[Membership] Re: TRADEMARKS, BRAND NAMES & DOMAIN NAMING, fwd

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

List:

FYI and comments. It unites the issues I commented in reference to WIPO
and ICANN. At the end, presents the identification question, as well as
summarizes the tentative solutions to the ambigous and obscure instances
of such identification as given respectively in the WIPO and ICANN
responses.

Thanks -- Ed

----------------------------------------------------------------------
Subject:  Re: TRADEMARKS, BRAND NAMES & DOMAIN NAMING
Date:     Sun, 07 Mar 1999 21:13:48 -0800
From:     Ed Gerck <egerck@mcg.org.br>
To:       Boylan P <P.Boylan@city.ac.uk>
CC:       e-carm@c3po.kc-inc.net


Boylan P wrote:
> 
> In response to Ed Gerck's paper:
> 
> An international agreement is clearly needed, and WIPO (World Intellectual
> Property Organisation) to which most countries in the world below and
> which manages most current international copyright conventions, seems
> the only realistic forum within which to negotiate one.

Boylan:

I agree with this first paragraph. My paper to WIPO [Ger99a] questioned
"how" should that be done, not "if".

That is why the paper [Ger99a] aimed first at the technical
qualification of Internet Domain Names -- what are they? Of course, if
Internet Domain Names do not obey the properties that trademarks must
obey by the very agreements enforced by WIPO member States, then
comparing both "names" is like comparing apples with oranges. 

As I argued over eight points in my exposition to WIPO [Ger99a],
Internet Domain Names do not technically qualify to be trademarks under
WIPO's own terms -- so, they can neither be compared and treated as such
nor should they be regulated by a trademark agreement. However, as I
also argued in the conclusions of [Ger99a], Internet Domain Names could
be endowed with additional qualities that could make this *new* type of
object fall within the category governed by trademark agreements --
which should IMO address the concerns of WIPO members and the US
Government as presented by NTIA.

On another direction, my exposition to ICANN [Ger99b] used actual
trademark infringement data supplied by Bell Atlantic and DNS
registration data supplied by NSI. Using only their data, Bell Atlantic
had previously requested ICANN to impose regulations with less privacy
for DNS registrations -- in order to provide more security for trademark
owners. They cited near 600 infringement cases within nine months. 
However, using also NSI's data I pointed out that Bell Atlantic's
alleged 600 infringement cases for their famous mark "BELL" accounted
only for 0.04% of the Internet Domain Names registered by NSI in the
same period. Since privacy is a long term asset and security is a short
term goal [Ger98a], encroaching on the privacy of 99.96% of all users is
thus hardly justifiable in this case. The exposition at [Ger99b] cites
other objections to the call for more regulation and less privacy in
Internet Domain Name registration.

However, there IMO a much more serious issue that has been hardly
mentioned in the whole debate of DNS-trademark issue -- and that has its
roots in what you comment at the end of your posting. First, however,
let me comment on your next paragraphs.

> 
> A number of legal jurisdictions (including British courts) have already
> made it clear that they will support brand name and trade mark owners
> against others attempting to register or use these as domain names, either
> in a misleading way for purposes of trade, or in order to hold the
> trademark owner hostage (as happened in the early days of domain
> registration).  

Agreed -- which shows that we do not need so much new Internet-specific
regulations in order to support what is already clear. Ignoring this
fact brings about two perils:

(i) That any new law or agreement may clash with the current ones, since
they will need to address the same issues -- already clear enough to
courts.
To be effective, legislation has to be a clear and consistent corpus --
redundancy, in law, is not beneficial.

(ii) That regulation should not be casuistic -- and, rules should be as
technologically neutral as possible, specially in a digital society that
develops capability exponentially according to Moore's law.

So, the question here is not only what are the new problems we need to
solve -- but, which does the already existing corpus of regulation
cannot handle?

> In contrast with this view, it is hard to see what are the
> benefits of allowing anyone who feels like to register and use a
> well-established and respected name in a misleading or perhaps openly
> criminal way.

The benefits are none -- however, the answer is already provided by your
very sentence. If anyone anyone feels like registering and using a
well-established and respected name in an openly criminal way ... then
that way is already openly criminal and subject to criminal laws.

So, the very fact that we can *identify* the use as criminal or abusive
will allow such laws to be applied, without any need for further
regulation.

In contrast with this view, I may say in a paraphrase, it is hard to see
what are the benefits of imposing a Damocles' sword and expensive
litigation [Fro99], together with less privacy [Ger99b], to 99.96% of
all users that are trademark-respecting in the name of 0.04% of
miscreants -- which are anyway hidden by false identities and proxies as
well-known and hardly distinguishable even in family circles [Boh97].

> I understand and sympathise with the US tradition of freedom of speech,
> but don't see that the American Constitution was intended to protect a
> fraudster who seeks to make money out of the trust that citizen's may have
> in a well-established and respected name. If anyone can register an
> e-commerce site under a domain name that uses a major brand name or
> perhaps even an absolutely identical name to that of a well-established
> and -respected business but in a different top level domain (e.g.
> as Amazon.net, or with the future expansion of top level domains, perhaps
> even Amazon.books) the opportunity for fraud would be very great.

This is IMO the leading misconception here -- that by typing an Internet
Domain Name you go to the destination that *you think* is connected with
that name. This is not true on several counts, argued in [Ger99a].

The most important reason against this is technical and has to with what
might be called a "referential theory of meaning" -- which looks logical
and intuitive but which is not true, as proved by Frege (a German
mathematician) in 1910. This is dealt with in [Ger99a] in item (VIII). 

