Re: [ga] DNSO ICANN board member

["Louise Ferguson" <louise.f@ntlworld.com>]

James and all
Some reactions to James Love's remarks:
- what is your definition of a domain name? On which grounds do you think
> IP is concerned? Do you consider that owning a domain name is the same as
> using it? Which solutions would you propose to get rid legally and fairly
> of cybersquatting?


    When the question is raised 'what do you propose to do about
cybersquatting', you first have to answer the question 'what is a
cybersquatter'. And a trademark lawyer hired by WIPO will not have the same
definition as you or me. When we say we must have a policy to tackle
squatting, he will agree, and you will both believe you agree, but both will
have different idea of what cybersquatting is. Hence the confusion we have
now.

>     From a perspective of national law in most developed countries, I
> think we are past the point where there is a serious effort to assert
> that domain names have nothing to do with trademarks.

They don't have 'nothing to do with' but by their very nature they cannot
map one to one. 42 classes x 200 countries  = a lot of possible registered
marks for a single term, never mind common law marks. Any attempt to map -
and granting rights under UDRP is an attempt to map - can only be fully
resolved either through 42x200 gTLDs, or by the kind of unwieldy suffix
system such as that introduced in Spain (dell-42.es is the only permissible
domain for the owner of brand 'dell' for class 42), which is just driving
more and more people to dot-com.

>
>     From a traditional consumer/public interest perspective, trademark
> rights should protect the public from misleading representations,

This sounds like trademark lawyer or Francis Gurry-speak: trademark owners
do not have the exclusive right to use a term under trademark law. So why
should they be granted such a right under domain name regulation? Use can
only be misleading if for the same class of goods and services, from the 42
international classes. Which is why any trademark registry will allow me to
register the mark 'Dell' or 'Cadbury' or 'Clue' to operate an airline, run a
meatpacking empire or a shoeshine shop (provided the class has not been
registered), and there's nothing anyone can do about it, WHEREAS Dell
Computer, Cadbury chocolates and Hasbro (Clue boadgame) claim under domain
regulation that they and only they have the right to any use of those terms
in domain names. Trademark lawyers are trying to win territory by pulling
the wool over the eyes of people - and most don't seem to realise it's
happening.

> they should also be limited in important ways, to avoid anticompetitive
> uses of trademarks, or to accommodate a number of other important
> values, such as free speech.

Agreed
>
>    Much of the current problems stem from the artifical scarcity of
> TLDs.  If ICANN would permit an expansion of the TLD space, for a
> variety of names and TLD management policies, there would be far less
> need to litigate disputes.

I am in favour of new TLDs, but I beg to differ with this argument.
Litigeous trademark holders will want each and every occurence of a term,
regardless of whether it's .shop, .web or .troll or .poppycock. Proof of
that is the way for eg l'Oreal tries to litigate every domain name with
'vichy' out of existence (it regularly files £100,000 lawsuits against those
registering domains with 'vichy' - and vichy is the name of a town, a radio
station etc (same goes for Chase Manhatten, which forced small software
company Chase Business Solutions in the UK (chase.co.uk) to charge its whole
corporate ID under threat of litigation, and Barcelona City Council, which
is trying to trademark domain names ranging from barcelona.edu - which it
cannot legally use - to barcelona.net, .org, .com etc etc). It's no longer
just a question of trademark holder against non-trademark holder. It's a
powerful organisation (Chase Manhatten etc) against a smaller one, both of
whom probably have legitimate interests and either registered or common law
trademarks.


Give the airline industry .air or .airlines,
> and let them manage it they way they want.

I'm afraid the airlines won't accept that. Everyone now wants dot-com. In
countries such as Spain, everyone registered .es before and is now
registering .com. Barcelona city Council has applied for 10+ trademarks
identical to other people's domain names, including barcelona.es, but who
did it decide to take to WIPO? Barcelona-dot-COM.
They want .es, .org, .net. etc not to use them, but to stop others from
using them. They own 30+ domain names, but most are unused. People like
Pricewaterhouse Coopers own hundreds, others thousands, most unused. The
difference is PWC and the rest are not getting complaints filed under UDRP.

By creating 50 new TLDs, you are not thereby multipying by 50 the possible
domains, unless the trademark lobby is brought under control.


