[gtld-council] Regarding non-commercial interests in the gTLD market

[Schulman, Lori]

As some of you may know, I am in the rather unique position of being a
trademark attorney and working for a highly regarded US noncom.  In
fairness, I should also disclose that I am a member of the Board of the
Directors of the International Trademark Association.

In answer to Makawi's question about class, all trademark registration
systems are organized by "class." They may be national classes or
international classes. The international classification system is
governed by treaty (the NICE Agreement) and administered by the World
Intellectual Property Organization (WIPO).  The international
classification system allows the same trademark to be registered in
different classes by different owners provided they are not competing
classes.  For example, you could have DELTA for water faucets in
International Class 8 (IC8) coexist with commercial airline services in
IC37.  Also, a trademark that is acceptable in one class like APPLE for
computer hardware in IC9 would not be acceptable for registration in
IC31 for a fresh, red fruit.

There are certain trademarks, however, that are so well known and so
well associated with one source that they are considered famous and, in
many jurisdictions, offered special protections.  These protections
typically fall under the heading of "anti-dilution" laws.

In my mind, gTLD issue is an amplification of the dilution argument.
What what makes certain trademarks so famous and so powerful in the
market place that a consumer typing in lori.yahoo  or robin.google would
think that Yahoo! or Google were administering that top level domain?
Or to take another example, that someone typing in milton.olympics or
would think that they will find events or information sponsored by the
ISOC.  To use a noncom example. Is it reasonable for a consumer to
expect that typing in mawaki.redcross will bring her to a redcross
sponsored site?

Honestly, I think that there are only a handful of trademarks that would
rise to the level of fame and consumer association with one particular
source that would merit recognition as needing protection in the gTLD
market but I think it's unrealistic not acknowledge it in the policy. I
would be against removing all reference to trademark rights.  I am
strongly in favor of recognizing that there must be balance between
trademark rights and free speech rights.

What I find curious in the "trademark v. free speech" debate that I hear
in the name space is that both sides seems to forget that trademark laws
exist for CONSUMER PROTECTION not to enrich trademark owners and not to
hamper free speech.  The idea is that a consumer should have confidence
that a product or service that she is buying is coming from the source
that she expects and is of consistent quality.  Typically trademark use
is identified at the point of sale...i.e. product labeling, packaging,
and in the case of services -- advertising materials.

The name space has turned traditional concepts of trademark use on its
head and trademark owners have been struggling to find a balance between
what they have traditionally understood the boundaries of trademark law
to be.

Consumers are also learning that typing in particular phrases may or may
not bring them to where they want to be or bring to pages that come from
the trademark rights holder.

The big policy question is -- if we acknowledge that there may be a
group of marks so famous that consumers typing in a gTLD with that
famous extension would associate all results with that source, where do
we draw the line?  Attempts at creating workable "famous" registries at
the national level have been extremely difficult.  I think it would be
equally difficult at the gTLD level but that doesn't mean that we
shouldn't try to achieve some balance.

I agree with Robin's analysis that the law is absolutely trending away
from overprotecting trademark owners.  However, I will point out the law
is still split in the US and the earlier cases, especially those in the
4th Circuit, do not comport with recent decisions.  The case that is top
of mind is the PETA.ORG case of several years ago.  A critic of the
animal rights group lost the domain after a lawsuit in federal court.
His criticism site used the acronym PETA to connote "People Eating Tasty
Animals" as an obvious parody of "People for the Ethical Treatment of
Animals."  I do not think that the outcome of this case would be the
same if it were tried today but a tension still exists in the US
Circuits.

I will also note that European Courts treat parody much more strictly in
trademark matters.  Trademark owners typically prevail in parody and
criticism cases in European Courts.  (Apologize for the lack of cites
but it has been awhile since I have had to cite cases in this manner.)
In domain and other internet related issues, European Courts tend to be
friendlier toward trademark owners, i.e., Google seems to be prevailing
in the US on the key word issue but losing in European Courts, such as
France. 

I think reconciling what constitutes "free speech" globally will be
challenging.  But we seem to be up to the challenge.

Lori




-----Original Message-----
From: Non-Commercial User Constituency
[mailto:NCUC-DISCUSS at LISTSERV.SYR.EDU] On Behalf Of Mawaki Chango
Sent: Wednesday, June 06, 2007 6:30 PM
To: NCUC-DISCUSS at LISTSERV.SYR.EDU
Subject: Fwd: Re: [gtld-council] Regarding non-commercial interests in
the gTLD market

In connection with the question as to what the situation is in
other legal systems regarding trademark vs. domain name as in
the US court cases cited by Robin in her earlier posting: please
find below a related email I sent to the council list. Chuck,
from RyC, says he rather agree with our amendment to Recom.3,
but would prefer to drop altogether the reference to trademark
rights as well as to the freedom of expression rights.

Anyway, about other legal systems, I'm not lawyer and don't have
the linguistic apparatus to expose this in sound technical
terms, but following the news and discussing with people, I've
come to think that the underlying rationale in those cases
corresponds well to what is known in the French legal system
(and maybe in some others, too) as "class" of trademark.
Trademark rights are not universal, all categories confused.
Calling a style of furniture "Porto" or Bordeaux/Bordelais" is
not an infringement to well-known drink trademarks as if when
one attempts to call those same names (or very close & confusing
variants) some liquors different from those well-known. The
trademark rights pertain to specific, limited, and relevant
domains (classes), leaving the trademark name available for
other purposes in other domains. And until further notice
otherwise, the Internet domain name is not a trademark name.

Mawaki 

Note: forwarded message attached.