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

[Ed Gerck <egerck@mcg.org.br>]

[I am restricting CCs to the lists]

"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:

Non-profit companies can register a trademark name for any product or service they provide,
irrespective of the price asked for them or the ensuing profit.  This does not depend on the
Internet and supports your findings.  The price can even be zero, not only the profit. Trademark
law does not enquire if the product/service is being sold at a loss, break-even of profit.  That is
for the IRS to decide ;-)

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].

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.

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.

Therefore, "priority of use"  is the issue here -- to protect a service or product name.  Thus,
reversing the table on the trademark/DNS tension, a DNS name that is registered at an Internet
Registry and is operational for a purpose is a strong *timestamped* proof of *first use* of that
very association between  purpose and name which would be required in a trademark dispute
over that name in that jurisdiction (where the Internet Registry is). In other words, DNS name
registration and use has legal trademark precedence to designate the services/products provided
under that DNS in that jurisdiction of DNS registration, even over a latter trademark in the same
class and jurisdiction. Note also that no duplicate second-level names are possible in a TLD, so
DNS registration is also an unambiguous registration for that name in that TLD -- contrary to
trademarks [1]. In this, the gTLDs are not floating in jurisdiction vacuum -- as the UMBRO case showed, the  COM/ORG/NET  TLDs are in the US jurisdiction.

Thus, any DNS second-level name in COM/ORG/NET can be used as part of a timestamped
proof of  "priority of use" in the US, in a potential trademark dispute and even without any
trademark,  when supported by proof of actual use (eg, public delivery of service).

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].  However, by denying to relinquish one's rights when *choosing* a
DNS TLD Registry/Registrar (attention to the word "choosing"), one should be able to
effectively use the fact that DNS names can be by themselves part of a timestamped proof of
priority of use in that TLD jurisdiction -- no trademark required.

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.

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
definition [1].  Please see [*] for the example of a copyright declaration that could well apply
to DNS names. I note that similar declarations are already used throughout the Internet, for
websites for example and for open source software, together with other variants such as
"copyleft".  I also note that some companies such as IBM have chosen to copyright the names
of several of their products and not trademark them -- so the same can be applied to DNS names
that may represent a particular product (as usual on the Internet) and not only to the DNS name
of the company itself.


Cheers,

Ed Gerck

* (c) Copyright Ed Gerck, 1999, all rights reserved. Permission granted to copy
with author and copyright citation. E-mail: egerck@mcg.org.br

[1] A trademark name is not unambiguous, neither for a produt/service nor for its owner, even
in one jurisdiction. It does not have to be original, either. For example,  FORD is not original
and can legally designate several different businesses and products/services in the US, such as
a car manufacturer, a model agency, a consulting group, an acronym  for something else -- or
any number of persons and entities worldwide, legally, as defined in Intellectual Property laws
and agreements.  However, there can be only one FORD.COM on the Internet *and* only
one owner for it -- further, the first use of a DNS name must be and must remain original in
that TLD, worldwide.

[2]  http://wipo2.wipo.int/dns_attachments/rfc3/attach921884283.doc

[3]  http://www.icann.org/comments-mail/comment-ip/msg00003.html

______________________________________________________________________
Dr.rer.nat. E. Gerck                                 egerck@mcg.org.br
  ---  Meta-Certificate Group member -- http://www.mcg.org.br  ---