Question: How can we prevent trademarks from trumping all other considerations in assigning domain names? How would you respond to a proposal to create a .tm domain to be used by trademark holders, and to revert to the original first come, first served policy for assigning .com, .net, and .org domains?

Nominee Replies

Lawrence Lessig - posted on 2000-10-09 20:31:02 Trademark policy should not rule ICANN. Let the law catch up to the net, and then we'll worry about trademarks. Barbara Simons - posted on 2000-10-09 18:40:56 I don't believe that we can force all trademark holders to function only in one prespecified TLD. Instead, I would like to see the impact of trademark on domain names limited, so that only activities that clearly infringe are prohibited. I agree with Karl that the punishment should be an order that the infringing behavior stop, rather than the loss of the domain name or, even worse, a fine or jail - as is the case with the marvelously named Anti-Cybersquatting Protection Act. Removal of the domain name should be the last resort, not the first. Lyman Chapin - posted on 2000-10-09 17:00:35 Your first question - how can we prevent trademarks from trumping all other considerations in assigning domain names - has already been answered for the .com domain; we can't, because the overwhelming popular association of .com with Internet commerce means that companies defending trademarks as domain names in .com will almost always win in court. For better or worse, .tm is already the ccTLD of Turkmenistan. There is no easy answer, which is why getting ICANN right is so important. Emerson Tiller, J.D., Ph.D. - posted on 2000-10-09 16:03:33 As I have mentioned elsewhere, better protections for free speech (including protest speech) need to be hardwired into the UDRP (domain name dispute resolution policy). First come, first serve is fine for second level domains (stuff before the dot). With respect to Top Level Domains (the new .store, .travel, or .whatever), I suggest an auction system to let the market decide both the value (how much someone should pay for the TLD) and allocation (who should get the TLD -- high bidder). This presupposes an unlimited number of TLDs being offered by ICANN to the public, which has not yet occurred. Harris Miller - posted on 2000-10-09 11:39:01 I do not support the proposal. Karl Auerbach - posted on 2000-10-09 09:11:15 First of all, trademarks and domain names don't exist in a vacuum - although the UDRP seems to believe that they do. Rather, we must look at (and the UDRP must be amended to look at) the actual use to which a domain name is put. Only if actual use is, by established legal measures, an infringement of a mark should any corrective actions be triggered. And such corrective actions should be limited to merely ordering that the infringing use cease not that the domain name be expropriated. I don't think .tm will work - there are too many fuzzy areas that exist as a label on a product and service evolves into a mark. If you want to limit it to marks that are registered with some governmental authority then you will have to also decide who gets .tm when there are multiple holders of in distinct business areas. (Besides .tm is already a ccTLD.)