For example, if I type the Domain Name  "www.gifts.com" -- what do they
sell? 

Presents -- as the English word "gift"? No, perhaps they distribute
poison as the German word for it (and pronunciation) is the same. Or
perhaps, they simply count all visitor's URLs (which they can
automatically collect upon entry) as the "General Insurrection on
Free-Trade Support" movement -- whatever that name may mean to them. As
another example, if an Internet Domain Name is www.amazon.com -- do they
sell trips to the Amazon?

> 
> On a different point in relation to Ed Gerck's comments, surely the use of
> trademarks for legitimate purposes WITHIN e.g. an on-line shopping
> catalogue is completely different?  Manufacturers etc. owning brand names
> and trademarks have always accepted that retailers will need to display
> brand names and trademarks prominently within retail stores and related
> print and TV advertising, and for obvious reasons such use has never been
> regarded as unlawful breaches of trademark etc. law.
> 
> E.g. Hoover has always tried to protect their trade name from becoming a
> "generic" term for any old vacuum cleaner, but certainly don't try to ban
> retailers from telling customers that they are selling a genuine "Hoover"
> brand cleaner, not some other maker's vacuum cleaner.

This is, IMO, the main issue here -- and, a most forgotten one. 

As WIPO RFC3 declares, "The exclusive right to the use of the mark
enables the owner to prevent others from misleading consumers into
wrongly associating products with an enterprise from which they do not
originate."

This is well and fine and, indeed, if Internet Domain Names would be
business identifiers then they should allow customers to associate
products with a business. But, they do not. Not only Internet Domain
Names can be faked, hijacked, hacked, etc. but they are worth nothing in
terms of site identification or even routing identification without some
form of *added* authentication -- such as a digital certificate.
Further, even if the site XYZ.com is authenticated to belong to ABC Corp
-- what are the site's contents? What does it sell?

At the end, if the site sells ABC's products without a valid license
then it may be closed down very effectively just by applying the current
laws and regulations. Or, if it uses a digital certificate with the
legal name of "ABC Corp." -- even if it sells other brands. 

But, as I argue, all to the extent of judicial protection granted by
existing business names and trademarks. And, without any needed
extension of the complex trademark rules over a non-trademark system
such as Internet Domain Names -- which, as I show in [Ger99], are on the
same trust
level as a cloud mirage on the Sahara when used as business identifiers.


However, how about the twilight zone between Internet Domain Names and
trademarks? Which may not all have a clear-cut answer for all parties
involved -- as this very discussion proves. However, can we disambiguate
these concepts in each one's own terms and apply them in a general
framework?

This question can be rephrased as: how can we *identify* what is a
trademark and what is an Internet Domain Name?

In this form, I recognize it as a problem usually found in networks of
networks -- such as the Internet.  Where we need a non self-referential
concept of identification -- indeed, to say that "to identify is to
compare with an identity" will not go very far in this context. As
defined in [Ger98b], "to identify is to look for coherence" -- where the
identity coherence (or, connection) is just one type of identification.
In the theory, unless one is satisfied with a simple Yes/No answer as
provided by identification level I-1 (is there coherence? Yes or No?),
one must go at least to identification level I-2, where one has four
answers -- all valid: Distinguished, Ambiguous, Obscure, Formless. To
avoid repetitions, I refer the reader to [Ger98b] for definitions and
examples.

The Distinguished and Formless levels of identification are easy to
handle in this case -- they are either clear-cut or unperceived.
However, how about the Ambiguous and even Obscure cases?

Besides the *existing* legal framework I argued for above, a workable
technical identification solution for the DNS-trademark conflict over
their Ambiguous cases is further proposed in the conclusions of [Ger99a]
in terms of the *added* authentication. 

To identify the Obscure cases, a security implementation as a service to
customers is further discussed in item (VIII) of [Ger99b] -- also
showing that it is a viable solution.

I believe that the above treatment can provide a general framework for
dealing with the trademark issues in relationship to Internet Domain
Names -- since it addresses the basic question here: their
identification. Otherwise, an apple will always be a bad orange and vice
versa.

Cheers,

Ed Gerck

> Patrick J. Boylan
> 
> City University, Frobisher Crescent, Barbican, London EC2Y 8HB, UK;
> phone: +44-171-477.8750, fax:+44-171-477.8887;
> Home: "The Deepings", Gun Lane, Knebworth, Herts. SG3 6BJ, UK;
> phone & fax: +44-1438-812.658;
> E-mail: P.Boylan@city.ac.uk;  Web site: http://www.city.ac.uk/artspol/

====================================================
REFRENCES:

[Boh97] Bohm, N. "Authentication, Reliability and Risks", in
http://www.mcg.org.br/auth_b1.htm - 1997.

[Fro99] Froomkin, M. "A critique of RFC3" in
http://www.law.miami.edu/~amf/critique.htm - 1999.

[Ger98a] Gerck, E., "Dr. Faust's Internet Dilemma", in
http://www.mcg.org.br/faust.htm - 1998.

[Ger98b] Gerck, E., "What is identification, that we can identify it?",
in http://www.mcg.org.br/coherence.txt - 1998.

[Ger99a] Gerck, E., "Arguments for recalling WIPO RFC3", in
http://www.mcg.org.br/wiporfc3.txt - 1999.

[Ger99b] Gerck, E., "ICANN Draft Accreditation Guidelines: Comments", in
http://www.mcg.org.br/wiporfc3.txt - 1999.