Re: [ICANN-EU] Re: WIPO

[Marc Schneiders <marc@venster.nl>]

On Sat, 16 Sep 2000, Andreas Fügner wrote:
> I'll play devil's advocate. ;-)

Great. We need those or there wouldn't be saints.

> And provide you with some information.
> >As long as we don't get the courts recognizing the differences 
> >between domains and trademarks, there will be no solution to that.
> 
> There is no difference here. Just a conflict!
> If somebody uses a famous trademark to register it as
> or within (!) a domain, than this person in many jurisdictions 
> breaks trademark law. Like using Mercedes in mercedes.org, 
> mymercedes.com or mercedesfun.xxx

Even though Mercedes is a common personal name, I would agree that using
mercedes is a domain name is asking for trouble, unless you, or your
daughter, wife, gitlfriend is called Mercedes.

> The conflict arises from the following.
> 
> A trademark is registered to clearly and unmistakably 
> identify the producer of certain goods or provider of certain
> services. A trademark can be registered for one or more 
> categories, called classes of products and services.
> BTW, that can include services like publishing including 
> on the www or services including electronic mail, etc. 

If this would mean that I can claim "word", "freedom", or even "net" as a
trademark and the ban everybody else from using these common words in
their domain name, then this law has to be changed.
Fortunately this seems not to be the case. Generic terms and words cannot
be trademarked or only in a very limited way.

> If an entity other than the trademark owner uses this 
> trademark within or as a domain, than the entity or
> person is misleading readers/visitores/consumers about
> the publisher/sender/producer/provider.
> 
> For example, the consumer will believe, that the email service
> offered under mercedes.net will be provided by the same company,
> that is offering cars, financial and repair services, a magazin, 
> watches, clothing etc. under the trademark Mercedes. 

Though I do not really believe this, it would be stupid to start a
mercedes.net. If one must do it for some reason, one would be well advised
to put a big disclaimer abot not being Mercedes Benz on the index.html.
But again, it is a stupid idea. This is also not where the real problems
are. This is not what cases like bodacious-tatas.com (see
bodacious-tatas.ORG) are about. It is when trademark owners start claiming
a very short string (TATA 4 letters) and forbidding everyone to use it,
even in a non-confusing way.

> Just put yourselve into the shoes of the trademark owner of
> Mercedes for a while. Maybe you own some shares? :-)
> You invested decades of work and tons of money to
> establish the trademark. You took care to built an image and 
> a reputation for whatever under this trademark. You made extra
> investments to insure quality and consumer satisfaction. 
> People now trust in the consistent quality of product offered and 
> services randered under your trademark.
> 
> Now somebody else takes advantage of your trademark,
> your reputation or prestige by publishing something on the 
> internet or offering electronic services under your trademark. 
> Maybe the person even attempts to damage the image of it.
> How would you personally react?

I would sue them if I had the money Mercedes Benz has :-)

> Some people argue that domains like mercedessucks.com 
> shouldn't be protected by trademark law. 
> Mostly they refer to the freedom of speach.
> 
> Devil's advocate argues that they could freely speak/publish
> under thiscarsucks.com or companies-that-suck.com or alikes.

Part of the freedom of speech is the freedom to choose your own forum,
therefore your own domain name. What you are saying is: You are free to
say it, but I tell you where (not). That is censorship.

> Lastly, to make this information more complete, 
> most trademark laws prohibit the registration 
> of what is defined as a common word like house,
> bus, business, etc. 

Good and let that for once be as widely interpreted as WIPO interprets
trademark rights. 

> Court cases are f.e. "mitwohnzentrale.de". 
> The court argument is, that you cannot register 
> mitwohnzentrale as a trademark for it is a common 
> word and it cannot be blocked for others to use.
> If that is the case, then you cannot register the domain 
> mitwohnzentrale.de. Because through domain registration 
> you are blocking other people from using mitwohnzentrale.de.
> A suggested solution is to register something like 
> mitwohnzentrale-weber-fahr.de or christophs-mitwohnzentrale.de. 
> Nice, isn't it? ;-)

No, you can make up your own name in a sensible way. If you cannot
register schuhe.de you might use footwear.de. Or for your
example: homeshare.de. (There are probably better
examples.)
But I do not approve of these reserved domain names at all. It is too
difficult to apply in a sensible way. Many ccTLDs are giving it up at the
moment or have already done so.

> >Which gets us to: to start solving a number of the problems
> >of DNS we have to get WIPO out of ICANN.
> 
> 
> And who should consult ICANN on trademark laws,
> if not WIPO?

WIPO is quite clearly, even though a UN agency, in the hands of the IP &
TM lobby. It protects the interests of the large TM and IP owners. It
cannot be the only organization involved, unless you think that TM/IP
owners are some sort of special people that should rule the
internet. Well, they think they are. Do you too?

Of course, ICANN went the easy way, by letting WIPO advice on the UDRP and
largely manage it now. Still ICANN is responsible and to ICANN we should
send our protests. They approved WIPO as arbitration center, they should
monitor ICANN. If WIPO is accountable to anyone, it is to ICANN. Don't
waste any time in fighting WIPO. WIPO is the other side. You cannot win
that battle. They cannot change their positions or they would loose the
support that keeps them funded.


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 Marc Schneiders (more in the header)
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