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

From: Tony Hain <[email-masked]>
Date: Mon, 2 Feb 1998 15:11:25 -0800

Tripp,

I agree brand recognition has value to companies. Your example assumes that
people would have to know anything besides Pepsi. If the apps had grown up
with a rule to auto-insert the country code of the originator when in doubt,
you could accomplish both the brand recognition and localized presentations
at the same time. 

I am not trying to advocate that country codes are necessarily the right
answer, just present the view that the trademark issues would be minimized
in that environment since they are more likely to map to existing law.
Taking the view that the Internet obscures the concept of countries
(therefore country codes), I am left without a good answer as to what the
right thing would be.

As always, these comments are my own and do not in any way reflect those of
my employer. 
======================================================================
Tony Hain
[email-masked] <mailto:[email-masked]> 

"I think that's self-evident, but not true."		-- Bill Clinton 

	-----Original Message-----
	From:	Tripp Lilley [SMTP:[email-masked]]
	Sent:	Monday, February 02, 1998 2:43 PM
	To:	Tony Hain
	Cc:	Raides J.; Noel Chiappa; [email-masked]
	Subject:	RE: COM names != US trade marks (was Re: Future of
IANA)

	On Mon, 2 Feb 1998, Tony Hain wrote:
	> 
	> (router and stack vendors) without concern for the long term. If
today's
	> knowledge were applied, and a hard line had been taken to put all
commercial
	> interests in the country TLD's, their trademark issues and laws
would align
	> with the name space they were in. In fact there is no reason a
given company
	> couldn't use the country TLD's today, except their marketing
departments
	> think .com is the place to be. I would argue that Noel is applying
the logic

	Conspiracy theories aside, I'm not sure the country TLD is the
soothing
	answer to this that it might seem. Do we really believe that, for
	instance, Pepsi wants to be known as pepsi.com.us and pepsi.co.uk
and
	pepsi.co.jp? That is diametrically opposed to the brand recognition
	they're trying to assert worldwide. They want to be known as
"pepsi",
	without regard to where Pepsi is. Ideally, I suspect (and this is
all
	conjecture) they'd like the technology to make pepsi.com (or
whatever
	non-country TLD under which they fall) resolve differently based on
the
	country of the visitor's origin -- in much the same way that a Pepsi
	banner or Pepsi commercial or Pepsi product is presented differently
in
	different countries and cultures.

	But the bottom line is that no matter where one goes, one sees
simply
	"Pepsi", not "Pepsi US" and "Pepsi UK" and so forth. I can get
	philosophical or poetic and say that they're tapping in to some
universal
	urge to "belong" worldwide, but the bottom line is that companies
	appreciate the TLDs because (among other reasons) they abstract away
	geographic boundaries and make pepsi just pepsi.

	FWIW,

	- t.

-----------------------------------------------------------------------
	   Tripp Lilley, Perspex Imageworks, Inc. ([email-masked])
	
-----------------------------------------------------------------------
	      "Give me a fast computer, for I intend to go in harm's way"
	                      - updating John Paul Jones

---

From: "Richard J. Sexton" <[email-masked]>
Date: Tue, 3 Feb 1998 18:17:27 -0500 (EST)

At 08:05 PM 2/2/98 -0800, Einar Stefferud wrote:
>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.

A more succint example is IBM. They registered IBM.COM in March 1986,
IBM.NET eight years later in June 1996 but did not bother to register
IBM.ORG. Somebody in Switzerland grabbed it in June 1996.

IBM didn't seem to believe it would suffer any damage or dilution
of it's name by letting somebode else use IBM.ORG; clearly it
had the time and money to obtain it for it's own use even if
that use was to "put it on the shelf" and never made operational.

>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.

The US Patent and Trademark office has very recently issued a
policy statement that a domain name that merely serves to associate
an address is not able to get a trademark, but a domain name that has
an identifiable product or service attached to it *can*
be trademarked.

A trademark is granted for an identifiable product
or service within a certain geopolitical area and the
US is a bit different in that a TM can be given in
a state or national boundry, plus it has the the notion
of "famous marks" that is unkown outside the US.

So what the, are the rights of a trademark owner viz a viz
a domain name?

If one were to own a US trademark on a name, lets say frobozz,
that was perhaps a brown soft drink and somebody besides frobozz
Inc. registered frobozz.com to sell soft drinks, there
would be trouble[1]. If frobozz.com were obtained to sell,
say, email redirection services, the fizzy company would
have a hard time getting a rational judge to find a problem.[2]

TM people have to read their own definitions.

What the trademark poeple need to understand is that their
rights to exclusivity to a name extend only to the product
or service the trademark was obtained for, and in the
geoplitical area where they applied for it. They do not,
under any circumstances, have world-wide, exclusivity for
that name, which is, in effect, what claiming they have
a priori rights over a domain name that matches their
trademark would mean.

This is made worse by the US statutes on famous marks
but this is strictly a US problem, and the problem in a 
nutshell is the trademark system recognizes borders, 
and the Internet does not.

In effect, what you are seeing unfold is the Interent
regarding onerous US trademark laws as damage, and routing
around them.

=======

[1] Maybe. If they were selling a blue fizzy soft drink that
wasn't trying to pass itself off as the brown fizzy soft
drink, thats different. See the bluenote.com case.

[2] It would also be necessary to dispute any defenses
such as a common law mark in the home jurisdiction of
frobozz.com, etc

======

Thanks to Dan Steinberg for clarification and help on
these issues.

Disclaimer: I'm not a lawyer. Dan is though.

--
                   ``It's too dark to put the keys in my ignition''  
 [email-masked]
 Bannockburn, Ontario, Canada +1 (613) 473-1719