 Let the labor unions have
> .union, or a rival group have .workers, to manage as they want.  Let the
> music industry get .music, the film industry .cinema or .film (or other
> language versions), and then we would not have everyone fighting over
> .com and .org.

See above
>
>     I think the cybersquatting issue is real, particularly now with few
> TLDs.  I can't get cpt.org, an unused domain.

People have the right NOT to use a domain, for 6 months, for 6 years or for
ever. Since when have I been able to take possession of one of your houses
because you don't live in it? Are my rights to do so affected by the number
of houses you own, by how high you let the grass grow, by whether you put
the house up for sale, or by its state of repair? Can it be repossessed if
your mad dog bites the postman, or if you organise demonstrations in your
front yard? No. The key to economics is the word scarcity. Everything is
limited. But most western nations have established a means of allocating
scarce resources through the medium of money. It's called a market. Markets
have been around for a few thousand years.

I own usability101.com. No site built. Why? I bought it in May. It's for
course-based stuff for my MSc in Human-Computer Interaction, which doesn't
start 'til October. It may later develop into something bigger, commercial,
after the course. I have received a serious offer for the name from the US
(he approached me). If I sell the name and buy another not so good one
because I could do with the money to pay the mortgage, am I speculating?
Usability is a widely used word in the world of internet. I later found out
there's a corporation in the US called something like The Usability Corp,
who owns usability.com. No doubt they have trademarks. I do not. The way
things are going, if they felt litigeous, they could grab usability101.com
off me and the .org and .net (if they've been registered) and a thousand
similar domains, under the UDRP. How can I disprove bad faith, when someone
can wave an e-mail in the air showing money being discussed (for all I know,
the guy who made the offer works for them)?; how can I document legitimate
interest when there's nothing on the web site, I have no trademark etc? Why
do domain owners have to prove they are saints? As they say, let he who is
without sin cast the first stone.

Many of the really
> twisted WIPO UDRP decisions are efforts by the panel members to take
> domains away from speculators.

I disagree - many of the really twisted decisions are taking domains away
from legitimate owners. See Marino Porzio's "better rights" and "more
legitimate interests" argument in case 505, for eg. Many of the really
twisted decisions are coming from (I'm sorry to say this), Latin American
and other non-western panellists who don't seem to know anything about the
internet and show every sign of not ever having used it (see, for eg,
Porzio's argument that users would 'expect to see an official body at
barcelona.com and therefore by the mere fact of having any material at that
domain the domain owner is demonstrating bad faith')

Unfortunately, in their efforts to
> attack the speculators, WIPO panels are creating global trademark policy
> that is far too restrictive, in term of the public's rights.

WIPO panels are not creating global trademark policy. They are creating
global domain name policy.
For
> example, in several cases WIPO panels take away generic names and award
> them to firms that have registered trademarks that use the generic
> name.

thus giving trademark holders more rights over domains than trademark law
gives them in the 'meat' world. See above.

 WIPO panels have been very aggressive with respect to the issue
> of what constitutes a confusingly similiar name.  The notion that
> natwest.com will be confused with natwestsucks.com is absurd, of course,
> but so are the decisions in domains such as catmachine.com and
> caterpillar, crew and jcrew and others.

But what else can you expect when you give trademark lawyers the job of
panellists? This is a fundamental problem with the UDRP. Panellists should
be disinterested neutrals, not people regularly hired to pursue IP claims on
behalf of corporate clients. It's like asking lions to look after a herd of
gazelles, and then wondering why they ate them....
>
> Decisions like kwasizabantu.org
> (http://lists.essential.org/pipermail/random-bits/2000-August/000260.html)
> are particularly troubling, where the WIPO panel flatly rejected free
> speech or critiscim as a legitimate use for a domain.   In my opinion,
> the ICANN board has to be more responsive to the problems with the
> UDRP.  I would push for a clearer statement regarding the public's
> rights in these disputes, particularly in the areas of the public's
> rights to use names of firms, products or organizations in a domain that
> was used for criticsm (walmartsucks.com), parody, organizing
> (exxon.union), or for competitive purposes, such as comparisons of rival
> products (cokevpepsi.comparison, aolflaws.com, etc).
>
Hear, hear.

Louise Ferguson
louise.f@ntlworld.com.


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