[ICANN-EU] TM vs. DN -

[Jefsey Morfin <jefsey@wanadoo.fr>]

At 15:16 16/09/00, you wrote:
>But that is exactly the point: the current fashionable legal
>theories decree that trademark laws apply to _every_ domain
>in existance. <...>
>As long as we don't get the courts recognizing the differences
>between domains and trademarks, there will be no solution to that.
>
>The usual way to convince courts is to change laws. Politics.
>Now here the TM lobby comes into play - in our times laws are
>as much bought as voted-vor (if not even more so).


=>No.
The usual way to convince courts it to prove. Politics make laws,
laws do not convince Courts, Courts enforce laws.


=> Has anyone proven that domain names fall under TM laws?
No.


=> How can you be so sure of that?
Because if you tell a Court "this person is a man because he is an
abc" the Court will ask "what is an abc?" and then will tell "prove that
an abc is a man". Nobody is able today to define what legally is a
domain name, and hence to prove that domain names falls under
TM legislations.


=> Courts have taken decisions in TM cases
Two possibilities: either they considered side delinquent aspects
and they may be right, or they presumed some aspects of what is
a domain name and they are wrong.


=> How can you say that?
Because: what ever a "domain name" is, it is known through a
registration service offered by the domain name registry to the
registrant through the registrar (the definition assumed by the
Anti-Cybersquatting Act acknowledges it with a circular
definition of the Domain Name as being what is validated by
a domin name registry).

That service is covered  by an agreement:
- this agreement does not define what a domain name is
- to the contrary this agreement tells that the domain name system
   is in constant change
- this agreement which only concerns the service of registering
   the domain name, tells that this service may or may not be
   performed depending on the decision of the registry.
- the domain name is proposed by the registry only for the parts of
   an ICANN controlled system named ".com", ".net",".org"...

Also, the registry (VeriSign) delivering the domain names gives in
its glossary a definition which should de facto become part of this
agreement as the common understanding of the parties (cf. infra).
This definition is not the same as the one in the Anti-Cybersquatting
Act and it is obviously not the same as different one use or assumed
by the different WIPO's panelists in their various UDRP decisions.
There are several other difinitions given by the registry and by the
registrars of what a domain name is. Their contradictions should
first to be resolved.

 From that we see that:
- domain names do not exist as independent "legal objects"
- they are parts of the changing software of the registry
- as advantages belonging to the registry in the ICANN system
   and granted to the registrant upon his request but for a limited
   period of time and with its decision showing it retains the
   ultimate property
- no special importance is allocated to the ".com" directory.
- the legal rules applied to them are different depending on their
   life cycle: when ordered, when used, when disputed.


=> Then what is a domain name?
IMHO a domain name is a nickname given - upon his proposition -
to a user by the international user community. Like a scout's totem.

Each scouts totem comes with secret letters delivered by the
totemisation group (.com, .fr, .de, etc.). In this case they prevent
confusions by the Great Sachem "I cann".

Now Great Sachem went mad under his tepee and said that ToteMs
will now belong to the TM lobby and signed the UDRP treaty with that
yellow White Faces.

Obviously DNs are user labels/scout totems for the Internet community
within their Internet electronic game. Their usage, assignations, reservation
are subject to internal rules of that game and belong as such to the
community as "Yellow Chicken", "Bouncing Impala" or "Black Cougar"
belongs to the Scout community, or the 1000, Five Avenue, NY belongs
to one of the players in a Monopoly game. As such owning them has no
impact.

Publishing/using them in a way damaging the image of other players
or third parties is disloyal and falls under the laws. Asking some candy
bars in chocolate or in gold to transfer them to others players may be
against scout's laws or Monopoly rules, but it is legal.


