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[Comment-Ip] RE: Copyright, and Re: Status: Trademarks, TLDs, and the domain name system.

> -----Original Message-----
> [mailto:owner-domain-policy@open-rsc.org]On Behalf Of Ed Gerck
> Sent: Saturday, May 15, 1999 8:31 PM
> "Roeland M.J. Meyer" wrote:
> >  I have, this week, been made aware of information that 
> non-commercial names are, under some cases, ALSO eligable for 
> trademark protection equivalent to commercial marks, I think we 
> have found a mechanism to ALSO protect non-profit TLDs. However, 
> it appears to be not quite as straight-forward as the commercial 
> use and further research is required, regarding the detailed 
> mechanisms involved.
> [snip]
> Roeland and all:


> However, any trademark name is granted only for a specific 
> jurisdiction, class and time, while
> a DNS name is valid worldwide, for any content and for 
> indeterminate time. Obviously, there
> is a tension between these two naming systems when seen from the 
> trademark reference
> frame  -- but *not* when seen from the DNS reference frame.  In 
> other words, a DNS
> *always* resolves to a unique site and owner worldwide but a 
> trademark does not always
> resolve to a unique product and owner worldwide or even in the 
> same country [1].

Yes, well there is another part to this, that is chartered TLDs. One of the other things that came out of that list discussion is that part of the process of trademarking a TLD is, perforce, publishing an operating charter for the TLD. As you may realize, there are scoping issues therein.

> Thus, how can non-profit companies protect their name in a DNS 
> for any TLD? In the same
> *two* manners that they can protect their name elsewhere  -- 
> either by proving first *use* in
> commerce  (where neither profit nor price nor claiming it is the 
> metric, but providing it) or by
> showing a valid trademark for that jurisdiction and class.

Your discussion is based on an assumption that the TLD isn't initially trademarked. The operational plan I envision is that a trademark registration be presented in order to register the TLD in the first place, thus obviating the need  for the logic you present here. The intent is for the root registry to avoid court hours as much as possible. If the TLD is an already registered mark then reverse hi-jacking never will be an issue. If someone wants to challenge the mark then they can use procedures defined by the USPTO. The root-registry will not become involved until AFTER that is all done with and a court order is presented. In the mean time, the root registry kicks back and watches the fight (they might sell tickets <grin>). But, they are NOT a participant. Note that I used the term "license". Down in the next layer of detail, I see the TLD/mark holder licensing/contracting the root registry to point to the TLD. If anyone has a problem with that then they must "discuss" it with the TLD owner and NOT the root registry. Counter to NSI practice, the default behaviour, in all conflicts, MUST be to support the status quo, unless ordered otherwise by a court of competent jurisdiction..

> Which manner is "better"?
> This depends on several factors, including cost, but one thing is 
> certain. Where the first manner
> is denied by facts the second cannot prevail --  since it is a 
> fundamental tenet of trademark law
> that ownership of an inherently distinctive mark, such as in a 
> TLD, is governed by priority of use.

Yes, and priority of use, in the case in mind, involves strictly US jurisdiction. "Josef's Bagle shop", in south Frozentusch Siberia, had WEB bagels 10 years ago, they can not then challenge the chartered and trademarked WEB TLD with any credibility, under US law. They might file a challenge, but the root registry doesn't have to do a thing until a valid court order appears on the door step. A TRO can even be ignored, with cause, if not issued from the proper jurisdiction.

[case in point, a municiple TRO issued against a federally registered trademark has no standing. However, the root registry had better be very sure of its standing before ignoring court orders.]

> As a side issue, "reverse domain name hijacking" [2] -- where a 
> trademark owner would
> abusively trademark a DNS name *after* that name is used in 
> commerce (for profit or not) and
> then challenge that DNS in a dispute in order to "hijack" it -- 
> is not a serious threat though it may
> appear troublesome for an Internet user that suddenly receives a 
> "cease and desist" letter in
> legalese, from an attacker.  Unless, of course, unproven claims 
> of trademark collision could have
> the power to put legally defined DNS domains "on hold" and force 
> the defender to pay an advance
> fee of some US $ 6,000 dollars just to defend his rights *per 
> attack*  -- as WIPO suggests to
> ICANN for the gTLDs [3].

As I stated earlier, this case would not come up at all if the TLD were already registered with USPTO. Counter evidence would be the trademark registration certificate. The  "cease and desist" letter would be checked against the on-file documents then summarily filed and recycled after 5 years. Nothing less than a valid court order, from competent jurisdiction, would be acknowledged.

> In summary, I argue that name protection for a second-level DNS 
> in a TLD is *easier* without
> a trademark when compared to name usage in media other than the 
> Internet, since DNS names
> are unambiguous and timestamped for each TLD. Thus, trademark 
> protection may be *less*
> necessary on the Internet in general (even for non-profit 
> companies), contrary to some current
> opinions.

Theoretically, yes it may. However, from a practical operational stand-point, at least initially, it would behoove the root registry to have a copy of the trademark certificate, plus a "publication rights" license/contract, issued by the trademark holder, on file and ready to present to the legal folks. This one thing will save a LOT of time and aggrivation, on part of the root registry. In the first few years of root registry operations, I see a lot of challenge attempts, while folks explore the laws' limits wrt TLDs.

> Additionally but not least, I suggest that Internet users could 
> rely on copyright protection in
> order to declare their worldwide rights over their DNS, special 
> designations, original text or
> even original  compilations -- without cost and jurisdiction 
> limitations. For copyright, the basic
> tenet is originality and no one can deny that for a DNS name in a 
> TLD -- it is original  by

According to current treaties, copyrights, unless explicitly stated otherwise, is inherent in any work, regardless of the media it is published in. Copyright is assumed to exist. The extra step is unnecessary, or should I say that it is implicit in the act of publication?

[Note: I am NOT a Lawyer (IANAL) my legal opinion has NO STANDING in
court, as I am NOT an officer of the court. No statement made herein
constitutes legal advice under ANY circumstances. The reader is directed
to seek the advice of competent legal council in all matters of law.]
Roeland M.J. Meyer
Morgan Hill Software Company, Inc.
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