Subject: Re: COM names != US trade marks (was Re: Future of IANA)

From: [email-masked] (Noel Chiappa)
Date: Mon, 2 Feb 98 11:25:01 -0500

Domain names under COM (or NET or ORG) do not have to be and never have
    had to be US tademarks.

I know this is a waste of time, but I can't help pointing out that trying to
use trademark law to adjudicate who gets what DNS name in any global TLD is
Really Dumb. The naming scope of global TLD's just doesn't match the scopes
in which trademarks are guaranteed uniqueness - so to use trademark law to
fight over them is nonsensical. (Not that this hasn't stopped innumerable
courts from being dumb enough to.)

For one, two different entities may own a given trademark in different
national scopes - so who gets it in .COM? For another, suppose two different
companies have the same name trademarked in different business areas (e.g.
Lotus software, and Lotus cars, to use one dear to my own heart)? Who gets
Lotus.Com?

The courts have (wrongly, in my view) used trademark law to deal with
disputes about global TLD names where one person has a trademark, and one
doesn't - but the fact that trademark law is the *wrong* thing to use *ought*
to be shown by the fact that it won't handle the cases above.

Then again, that would be logical, and well as displaying understanding of
the limits of their power, so it's not surprising the courts haven't backed
off.

	Noel

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From: "Raides J." <[email-masked]>
Date: Mon, 02 Feb 1998 20:11:37 +0000

> Lotus software, and Lotus cars, to use one dear to my own heart)? Who gets

	Good question! ... And what happens when two companies from the same
business area have the same name registered only locally in their
respective countries and never knew about the other until they went to
ask for a domain and found the duplicate? Must they follow US laws,
their countries' laws or must they agree between themselves and "divide
up the plunder"? Who wins? The first one in registering? ... If you had
thought globally *from the beggining* nor my example either Noel's will
have had any existence.

> to be shown by the fact that it won't handle the cases above.

	Thanks for reading me ..

	Raides J.

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From: Jon Crowcroft <[email-masked]>
Date: Mon, 02 Feb 1998 23:41:06 +0000

>>courts from being dumb enough to.)

totally agree

2 more points from reading the US government proposals
1/ they state
 "there is widespread dissatisfaction about
absence of competition in domain name registration"

oh yeah? only amongst people who want to make a fast buck proviing a
service that should be pro bono or out of overheads of isps anyhow...

i have NEVER heard any dissasisfaction except amongst a very small,
very vocal, set of stateside altername "service" providers

lord save us from US litigation AND US profiteering :-)

name registration (like telephony, and like IP carriage) will and
should become marginal business asap.....
 >>Lotus software, and Lotus cars, to use one dear to my own heart)? Who gets

2/  when the setop box comes of age, you WONT SEE URL/DNS names, just
hot spots on the screen.....people are just trying to make a fast buck

the US governement is EXACTLY right to divest itself of the running of
this, but there is no need for it to be competetive...its a
pre-competetive utility and needs an international regulator

:-)

 >>the limits of their power, so it's not surprising the courts haven't backed

 cheers

   jon

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From: Stephen Kent <[email-masked]>
Date: Mon, 2 Feb 1998 20:06:26 -0500

Noel's comments re the inadequacy of trademarks for resolving name disputes
is best understood in the context of two companies who have registered
trademarks for different product or service areas, and which exist in the
same country.  Otherwise, the use of per-country TLDs (e.g., .US, RU, ES,
CA, ...) avoids per-country collisions.  While international TLDs (e g.,
COM, NET, ORG, ...) have some obvious attractions, they also tend to create
more name conflict opportunities.

Steve

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From: Einar Stefferud <[email-masked]>
Date: Mon, 02 Feb 1998 20:05:47 -0800

Many of these DNS management issues have rather inobvious nooks and
crannies to explore.  They have a tendency to behave like Alice in
Wonderland Characters with Croquet Balls unrolling on the lawn and
walking away, and such.

>From Stephen Kent's message Mon, 2 Feb 1998 20:06:26 -0500:
}
}Noel's comments re the inadequacy of trademarks for resolving name disputes
}is best understood in the context of two companies who have registered
}trademarks for different product or service areas, and which exist in the
}same country.  Otherwise, the use of per-country TLDs (e.g., .US, RU, ES,
}CA, ...) avoids per-country collisions.  While international TLDs (e g.,
}COM, NET, ORG, ...) have some obvious attractions, they also tend to create
}more name conflict opportunities.
}
}Steve
}

At the same time that iTLDs (what CORE calles gTLDs) do not benefit
from national boundary buffering of TM conflicts, they also create new
non-national domains in cyberspace, which at this time do not have the
kind of standing under the law that National names and boundaries do.
This does not mean that they cannot and should not have such standing.

