide what to do with.

Rumours say that some time ago, the goverment
handed control of the .TM domain to a company that
sells names (see http://www.nic.tm/); after a while the government took rather drastic action wrt some of the sites registered which were rather incompatible with the views of the Islamic government of Turkmenistan.

The .tm domain is now closed for new registrations.

my letter to [e-mail]

[grahammm]

Trademarks are good, but only within the area of trade of the owner.

Thus I would expect McDonalds the fast food chain to legitimately complain about a site www.mcdonalds.com which provides recipes for hamburgers. But I think they should have no complaint about a site www.mcdonalds.com which provides details on the history of the Scottish McDonald clan.

In other words, for there to be a trademark infringement, I think there not only has to be a name clash but also a clash in subject matter.

Oops. I really need to be more careful...

[trims]

.TM is indeed taken (as the link for Frankin (www.law.tm) indicates). The argument is still valid, though, we just need to pick another TLD name.

-Erik

Myopic Bureaucrats...

[trims]

As I've stated in previous posts, the whole problem of DNS and trademark/IP disputes arises from the abuse of the DNS system. DNS was NOT DESIGNED and is ILL-SUITED to serve as an identification system for concepts larger than simple number-avoidance (ie it solves the problem of addressing machines by IP number only).

The solution to the current problem is two-fold:

1. Most importantly, a new schema for mapping concepts to machines is needed. The smart-browsing functions of Netscape 4.5 and 5, and IE 5 are a large step in that direction. Yahoo-like search engines/portals also are along the appropriate lines. (see below for more on this).
2. Creation of an exclusiveTLD that allows only those with a registred trademark (NOT a Service Mark, or anything else but a TradeMark) to register. I just looked, and nothing is assigned the .TM domain (ie, you could get McDonalds.TM ).

The first solution is a technical one, and will require some forethought and evolution. It is in fact currently underway, as the flaws in the existing DNS-naming solution are evident (to everyone of course except the Bureaucrats, lawyers, and marketing idiots). This system needs to be heavily encouraged, as it will ultimately solve the problem we are having. This is the long-term solution, and should receive all due priority and attention (particularly at the IETF-level).

The second proposal is a band-aid that should work sufficiently long until the first (technical) solution is in place. It's a stop-gap measure.

A couple of things about the second proposal: Once the .TM domain is created, and a formal dispute-resolution policy is in place for that domain (I'm not saying this will be easy, but it's certainly much easier implimenting a policy for a currently-vacant TLD than trying to retro-fit one onto the existing TLD structure), several things must happen:

• All othe domains must be freed from trademark/IP suits. The first registrant of that domain in the non-TM space owns the domain. Period. End of discussion.
• DNS-registration agencies must prohibit organizations from registering the identical name in multiple TLDs to prevent name-space pollution and gratuitous squatting. Thus, if you happen to one Foo.com, you can't register foo.org, foo.co.uk, or other such names. I recognize that this will be difficult across international registration agencies, but it's trivially enforcable within a single agency's perview.
• People registering a TradeMark in the .TM domain must provide documentation of an internationally-recognized trademark in order to be given that domain. ownership of a .TM domain precludes ownership of the identical name in other TLDs (once again, to prevent name-space squatting).
• The .TM domain is designed to be the "Official Recognition" of the owner's trademark. As such, browser and search engines should be encouraged to search for under that domain first when attempting to resolve ambiguous names. A cannonical example is this: Netscape has (for at least 3 releases) attempted to resolve the name "foo" input into the Location URL first as a local machine named "foo", then as a machine named "www.foo.com". Netscape (and other browser manufactures) should be officially encourages (probably by RFC throught the IETF) to change this behavior such that it searches for "www.foo.TM" first. This provides a mechanism for the protection of trademark owner's "fame" and such associate with owning a trademark.
• The establishment of the .TM domain should come with an international agent responsible for administering such a domain, and who has final say in arbitration. This most likely requires a formal international treaty to be signed by nations; however, such is necessary to give the proposal teeth. As part of the treaty, the TM-administering agency should be given absolute power to resolve disputes - suing in a local national court to overturn an unfavorable ruling should be explicity denied.
• The .TM domain is for use by TradeMark owners ONLY. Other forms of IP are not accomodated, and should not be allowed. While Service Marks are disputably part of this, I would expresively exclude them for the following reasons: (1) most service marks are longer phrases, which are unsuitable for domains anyway (2) Service Marks are useful mostly in advertising, and often are only recognizable as a graphical image, which does not translate to the text-only of a TLD (3) Service Marks do not have the wide recognition that TradeMarks generally do.

The proposed solution by the WIPO is typical of a large bureaucratic committee: it proposes an ill-defined, nebulous system heavy on bureaucracy and favorable to the well-financed. Throw it out.

-Erik

Myopic Bureaucrats...Doomed to fail.

