Let me begin by saying that I am not a first amendment scholar and I am not a regular participant in ICANN policy. I am a humble law professor and I have come all the way here just for this session and with one simple message and that is trademarks and domain names are distinctly different animals. So policy that works for trademarks doesn't necessarily work for domain names. This is my chief concern with the draft report. It may be that trademark law is a little bit different than other areas of intellectual property law in that it's not so easy to tweak trademark law into the digital age as we have seen it done with copyright law and patent law. I think trademark law looks very flexible and accommodating but that is quite deceptive. Trademark law, probably chief among all other areas of intellectual property law, is very finely balanced. It can be set off kilter quite easily and I think this policy would really do that. So what I have to do within the next couple of minutes, is give you trademark law 101, but I promise you that it is not boring it is rather interesting.
I can identify three large distinctions that need to be made between trademarks and domain names. Trademark law is really focused on territories. It seems really strange in this day and age to be focused on territories but it is and even though we now have developed international trademark law, that law still respects that fundamental principle that trademark law is territorially based. Even in international trademark law, these territorial rights and concepts are respected. So we regulate trademarks because they are significant within a region, that region may be the state, that region may be a smaller region within the state, that region may even be within a particular niche market within a state. But that's the extent to which the rights extend, the rights do not extend beyond that.
In order to have trademark rights from one state to the next you need to do something to acquire those rights. But the virtue of having a trademark does not grant rights internationally. And that I think is something to remember here when we start to elevate these trademark concepts and policies to domain name policy we cross a very big threshold because then we grant these trademark rights internationally, something that trademark law and international trademark law has never done. Trademark law is always focused on the consumer. We justify trademark protections because we are seeking to protect consumers from commercial deception. But all of the rights in trademark law, all of the doctrines, all of the tests in the law are focused on the consumer. The law always asks who is the relevant consumer for this market, what do they know, what do they think, what would they see, when they see this second use of the mark. Would they be confused? So it always considers the relevant consumer and again that is geographically based and maybe market based. And it would be impossible to consider an international, universal, generic consumer. It would be impossible to describe knowledge, sophistication, attributes to a universal consumer. What would they take? Because, as you know, when you travel you take different information with you. You perceive things differently from place to place.
Finally all trademark rights are considered in context. In fact trademark owners have fewer rights than you would imagine. They don't own the trademarks in any real sense. They have limited exclusive rights against others, only in situations in which others would cause confusion of the relevant consumer. That is the only case in which a trademark owner can assert their rights against someone else. So we have to look at the particular context of use of these third parties to see whether the relevant consumer would be confused. We don't just look at the words, we look at the market situation. How are they displayed? What other information is on the label? What other information is in the buying experience? What kind of a product is it being used on? We look at all of these things to determine whether or not a consumer would be confused. Its highly contextual, it's not abstract, it's not in theory, and these are a very limited set of rights.
To take these ideas and apply them to some of the recommendations, I want to begin to look at recommendation two because it says: 'It cannot be confusingly similar to another top level domain'. Now that 'confusingly similar' is a trademark concept. But it's used here with an incorrect understanding that it is the trademark test of infringement (confusing similarity). It is not. It is the first step towards an analysis of infringement. It is the first step when we consider whether or not the trademark owner has a right. We look at the two words and we see whether the identity is so close that we would say they are confusingly similar. But as I just said, the analysis goes much beyond that, we look at what kind of consumer would buy this good. How sophisticated are they? How much care do they take with this buying decision? How is this being marketed? We look at media uses. What is sitting on the shelf next to it? We look at all kinds of things so that words that we may determine to be confusingly similar may not be an infringement, that is they may not likely to cause confusion. And that is why we allow many parties to use the same words as trademarks, as legally protected trademarks. I will give you the example of 'Delta'. There is Delta Airlines, there is Delta Faucets, there is Delta Dental, and probably numerous others if you do any search of any trademark of any database in any country you will find numerous parties using the trademark in different context. They may be confusingly similar, but they are allowed to be used.
