[NCUC-DISCUSS] On individual domain name owner's rights / non-trademarked names

Tue Dec 30 16:53:22 CET 2014

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.

From my previous note on geographic names:

> We *individual *(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.
>
> 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. 

A *trademark *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'.

All of the current domain name ownership/dispute mechanisms and
discussions are based on *trademark *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.

I use '*individual domain name holder*' 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.

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.

_Individual domain name holders:_

  * *Can't obtain a trademark*, 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.
  * Even if a *trademark *could be obtained, the *expense is
    non-trivial*: 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 *continuous
    use of the mark in trade*, and file various documents to maintain
    the mark.  And add attorney's fees (which are often essential), and
    it's well /out of reach of the individual hobbyist, advocate or
    small business/.
  * Have *no protection against a trademark holder who decides to
    appropriate one of our domain names*
      o No matter how long we've held the name (even prior to the
        registration of the mark)
      o No matter what TLD the name is in
      o No matter what investment we've made, what it would cost to
        change, or the impact on our users
      o We can argue that our use doesn't 'create confusion' with the
        mark - but this is difficult/expensive -- beyond the means of
        most individuals
      o Objections can come from anywhere in the world;
        negotiation/litigation can require extended personal presence
        and/or representation

_The bottom line is that the individual domain name holder:_

  * when confronted by a trademark owner, *has no enforcible rights* to
    the domain names that they select
  * *is non-commercial*, included in the NCSG/NCUC charters, which
    organizations should represent and advocate for us
  * *has not been successful in gaining the attention of NCSG/NCUC*, 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.
  * by our charters, is assumed to be a significant enough constituency
    that we have fewer votes/individual than organizations. 

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**vri.doria.org* <http://avri.doria.org>. 
It turns out that *doria.org* 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 *doria.org*
before Tucows.  And let's assume that she has no trademark in her name.

It turns out that there's another rather famous /Doria /in her
neighborhood, though I don't think they're related.  See
*www.andreadoria.org* <http://www.andreadoria.org>.  :-)  Now let's
suppose that this organization has found a way to monetize diving on the
site(4) and decides that *andrea.doria.org* 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.

Of course, there's the other Doria family
(http://en.wikipedia.org/wiki/Doria_(family)
<http://en.wikipedia.org/wiki/Doria_%28family%29>) and its descendants
to contend with.

I predict that (this hypothetical) Avri would lose *doria.org*. 

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. 

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...

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'.

Well, it's a new year.  I can dream.

(1) https://www.icann.org/resources/pages/policy-2012-02-25-en
(2) http://www.uspto.gov/web/offices/ac/qs/ope/fee010114.htm#tm
(3) http://www.wipo.int/madrid/en/fees/sched.html,
http://www.wipo.int/madrid/en/fees/calculator.jsp
(4) The Andrea Doria is a famous shipwreck, though 'site diving' might
be the next internet fad... See http://www.pbs.org/lostliners/andrea.html
(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.

-- 
Timothe Litt
ACM Distinguished Engineer
--------------------------
This communication may not represent the ACM or my employer's views,
if any, on the matters discussed. 

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://lists.ncuc.org/pipermail/ncuc-discuss/attachments/20141230/1b9bfd91/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: smime.p7s
Type: application/pkcs7-signature
Size: 4942 bytes
Desc: S/MIME Cryptographic Signature
URL: <http://lists.ncuc.org/pipermail/ncuc-discuss/attachments/20141230/1b9bfd91/attachment.bin>