WIPO, TLDs and Trademarks

Michael Froomkin writes "I am the public interests representative on a World Intellectual Property Group (WIPO) experts group panel advising on rules to sort out conflicts between domain names and trademarks. I have come to believe that WIPO's Interim Report, RFC 3, unfairly stacks the deck for large, corporate, trademark holders, and against small firms, consumers, and non-trademark holders. Please see A Critique of WIPO's RFC 3 for full details. It's long, and it is not pretty. "

Comments

Myopic Bureaucrats...

[trims]

As I've stated in previous posts, the whole problem of DNS and trademark/IP disputes arises from the abuse of the DNS system. DNS was NOT DESIGNED and is ILL-SUITED to serve as an identification system for concepts larger than simple number-avoidance (ie it solves the problem of addressing machines by IP number only).

The solution to the current problem is two-fold:

1. Most importantly, a new schema for mapping concepts to machines is needed. The smart-browsing functions of Netscape 4.5 and 5, and IE 5 are a large step in that direction. Yahoo-like search engines/portals also are along the appropriate lines. (see below for more on this).
2. Creation of an exclusiveTLD that allows only those with a registred trademark (NOT a Service Mark, or anything else but a TradeMark) to register. I just looked, and nothing is assigned the .TM domain (ie, you could get McDonalds.TM ).

The first solution is a technical one, and will require some forethought and evolution. It is in fact currently underway, as the flaws in the existing DNS-naming solution are evident (to everyone of course except the Bureaucrats, lawyers, and marketing idiots). This system needs to be heavily encouraged, as it will ultimately solve the problem we are having. This is the long-term solution, and should receive all due priority and attention (particularly at the IETF-level).

The second proposal is a band-aid that should work sufficiently long until the first (technical) solution is in place. It's a stop-gap measure.

A couple of things about the second proposal: Once the .TM domain is created, and a formal dispute-resolution policy is in place for that domain (I'm not saying this will be easy, but it's certainly much easier implimenting a policy for a currently-vacant TLD than trying to retro-fit one onto the existing TLD structure), several things must happen:

• All othe domains must be freed from trademark/IP suits. The first registrant of that domain in the non-TM space owns the domain. Period. End of discussion.
• DNS-registration agencies must prohibit organizations from registering the identical name in multiple TLDs to prevent name-space pollution and gratuitous squatting. Thus, if you happen to one Foo.com, you can't register foo.org, foo.co.uk, or other such names. I recognize that this will be difficult across international registration agencies, but it's trivially enforcable within a single agency's perview.
• People registering a TradeMark in the .TM domain must provide documentation of an internationally-recognized trademark in order to be given that domain. ownership of a .TM domain precludes ownership of the identical name in other TLDs (once again, to prevent name-space squatting).
• The .TM domain is designed to be the "Official Recognition" of the owner's trademark. As such, browser and search engines should be encouraged to search for under that domain first when attempting to resolve ambiguous names. A cannonical example is this: Netscape has (for at least 3 releases) attempted to resolve the name "foo" input into the Location URL first as a local machine named "foo", then as a machine named "www.foo.com". Netscape (and other browser manufactures) should be officially encourages (probably by RFC throught the IETF) to change this behavior such that it searches for "www.foo.TM" first. This provides a mechanism for the protection of trademark owner's "fame" and such associate with owning a trademark.
• The establishment of the .TM domain should come with an international agent responsible for administering such a domain, and who has final say in arbitration. This most likely requires a formal international treaty to be signed by nations; however, such is necessary to give the proposal teeth. As part of the treaty, the TM-administering agency should be given absolute power to resolve disputes - suing in a local national court to overturn an unfavorable ruling should be explicity denied.
• The .TM domain is for use by TradeMark owners ONLY. Other forms of IP are not accomodated, and should not be allowed. While Service Marks are disputably part of this, I would expresively exclude them for the following reasons: (1) most service marks are longer phrases, which are unsuitable for domains anyway (2) Service Marks are useful mostly in advertising, and often are only recognizable as a graphical image, which does not translate to the text-only of a TLD (3) Service Marks do not have the wide recognition that TradeMarks generally do.

The proposed solution by the WIPO is typical of a large bureaucratic committee: it proposes an ill-defined, nebulous system heavy on bureaucracy and favorable to the well-financed. Throw it out.

-Erik

Another Important Item to Comment On

[gwachob]

Hey folks, if you want to see where things might go, check out Prof. Froomkin's comments. They are rather dense and very long, but if you want to know where the battle lines are drawn, check it out.

Its also important to realize that this is a "recommendation" to be handed to ICANN.

ICANN has commissioned a report from the Berkman Center for Internet and Society (at Harvard) on representation in cyberspace. There are various ways to comment --- its important that everyone at least takes a look!