I guess I just want to add one more point here, the idea of making an international right in a trademark has never come to surface in the history of trademark law nor the history of international trademark law. The closest we have come to attempt that kind of thing has been what's called protection of geographic indications which is a source of international debate presently. For example, should the word Cognac be reserved against all other uses internationally. You can imagine some countries would favor that policy. But international law does not protect that idea. Because it recognizes the fact that Cognac may mean something in France but it may mean something entirely different to consumers in the United States who may regard that term as indicating a fine brandy, but not necessarily a product of a particular region. And so we allow those kinds of terms to be used and we allow governments of different countries to regulate their use. There was an attempt to have a universal protection for these terms but that is not the case.
Recommendation 3 says strings must not infringe these existing legal rights of others that are recognizable or enforceable under generally accepted and internationally recognized principles of law. Let me tell you that everything that you can possibly think of is protected as a trademark. I would challenge you to come up to me and give me a word or name that is not protected as a trademark. Even some of the words that have been discussed as possible candidates as top level domains are protected as trademarks. We were sitting in the Hilton hotel and earlier I guess there was a conversation about city names like Paris being a good candidate for a top level domain and I can tell you that there is somebody who has registered the word Paris connected with the Hilton hotel chain and family. And I also say once a policy like this not draft, but rather final, there will be a situation of trademark squatting. So if by chance the word 'Books' is not registered as a trademark, there will be. Because in most countries in the world it's very easy to get a trademark registration. You don't necessarily have to be using the trademark in commerce. Very few countries like the United States have any kind of restrictions like this. It's very easy and in some cases quick to get a trademark registration. So my guess is that there are numerous trademark registrations for the word 'Book' but if there aren't there will be. I think this is really an unworkable standard. When you think about it, the fact that someone has registered the word 'Cherokee' already, (in fact there are numerous commercial entities have registered the word 'Cherokee') why isn't it that we would consider these parties to have important prior rights that we would want to respect. If for instance the Cherokee nation thought it would be a good idea to have Cherokee as a top level domain .
One other point, since I am so focused on the idea that trademark law really doesn't track good domain name policy, I haven't been focused on the fact that there are all kinds of defenses and limitations of trademark law that would need to be taken into account. And one such limitation is the 'fair use' doctrine, which says if a trademark owner has captured a descriptive word as a trademark they don't have the right to exclude other competitors who would want to use that word in commerce with a use that is not a trademark use. That doctrine alone would allow top level domains (which are inherently not trademark uses) to exist even where it would be confusingly similar to words that people own as trademarks.
Recommendation number 6 which is about public morality and public disorder. I can understand why the committee would be thrilled to see international trademark law does address this idea that there could be some regulation of immoral words. But I think there is a misunderstanding of what international trademark law does here. We have a very recent and huge international trademark treaty and that is the WTO TRIPS agreement. This is the newest multi-lateral agreement on trademark law, and it doesn't mention this. It certainly was a possibility to include but the TRIPS agreement does not include this provision. The Paris convention does include a provision relating to this kind of restriction. But it's important to note that this is not a minimum standard. It is not a minimum standard that countries must regulate immoral words as trademarks. The Paris convention merely permits countries if they so wish, make a regulation restricting words as trademark registrations. The next point, the United States is one of those countries who has some kind of legislation about restricting immoral words as trademarks, but it's very important to note that this is not a restriction on use of the trademark and this is not even a restriction on legal protection of a trademark, which could be deemed to be immoral or scandalous as the trademark act mentions this is only about federal registration as a trademark so if you wish to adopt an immoral word or scandalous word in the United States as a trademark, you may be prohibited from federal registration. You may not be prohibited from using that word or from deriving legal protection through federal common law (which is built into the trademark act) over the word. It's not a grand of a restriction as you might think from the committee report. And it's really little used, and again this restriction is used in context. So words that would appear to be scandalous or immoral in many cases (in decisions) the court has said when we look at the context of the word and the use of this word as a trademark, when we look at the marketing material, when we look at the label of the goods we see that it's really a double meaning and it's not really scandalous. So we don't take the word alone, even in that doctrine its looked at in its context. It's important to note that even though this provision exists in the US law, by and large it's only utilized by third parties who are raising objections. It's not something in which the trademark office is serving the standard against would be trademark registrants. And that's all I have to say, thank you.
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