Re: [icann-europe] Recommended Reading: Brad Templeton on ICANN and the DNS

[Jeff Williams <jwkckid1@ix.netcom.com>]

Brad and all,

Brad Templeton wrote:

> On Fri, Jul 13, 2001 at 02:16:18AM -0700, Jeff Williams wrote:
> > Brad and all,
> >
> > Brad Templeton wrote:
> > > But well defined.  Purely descriptive names can't be owned under trademark
> > > law.  Trademarks tend to be a combination of non-descriptive (brand) and
> > > category (context).
> >
> >   Exactly right.  And this is why TM law doesn't apply adequately to
> > domain names or TLD's.
>
> But this is my point.  My point is that the error in the design of DNS
> was that it ignored trademark rules, and allowed descriptive names.

  Oh agreed!  But whether or not they are "Generic" terms as part or
all of a domain name isn't really and issue with respect to Trade marking
of a Domain Name.  In fact in a number of jurisdictions a Domain Name
cannot be trademarked.  Had the USPTO taken this into account in
early '99 or late '98, the problems related to Domain Names and TLD's
would have been significantly reduced.

  As you may know, some countries are already well underway in developing
their own UDRP processes separate from the ICANN/WIPO version.
The COE for example is doing this along with a number of Asian countries.

>
>
> Descriptive names lead to conflict.  Conflict leads to anger.  Anger leads
> to the dark side.  :-)

  Anger is an emotion that needs to be controlled.  Some can control their
anger others cannot.  For those that cannot or become vindictive as a result
of their anger, are not rational.

>
>
> If you allow somebody to have a descriptive name like "card.shop" or
> "history.museum" or "drugstore.com" you give to one person what in trademark
> law belonged to everybody (an never specifically to one party.)

  Well how does this fit with Corintians.com or Madonna.com/org UDRP
decisions???  Famous marks perhaps?  Not in the Coriantians.com case..
One could even argue the Madonna.com/org instance/case....
How about clue.com, another WIPO UDEP decision?  Shall I continue?

>
>
> >   FCFS (Fist come First serve) like FIFO, is a unwritten axiom in Domain
> > Name registration until the ICANN BoD and staff without stakeholder
> > approval, decided to cow tow to special interests.
>
> Again, ignoring the example trademarks gave us.  It's a matter of good debate
> how fair FCFS is.   There are arguments that auction or lottery are more
> fair on things that multiple people want.

  Of course there are arguments of both sides.  That's a natural occurrence.
And there is not resolution to those arguments either, I submit.  Trademarks,
not withstanding "Classes" or mark, do not address this situation as a matter
of law or international practice.

>
>
> However, trademark law learned that the most fair system was to allow
> everybody to use, and nobody to own, descriptive terms.  I agree with
> that.

  I agree as far a Trademarks go...  I don't with respect to Domain Names
or even TLD's.  TLD's in the US cannot be trademarked presently, yet
coined term domain names with the string .SHOP can be trademarked,
even though SHOP (Without the dot) is a generic term.  Hence our
long standing possition that bringing the DNS into Trademark classification
was a bad idea.  It remains so.

>
> >
> > >
> >   If you search the US TM database there are several categories of Marks
> > using the term Yahoo.  In a part of a domain name in this example, there
> > is no TM filed, nor is it possible for there to be currently as .yahoo is
> > a TLD in this example.  Erco, the DN is not trademarkable for two reasons.
> > One is that the term drugstore is a generic term.  the other is the .yahoo
> > is a TLD and therefore also not a trademarkable term.  Hence, the
> > right that Yahoo.com might try to enforce would be rejected.  And
> > should be.
>
> What law says a TLD could not be made trademarkable if that were our goal
> for the system?

  The Lanham Act.

>  I know there was a ruling that said that putting .com after
> a generic term didn't create a TM, but was there even an attempt to claim
> .com as a TM?

  Not .com no, but .web and .per yes there was.  They were both rejected
in federal district court and also the district courts decisions was upheld
in the court of appeals with respect to .web (IODesign's TLD).

>
>
> Yahoo does have a solid trademark in their name in the directory business.

  Yes "Yahoo" bu it self does. As a TLD .Yahoo, a filing would be rejected
as a TLD by the USPTO.

>
> As I have written many times, the TLDs should be exactly that, either
> existing or newly created brands in the directory business.  They would
> be trademarkable because trademarkable TLDs are the only ones we should
> accept.

