Re: [IFWP] Market Structure Failure

[Jay Fenello <Jay@Iperdome.com>]

This exchange highlights the problems existing
between Trademarks and Domain Names, and it frames
the debate over adding new gTLDs.  


On one side of this debate, you have the Trademark
community.

In their attempt to completely protect a Trademark
from any infringement, real or imagined, large 
trademark owners have been attempting to "lock 
up" their name in every conceivable permutation.  

Continuing the example used below:
	pizzahut.com   pizzahut.org   pizzahut.net
	pizzahut.to    pizzahut.nu    pizzahut.co.jp
	pizza-hut.com  pizza-hut.org  pizza-hut.net
	pizza-hut.to   pizza-hut.nu   pizza-hut.co.jp
	etc.           etc.           etc.

And if there were 10 permutations to a trademark 
(i.e. pizzahut, pizza-hut, etc.), and there were
250 or so TLDs, then these large trademark owners
would have to register 2500 domain names to 
protect their mark.

Continuing this line of reasoning to the absurd,
if there were 100 sub-domains per TLD that *might*
be confusing, these same interests would want to
"lock up" those names as well.  For example:
	pizzahut.restaurant.com   pizzahut.food.com  
	pizza-hut.restaurant.com  pizza-hut.food.com  
	pizzahut.restaurant.to    pizzahut.food.to  
	pizza-hut.restaurant.to   pizza-hut.food.to  

Doing the math, if there were 10 permutations, 
in 100 sub-domains, in 250 TLDs, then these large 
trademark owners would have to register 250,000 
domain names to protect their mark!!!

Under this scenario, every new TLD would require a 
trademark owner to register 1,000 new domain names, 
with an ongoing commitment to monitor another name 
space.

Is it any wonder that they do not want any more
TLDS????


On the other side of this debate, you have those
who look at the world in more pragmatic terms (yes,
these *are* biased opinions :-).  You have those 
who fear the process described above, in effect, 
has negative implications on freedom of speech 

and control of language issues.   

You also have those who realize that this process 
is NOT consistent with the way Trademarks exist in 
the real world.  For example, Trademark owners today 
accept multiple, similar (but non confusing) uses for 
their trademarks!  For example, Acme Tires, Acme 
Rubber, Acme Chemicals, etc.  They even accept 
similar *and* confusing marks, as long as they
exist in different jurisdictions.


This frames the meta-issue that underlies the whole 
DNS fiasco.  Both sides are driven by their respective 
realities, and both sides are correct.  

For example, those who want to expand the name space 
believe that adding new gTLDs will provide additional 
diversity that will *diminish* the battles over good 
domain names.  And they are correct, of course, unless 
the trademark interests simply purchase and/or regulate 
these new domain names to protect their marks.


IMHO, the world would be a better place if we could
all agree that Trademarks and Domain Names interface
as an integrated whole, *not* based on each level of 
the domain name.  In other words, the entire domain 
name can be a trademark, but a trademark is not 
automatically a domain name.  

For example, Amazon.com is a domain name as well as 
a trademark.  IBM, a trademark, is not automatically 
a domain name like IBM.TLD, nor is IBM.SLD.TLD, nor 
is IBM.3LD.SLD.TLD, etc.  Normal trademark rules 
should apply to qualifying the latter.  

Finally, I also suggest that we embrace market 
mechanisms to allocate desirable domain names, 
not regulation.  

Respectfully,

Jay Fenello
President, Iperdome, Inc.  
404-943-0524  http://www.iperdome.com


At 2/19/99, 02:48 PM, Martin B. Schwimmer wrote:
>>>Also, in response to Martin Schwimmer:
>>>
>>>>In other words, if you added .inc, .ltd., .firm, .shop and .store
>>>>tomorrow, then anonymous folks could tomorrow register ebay.inc,
>>>>ebay.ltd, ebay.firm, ebay.shop and ebay.store, all of which, in my
>>>>humble but professional opinion, are likely to create confusion with
>>>>our friends over at ebay.com.
>>>
>>>This seems to be a reasonable concern, given that there is already
>>>quite a bit of registration of companies in ccTLDs.  Wouldn't the
>>>companies who are interested in having those names in all (or even
>>>most) TLDs pursue the same avenues they are pursuing in the existing
>>>gTLDs?
>>>
>>>--gregbo
>>
>If I understand your question correctly:
>
> TM owners are utilizing services like netnames or namestake to obtain as
>many ccTLD versions of their TMs as they can reasonably afford, although it
>adds up - especially since a company may need to acquire several names in a
>particular ccTLD (because of reserved second level DNs (i.e. .co.jp).  But
>that's just for one trademark.  Many companies have more than one trademark
>or trading name they may wish to protect.  And if the company's trademark
>consists of two words and they have to worry about variants
>(pizzahut.co.jp, pizza-hut.co.jp, pizzahut.jp, pizza-hut.jp) a block-out
>strategy becomes economically impossible for all but the largest companies.
> (note the irony that an original appeal of a gTLD was that you only needed
>one name and anybody in the world could get in touch with you).
>
>So if there was a huge number of undifferentiated gTLDS requiring
>registration of pizzahut.firm, pizza-hut.firm, etc., well, let's put it one
>way.  Pizza Hut would likely oppose such a scenario and you couldn't
>criticize them for not putting ORSC's interests first.  (p.s. The views
>expressed herein are not necessarily those of Pizza Hut, which was the
>first well known two word trademark I could think of.  When in New York,
>you may wish to try pizza at John's, with locations on Bleeker Street in
>the Village and one on the West Side off Columbus).
>