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Given a couple of off-list notes, I suppose I should expand (again)
on why we need to move beyond trademark-only discussions of rights
in domain names.<br>
<br>
From my previous note on geographic names:<br>
<br>
<blockquote type="cite">We <b>individual </b>(non-corporate, e.g.
natural person and/or family group not engaged in commerce) domain
name holders have no rights in our names, and no-one, not even
NCSG, ever bothers to advocate for us. E.g. Any name we pick can
be trademarked; then we can be bullied out of it. And few of us
can afford the legal fees to fight.<br>
<br>
But one of these days it would be nice to change the conversation
to include how to create and protect the rights of non-corporate
domain name holders. <br>
</blockquote>
<br>
A <b>trademark </b>is a a name (design or 'mark') used in trade
(commerce) to identify the source of a product or service and to
distinguish it from product supplied by other sources. (That
definition is somewhat loose, in that non-profit organization hold
trademarks; their 'trade' can be promoting their organization's
objectives rather than delivering a commercial good or service in
the ordinary meaning of the word.) For the purposes of this note,
'servicemark' is equivalent to 'trademark'.<br>
<br>
All of the current domain name ownership/dispute mechanisms and
discussions are based on <b>trademark </b>rights. Although there
is a passing mention in the UDRP(1) (section 4.c.ii) of
non-trademark interest in a name, this is at best palliative, as
UDRP (section 4.k) points out that any court of competent
jurisdiction can be used before, during or after the administrative
proceedings. And while there is developed law on trademark rights,
I'm not aware of any consistent legal framework for individuals to
assert rights in their domain names. Nor in the UDRP cases that
I've reviewed, have I seen much deference given to non-trademark
claims. Rather the contrary. ICANN policy doesn't seem to consider
individual domain name holders to be a significant constituency.<br>
<br>
I use '<b>individual domain name holder</b>' to mean those of us who
aren't engaged in commerce in any sense - e.g. my network provides a
private family wiki, e-mail, photo sharing, directory service, hobby
mailing lists, etc to hundreds of people, but no money changes
hands. Other individual domain name holders provide services to the
public, inter alia: blogs, information sharing, software
distribution, network tools, and political commentary/advocacy.<br>
<br>
It is worth noting that domain name holder does not mean 'world-wide
web' service provider. Some domains offer http(s) services, some
do not. Many discussions framed in terms of 'when you visit the
website' fail to account for the case that there is none.<br>
<br>
<u>Individual domain name holders:</u><br>
<ul>
<li><b>Can't obtain a trademark</b>, as these uses do not meet the
requirements for 'trade'. Trivially, trade requires the
exchange of money or barter for goods or services. This doesn't
happen.<br>
</li>
<li>Even if a <b>trademark </b>could be obtained, the <b>expense
is non-trivial</b>: in the U.S., filing fees(2) are hundreds
of dollars, and as many apply during the pursuit of a
registration, they add up. Since the domain name system is
borderless, add international registration(3). Then one must
keep records that show <b>continuous use of the mark in trade</b>,
and file various documents to maintain the mark. And add
attorney's fees (which are often essential), and it's well <i>out
of reach of the individual hobbyist, advocate or small
business</i>.</li>
<li>Have <b>no protection against a trademark holder who decides
to appropriate one of our domain names</b></li>
<ul>
<li>No matter how long we've held the name (even prior to the
registration of the mark)</li>
<li>No matter what TLD the name is in</li>
<li>No matter what investment we've made, what it would cost to
change, or the impact on our users<br>
</li>
<li>We can argue that our use doesn't 'create confusion' with
the mark - but this is difficult/expensive -- beyond the means
of most individuals</li>
<li>Objections can come from anywhere in the world;
negotiation/litigation can require extended personal presence
and/or representation<br>
</li>
</ul>
</ul>
<u>The bottom line is that the individual domain name holder:</u><br>
<ul>
<li>when confronted by a trademark owner, <b>has no enforcible
rights</b> to the domain names that they select<br>
</li>
<li><b>is non-commercial</b>, included in the NCSG/NCUC charters,
which organizations should represent and advocate for us<br>
</li>
<li><b>has not been successful in gaining the attention of
NCSG/NCUC</b>, as our concerns give way, inter alia, to
discussions on trademark-based concerns, human rights
initiatives, ICANN structure, multi-stakeholderism, government
meddling and elephant welfare.</li>
<li>by our charters, is assumed to be a significant enough
constituency that we have fewer votes/individual than
organizations. <br>
</li>
</ul>
I suppose that in the past I haven't been sufficiently concrete. So
let's consider a hypothetical case based on some real data. One of
our members has the domain name <a href="http://avri.doria.org"><b>a</b><b>vri.doria.org</b></a>.