But, one thing is very clear non-the-less:

NMA.COM is not NMA.ORG, even when bothare owned by the same party.
And NMA.US is not NMA.CA, even when both are owned by the same party.

And, Bob Jones is not Bob Smith either.  Rememeber all the fun we had
when Microsoft was rumored to be Trademarking the name "Bob", and that
henceforth all people with first name Bob would have to get a user's
licence from MS?  (That was a joke, wasn't it?-)...

So, somewhere along the way, it is going to have to be recognized that
SLD (second level names) cannot be seen as being (or claimed to be)
identical when paired with differnet TLDs, any more than the same name
in two categories of commerce (Sun Oil and Sun Microcomputers) are,
for the same reason that they are seen to be able to safely coexist in
their "separate" conceptual spaces.  These conceptual spaces are no
more nor less conceptual than than DNS iTLDs, just because they are
based in some kind of "REAL" comercial product catagorization.

The real problem is that at present there is only one (REPEAT- ONE)
commercial iTLD (i.e., .COM), and this fact creates the current iTLD
problems with trade marks.

My take is that having more iTLDs will make the reality I have
described much more easily apparent, even to TM Lawyers, and will
certainly solve the problem for the Internet (at least as well as the
International TM problem is now solved among nations).  (Actually not
very well;-)...  So, then we can send our friendly TM Lawyers back
where they came from to finish solving the original International TM
probem.

Since our TM Lawyers have convinced themselves that iTLDs are the real
problem, they will continue to try to get the Internet to stop using
them, and revert to using only nTLDs.  We have seen this plea many
times, and it being repeated here.  But that would not solve our
problem either.

So the real problem is having too few iTLDs, not having too many!

Perhaps it will help to remember that when we warp real cartesian (3D)
space into cyberspace (5D), we might sometimes fail to recognize
familiar shapes and figures.  Some of us have noted for a very long
time now (I was quoted many years ago) that the ARPAnet distorts or
even destroys the effects of geography, and feels like a 5th
demensionial experience.  So here we are, 20 years later, discovering
a bit more about what that idea means.

	Gee, Toto, I don't think we're in FOUR-SPACE anymore!

The Internet creates a 5th dimensional experience, and that is where
the Internet resides.  Trying to map 3D-space onto 5D-space looks like
a very interesting adventure.  

I suppose that explains why all this is so much fun, Fun, FUN!

Cheers...\Stef

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From: Christian Huitema <[email-masked]>
Date: Tue, 3 Feb 1998 12:31:53 -0500 (EST)

I can't believe we are having this debate again!  Let's recap the facts:

1) trade mark laws provide scoped protection for the use of some name in
some context.  The context is variable with the trade mark, generally a
mix of locality (city, province, state, country, maybe trade area), type
of product (the classification of types of products may vary with
locality), and maybe additional restrictions such as languages or market
segments.

2) the Internet names are by definition visible everywhere.  I can
technically advertize the domain name "trade-mark.fr" in the US, just like
I can advertize "trade-mark.com" or, for that matter,
"trade-mark.names-are-us.org."  I can do that by using it in a web page
URL, in e-mail address, or in fact in any other yet to be defined
procedure.

3) trademark owners don't like you using their trade mark.  In fact, they
are more or less obligated to fight renegate users, or risk loosing their
own rights.  However, they will only be able to get an indictement against
someone that uses the trademark "within the protected scope."  They can do
that irrespectively of domain registration.

4) there are many instances where the same string of characters is used
legitimately by different organizations as a trade mark, or as a service
mark, or as a company name.  If there is a scarcity of domain names, only
one of these organizations will be able to get the coveted name.  The
current NSI policy says that owners of a trade mark have some priority
over non owners.  Note that is does not say US trade mark, or trade marks
on food products; some times ago, Tunisian trade marks were quite popular.
 Other policies, such as first come first served, or holding formal
biddings, are just as valid.

5) In theory, having very many TLD alleviates point 4.  Because there is
no scarcity, several owners of the same "trade mark" can get a domain
named after that trade mark.

6) In practice, having very many TLD makes worsens point 3.   Those who
want to defend their marks have to monitor many more registries for
possible infractions.  However, they also have to monitor second level
domains, which can happen even with only one TLD.

7) Some trade mark owners try to achieve protection through a preemptive
strike, registering their mark in all TLD, and thus don't like the opening
of many TLD.  But registration does not protect against second level
domains, also not against monitor variations in writing, (e.g., geep for
jeep, micro-soft for microsoft).

Is there something that the IETF could do?  Sure, it could design
technical alternatives that would allow multiple roots, or that would do
away with the DNS root altogether, or that would replace the DNS by
something else.  But, frankly, I don't see the IETF as the right forum to
debate name politics...

-- 
Christian Huitema
----------
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