[ralphclark]

There is absolutely NOTHING to worry about. Bear with me here.

What you say makes a lot of sense, as do the remarks by many people that DNS is no good really anyway.

On the face of it, it does appear as if public ownership of the internet is threatened as greedy corporations and power-hungry governments take over. But it is doomed to fail just as attempts at external censorship are doomed.

Many people have heard it said that the Internet treats censorship as damage, and routes around it.
This is precisely because the protocols on which it is based were designed (here I'm talking specifically about IP, TCP and UDP) to be adaptable so the old ARPANET network could survive partial destruction from, say, a nuclear strike.

But the adaptability of those protocols also makes it possible to write any higher level protocol you like to sit on top of it. For example, IP tunnelling for virtual private networking: encrypted IP sitting on top of IP.

My point is, if the people don't like what happens to DNS, and even if the IETF is disbanded or declawed or otherwise rendered useless, then the _people_ will devise some other means of translating IP addresses, in exactly the same way that a whole new universe of open source software has come into being. Somebody will write a new address translation protocol and thousands of servers around the world will be set up (initially by enthusiasts alone) to answer lookup requests coded in that protocol. Before long it will be the dominant name resolution protocol and DNS will be obsolete.

The genie is already out of the bottle and those assholes on the WIPO will soon find it's too late to stop us now. Power to the people! Heh Heh Heh!

hrm

[ldspartan]

I wonder what this will mean when the new set of top-level domains come into being.

and it looks like I'm first :)

hrm

[ldspartan]

but the other function of domain names is memory.
I want to be able to type in slashdot.org, and not have to fight with some poorly designed automated bookmark system

You're right (maybe TRM is better), but..

[TA]

I agree completely, particularly the part about getting all claims to trademarks away from the other top-level domains.
As for the .TM already occupied, what about .TRM?
However, there's still the problem about trademarks not being 'unique', take for example 'Apple' which is a valid trademark for
a certain computer company as well as for The Beatles' record company (still alive and well as far as I know), and others too.
How to resolve that? You would need a whole jungle of next-level domains to sort it out.
www.apple.music.trm, www.apple.comp.trm,...
This is, of course, a problem exisisting already and not caused by your proposal, but not solved by it either.

Myopic Bureaucrats...

[Ron Bennett]

First off .TM already exists - I know since I own SEX.TM and CANNABIS.TM domains. However the registry while still active isn't accepting any new applications at the moment due to internal squabbles on what domain names should be considered obscene.

Secondly, trademarks and service marks are very similar and to say one has precidence over another is extremely erronous. There's other marks also protected that are neither trademarks nor service marks such as trade names. See the U.S. PTO http://www.uspto.gov/ website for details and links to trademark resources.

Thirdly, marks (trademarks, service marks, etc) are territorial and there's no true agreement on international marks though a few like Coca Cola are recognized by most countries of the world, but I must emphasize there's no such thing as an international trademark - at least not that I'm aware of. Copyrights tend to be globally recognized, but not marks.

Fourth, it's quite common for the exact same mark to be registered to different companies in the same country since trademarks are registered in classes (catagories). So a game company like EPIX could have a valid registered mark and so could an internet company called EPIX but in a different class. And this is just a simple example - since marks can be registered at the state level or not even at all and yet be legally protected to some degree.

While people may disgree about DNS's role, the reality is that DNS has become like real estate and so now the trick is to find a compremise that protects business while also protecting individuals.

Personally, I feel that current patent law for the most part is adequate and the domain registries should generally stay out of these disputes and only terminate/transfer domain names when ordered by the courts, etc. In any event the WIPO should *NOT* be involved due to their bias towards big business over small business and individuals.

Ron Bennett

Summary please

[choo]

To Michael Froomkim: Can you do a summary? Your critique is too long and wordy (for me) to read.

a conjecture...

[LadyNymphaea]

Let's say I own a trademark for something in the United States, but not in another country. How does this get settled then, especially if the domain name I'm using is in the .com, .net, .org, or especially in the .us domain? (if .us ever gets used for things other than state and local governments-which I doubt, but should really be done.)

I suppose that's what WIPO is for but they've never done anything for the small-time trademark owner...

Oops. I really need to be more careful...

[Skapare]

The TLD I've seen proposed for nearly 3 years now is .TMK and then you might also do service marks separately with .SMK .

Another Important Item to Comment On

[gwachob]

Hey folks, if you want to see where things might go, check out Prof. Froomkin's comments. They are rather dense and very long, but if you want to know where the battle lines are drawn, check it out.

Its also important to realize that this is a "recommendation" to be handed to ICANN [icann.org].

ICANN has commissioned a report from the Berkman Center for Internet and Society [harvard.edu] (at Harvard) on representation in cyberspace [harvard.edu]. There are various ways to comment --- its important that everyone at least takes a look!