It turns out that <b>doria.org</b> is registered to 'RealNames' -
which is the registrar Tucows cyber-squatting on people's names. To
simplify the example, let's suppose that Avri had managed to
register <b>doria.org</b> before Tucows. And let's assume that she
has no trademark in her name.<br>
<br>
It turns out that there's another rather famous <i>Doria </i>in
her neighborhood, though I don't think they're related. See <a
href="http://www.andreadoria.org"><b>www.andreadoria.org</b></a>.
:-) Now let's suppose that this organization has found a way to
monetize diving on the site(4) and decides that <b>andrea.doria.org</b>
is much more memorable. The Italian line having abandoned the
'Andrea Doria' trademark, it's registered to the the commercial
diving enterprise, which asserts that 'avri' and 'andrea' are
confusingly similar. After all, they both start with 'a'... and one
means 'noble and wise ruler' and the other 'beautiful woman'. Close
enough in many cultures for a fight.<br>
<br>
Of course, there's the other Doria family (<a
href="http://en.wikipedia.org/wiki/Doria_%28family%29">http://en.wikipedia.org/wiki/Doria_(family)</a>)
and its descendants to contend with.<br>
<br>
I predict that (this hypothetical) Avri would lose <b>doria.org</b>.
<br>
<br>
This isn't a perfect example - and I don't mean to create trouble
for the real Avri. Nonetheless, I hope it serves to better
illustrate the position of individual domain name holders. <br>
<br>
There are no simple solutions. The concerns of trademark holders
are real. In the past, I suggested a TLD for individual domain
holders (notionally, .tfz or .tf for trademark-free zone) where
trademarks aren't considered bars to use of a name. See previous
posts for details. I still think this has merit. Given that the
TLD policy would state 'in this TLD, names identical to or
resembling a trademark do not necessarily belong to the trademark
owner', there should be no dilution of trademark rights provided
that content in the domain obeys the usual rules of disclaiming
trademark ownership. But some smart lawyers would have to figure
out if legislation is required and how to make it work. There are
some in this group. Given the subjugation of individual domain
holders' rights in the rest of the DNS, this TLD should be
established without the massive fees applied to other TLDs. Perhaps
administered by NCUC... <br>
<br>
Happy New Year. Perhaps some of it can be devoted to the neglected
constituency... Perhaps members who have converted from
organizational representatives to individual members will develop a
new perspective... And perhaps members in both roles can think
about their individual interests as well as their organizations'.<br>
<br>
Well, it's a new year. I can dream.<br>
<p>(1) <a
href="https://www.icann.org/resources/pages/policy-2012-02-25-en">https://www.icann.org/resources/pages/policy-2012-02-25-en</a><br>
(2) <a
href="http://www.uspto.gov/web/offices/ac/qs/ope/fee010114.htm#tm">http://www.uspto.gov/web/offices/ac/qs/ope/fee010114.htm#tm</a><br>
(3) <a href="http://www.wipo.int/madrid/en/fees/sched.html">http://www.wipo.int/madrid/en/fees/sched.html</a>,
<a href="http://www.wipo.int/madrid/en/fees/calculator.jsp">http://www.wipo.int/madrid/en/fees/calculator.jsp</a><br>
(4) The Andrea Doria is a famous shipwreck, though 'site diving'
might be the next internet fad... See <a
href="http://www.pbs.org/lostliners/andrea.html">http://www.pbs.org/lostliners/andrea.html</a><br>
(5) This note represents my personal observations and does not
constitute legal advice. It should not be relied on for that
purpose - I am not an attorney. <br>
</p>
<pre class="moz-signature" cols="72">--
Timothe Litt
ACM Distinguished Engineer
--------------------------
This communication may not represent the ACM or my employer's views,
if any, on the matters discussed.
</pre>
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