Re: grandfathering of .us domains?

[Jeff Williams <jwkckid1@ix.netcom.com>]

Brett and all,

Brett Glass wrote:

> At 04:02 PM 5/17/99 +0100, Jeff Williams wrote:
>
>  > FIrst come first serve, should remain the rule as it applies to Domain Names.
>
> First come in what venue?

  The DNS venue.  Or the legacy DNS venue.  Your choice.

> There may be a first to go into business, a first
> to trademark, a first to register, and (if it's a family name) first
> use of the name by a family. All different.

  Agreed.  And if they are not attempting to sell the same type of goods
using that Domain name or TM name there is not TM conflict, unless
one of the other party can show confusion as it is related to TM law.
But ICANN and WIPO don't see it that way, Brett, which was my broader
point, in addition to as it applies to .US ccTLD for purposes of this
discussion...  SO the question remains how can any or most of those
already Domain Names in the .US ccTLD name space be grandfather
given the current ICANN "Accreditation Policy" and the WIPO RFC-3
"Final Report"?  Well the simple answer is that unless you have that
Domain name registered as a TM, and soon, you are likely to stand
the chance of facing a legal challenge, that you may not wish or be able
to afford.  Or, ICANN will simply take it from you!

>
>
> Let's take an example. In a conflict over the name STONE.COM, who would win?
> The Stone Family, which has been doing business as Stone Hardware for 100
> years?

  This will depend if the Stone Family filed a TM and a Domain name of
STONE.COM before anyone else did, in both cases, according to WIPO
and the ICANN.  Not a very reasonable scenario is it?  Or, the Stone Family
can enter in to binding arbitration, another very expensive affair, with all the
other parties claiming or making claims to Stone.com, if the Stone Family
have that Domain name registered and in use.  Or they can register
a new Domain Name of something like Stonehdw.com and inform all of their
current customers of the change.  Yet another rather expensive and unfair
situation should the Stone Family been first to register the original Domain
Name of STONE.COM or STONE.COM.US, for instance.

> The Stone Corporation, which has been making monuments for 40 years?
> STONE.COM, a recent startup that just happened to be the first to register it
> as a domain?
>
> A "first come first serve" policy is slanted against latecomers to the Internet,
> who may have come late by no fault of their own (e.g. by being in a less
> developed country). It also hurts the development of new businesses, which we
> certainly don't want.

  To some extent I agree with your contention here.  This is partly addressed
with the new Trademark classifications that have been provided by law from
the USPTO on "Things Internet" such as a Domain Name, to also be registered
as a Trademark as well.  What is in question is or does this apply to those
that have commercial domains registered under the .US ccTLD?  And,
leaves in question the subject of this thread of that of whether existing
commercial Domain Names commercial or noncommercial under the .US
ccTLD will need or should seek registering a TM in order for them to
continue to retain their Domain Name without the concern of a serious
legal challenge from another commercial party, hence protracting
a potential "Reverse-domain-name-hijack".

> (Already, a new business may be in serious trouble, as the
> name of its stock in trade is almost certainly taken by an existing company --
> probably a competitor.)
>
>  >But is JEFF.COM a word, for example?  No it is not.  It is a "String of
> >characters" or a Domain name perhaps?  Perhaps.  But not a word.
>
> I'd beg to differ. Many people (including me) would assert that names are
> words. My last name, in particular, would have been a valuable commodity
> had I thought to "grab" it several years ago before the "gold rush" on
> the dictionary began. But I cannot use it now, even if I have a company
> whose name contains "Glass." Is this fair?

  It would depend on what you were going to use that potential Domain Name
for.  Is it commercial or noncommercial.  In addition, if non commercial,
it cannot be deemed as "Confusing" to an already existing business with a
previously registered TM.

>
>
> >Same with Ford.com, ect, ect, ect....  Now, Ford is a proper name and
> >as part to a name of a company known as Ford Motor Company.
> >Does Joe Shmoe that registered Ford.com long before Ford Motor Company
> >did have rights to that Domain Name or does the TM holder Ford Motor
> >company have greater rights.  The same will apply in the .US ccTLD
> >name space for many of the same/similar situations...  Are they to be grandfathered
> >"As Is"?  I say yes.  But WIPO will definatly disagree as likely than not,
> >will ICANN.  And this was the essence of my original posts point....
>
> And who gives WIPO or ICANN the authority to yank a company's name out
> from under it?

  The DOC and in particular the NTIA, which is sponsoring this very list has
already given ICANN in part this authority and has solicited WIPO to do a
study, which has now culminated into the WIPO RFC-3 "Final Report" which
may weigh heavily on the answer to your question.

> Or a family's name? (The current system doesn't even allow
> a name to be allocated to more than one party; it's winner-take-all,
> a situation which in general leads to unsatisfactory solutions.)

  Unsatisfactory to whom?  To others that have the same family name
perhaps?  Likely yes this is true.  But TM law, provides for that currently.
However DN policy is a bit fuzzy here if you go outside the box of
"First come First serve".

>
>
> We must face facts. Forming another organization (e.g. ICANN), or delegating
> solutions to a worldwide authority (e.g. WIPO) cannot fix the simple fact that
> the foundation on which the system is built -- i.e. "owning" a word or name
> which is legitimately applicable to more than one party -- is faulty. A
> paradigm that better mirrors the real world is needed.

  Faulty it is to be sure, but that is the way of the real world.  But my concern
is dealing with the subject of this thread in this context and how do we
come up with a acceptable, but not perfect solution.  Do we do so
based on the NTIA's own White Paper?  I say yes.  Has that been done
thus far with respect to WIPO and ICANN?  Most would say no.  I
would like to see the NTIA insist on this to be done, however thus far it has
not.  And I also suspect that with respect to the .US ccTLD and any or all
of the current DN's that are currently registered within that name space,
it will not be applied either.  Food for thought perhaps?   You be the judge.

>
>
> --Brett Glass

Regards,

--
Jeffrey A. Williams
CEO/DIR. Internet Network Eng/SR. Java/CORBA Development Eng.
Information Network Eng. Group. INEG. INC.
E-Mail jwkckid1@ix.netcom.com
Contact Number:  972-447-1894
Address: 5 East Kirkwood Blvd. Grapevine Texas 75208