=> Remarks
-  if DNs falls under TM rules, then TM rules apply to them. Until this
    has not been clearly decided by the WIPO TM rules cannot apply.
    Example: no one can deny that a worldwide coverage may make
    as many people aware of a Domain Name as time. So registering
    a Domain Name should grant a protection by usage, a non chalanged
    Domain Name for a given period of time should prevent anyone to
    register that word as a TM in any class in any country in the world.
    Until this has not been organized, or even discussed, it is obvious
    that WIPO is not considering that TM and DN are in the same field.
-  Courts can impose penalty only to the registry since the real
    property of the domain name, hence the legal responsibility, remains
    with the owner of the system in which the name is used (the TLD).
-  Courts or UDRP cannot impose a domain transfer. They only
    can impose an owner not to publish his domainname and to the
    registry to provide a domain name to the TM owner in an other
    TLD. TLD are nowhere par of this issue.


=> Economics
UDRP are based on the good faith of both parties. How can be
proven the good faith of the requerant about protecting his
interests when:
- he was less active than the defendant in subscribing the
   domain name he claims.
- other TM owners are registering thousands of domain names
   to protect their image.
It should be considered that the requerant is trying to obtain
for $ 500 to $ 1000 (while being very late) what others are
paying $10.000s a year through a very serious and constant
policy.


=> What is to be done now?
Simply to sing the Great Wizard "Very Sign" song:

" A domain name is an addressing construct
   used for identifying and locating computers on the Internet.
   Domain names provide a system of easy-to-remember
   Internet addresses, which can be translated by the
   Domain Name System (DNS) into the numeric addresses
   (Internet Protocol (IP) numbers) used by the network.

   A domain name is hierarchical and often conveys
   information about the type of entity using the domain name.

   A domain name is simply a label that represents a domain,
   which is a subset of the total domain name space.
   Domain names at the same level of the hierarchy must be unique.
   Thus, for example, there can be only one .COM at the
   top-level of the hierarchy, and only one networksolutions.com
   at the next level of the hierarchy."

No Court ruling should be accepted which do not clearly state
it took into account that contractual definition and its
implications if it disagrees with it.

No UDRP should be accepted without the formal acceptance
of that definition and of the changing character of the domain
name system as part of the bona fide position of the domain
name owner.

No Court or UDRP sulling should overlook the plaintif's TM
protection strategy and if he is serious about protection or
if he pursuesa anti-competition effort.


=> What if I am UDRPed?
If your are proposed an UDRP and if you refuse, your image in
Courts will be poor (if you lose the UDRP, it will be too).

But if you accept under the provision everyone knows what
we are talking about (domain name definition) and if in so doing
you force your opponent to acknowledge that his UDRP
procedure is ill defined, your opponent's position now is poor.

Also, show you are serious about understanding the global
picture and accept the UDRP under the provision that the
plaintifs gives and update during the UDRP the entire list of
all the DNs he directly or indirectly owns and all his TM
actions in every field and dates.

If you lose the UDRP you will contest first the use of your
domain name definition by the panelist. You will retain your
domain name in the meanwhile at low proceedings cost:
the other party must demonstrate that the VeriSign definition
is the definition used by the panelist. If they succeed (?) then
you will either argue that this definition has changed in the
meanwhile (most probably) or could change (the DN system
is by essence - cf. agreement terms- constantly changing).

Then you will contest is seriousness, the list of given DNs,
the fact that he owns/does not owns some DNs, etc....

UDRP is just a simplification for the Registry, not for you!

>And one of the paths of political influence of the TM lobby
>is WIPO. But, instead of them beeing faced as an opponent
>organizations of ICANN, WIPO is deeply involved in ICANN itself.
>
>Which gets us to: to start solving a number of the problems
>of DNS we have to get WIPO out of ICANN.

WIPO is not alone.

- ICC is one of the others. Mrs Cataui the European NomCom
   unknown lady could may be comment this?
- VeriSign is another which kills the credibility of the entire
   UDRP process since it is possible to claim they are parties
   to the process and shoud first state if this or not the case!

If WIPO was loyal to the market, it should acknowledge that
UDRP are about determining the bona fide of the parties what
it has no competence about. Also that often that good faith
is demonstrated by TM ownership, which makes WIPO an
expert and therefore a party. A Court cannot ask the opinion
of an expert and then include that expert as a member of the
Jury.

Jefsey