  We would agree with this.  But in doing so, than all TLD's must be
trademarkable.  That would include Generic term type TLD's.  And
I personally would have a concern with that as a restriction of speech,
not to mention other uses of those terms, either generic or non-generic.

>
> >
> > >
> >   COM.  by itself is an abbreviation for commercial, not company BTW.
> > But dotCOM/.COM is not an abbreviation for anything.
>
> Sorry, I just don't see that.   You'll need to argue it more.  The dot
> is simply a delimiter.  Com was, quite explicitly, created as an
> abbreviation for commercial, like all the other TLDs.

  Yes I think we are in agreement here acctually.  COM (Without the
'.' ) is and abbreviation for commercial.  dotCOM (.com) is a TLD
that indicates commercial for a TLD.  But it is not and abbreviation
as such.

>
> >
> > >
> >   Yes it will.  And the fun or disruption will be the fault of the ICANN
> > BoD and staff for creating in the legacy/USG roots an already existing
> > TLD.
>
> I don't see that.  Even though I dislike ICANN, I don't see how you could
> possibly bind them to not create TLDs in their root just because somebody
> else has one in another.

  I am not suggesting "Binding" ICANN to not creating anything.  I am suggesting
that should the ICANN BoD and staff without stakeholder approval do so
they are not serving the best interests of the stakeholders, and in violation
of the White Paper and MoU as well as also creating a collision situation
should the choose to follow this path...

>   Hey, I just created a root with every 4 letter
> string as a TLD!  Now nobody else can use one.

  Why can't they "Use" one?  And what about 3 letter strings or 5 letter
strings, and what if some of those 4 letter strings already existed?

>
>
> You seem to be saying that because Dunn and Bradstreet has a "biz" section
> in their directory that nobody else should be allowed to have one in
> theirs?

  I am not suggesting this at all.  I am saying that dotBIZ (.BIZ) as a
TLD should not be used as a TLD in a another registry or root structure,
unless those root structures are "Shared".

>
>
> If TLDs were branded, of course this would be resolved.

  Yes this is one method to resolve the problem.  The problem is that this
solution must be internationally excepted and legally mandated.

>  If you create
> a .williams TLD in your root (other than as a directory of people named
> williams for which it would be generic) then you can and should be able
> to bar others from doing that.

  The "Williams Companies" is branded.  Williams communication, Sherman-Williams
paints, Williams chemicals, Williams industries, ect, ect.  But not in the class
of a TLD or Domain Name.  And that is as it must be presently.  We believe
that this is how it should remain as well.

>
> >
> > > Yes, but all attempts have failed.
> > New.net and Ultranet seem pretty successful to me...
>
> I have yet to see anybody use a domain from any alternate root in a URL
> or advertisement or e-mail address.     So you are using a different
> metric of success.

  I get 4 to 5 a day.

>
>
> You may be measuring how many people have bought 2LDs from these parties,
> and I would be curious as to the numbers on that.

  Around 16m registered Domain Names that I am aware of or can track.

>  But to my mind a domain
> doesn't have any success if I can't put it on my business card (without
> appending .new.net to it, though I agree that is a good trick.)

  I can resolve any of the New.net Domain Names without their plug-in
or appending new.net to the domain name.  As I am a mindspring
user and New.net has a contract with Mindspring and about 3 other
of the largest ISP's and they carry the New.net TLD's on their Name
Servers I am able to do this.

  With SROOTS and BindPlus even carrying the New.net TLD's in the
Name servers for these ISP's would nto be necessary.

>
>
> Simply adding more TLDs to give other parties monopolies over different
> types of names is not the answer.  It's just an expansion of the problem.

  We are not suggesting that this be done.  In fact we are stuanchly against
it.  What we are suggesting is that TLD's cannot be owned per se, but
under managment in a non-centeralized manner (I.E. no central controling
agency or organization).  But that regulation as to How this can be done
is necessary, and that the stakeholders (Self declaired) must approve
any and all policies by which these regulations are to be determined
and implimented.

Regards,

--
Jeffrey A. Williams
Spokesman for INEGroup - (Over 118k members strong!)
CEO/DIR. Internet Network Eng/SR. Java/CORBA Development Eng.
Information Network Eng. Group. INEG. INC.
E-Mail jwkckid1@ix.netcom.com
Contact Number:  972-447-1800 x1894 or 214-244-4827
Address: 5 East Kirkwood Blvd. Grapevine Texas 75208



-- 
To unsubscribe, e-mail: icann-europe-unsubscribe@lists.fitug.de
For additional commands, e-mail: icann-europe-help@lists.fitug.de