Another good example of the blatant irrationality of the assumptions about user
behavior underlying the TM claims. Pizza Hut thinks that it MUST control
"pizza-hut.co.na" exactly why? Because someone, somewhere in the world MIGHT
POSSIBLY type that name in? And because that remote possibility poses an
economic threat to Pizza Hut? No, that is simply not credible. Is it a problem
because in a world of 3000 TLDs, that name would be so valuable that a
cybersquatter would have great leverage over poor Pizza Hut? No, not credible.
The only legit concern is that some unethical person might register that name
and pretend to be Pizza Hut, and sell pizza to unwary consumers. But that kind
of behavior can be easily detected on the Internet and shut down via the
mechanisms of normal trademark law. In fact, it is much easier to
misappropriate a name in meatspace than in cyberspace. I can go photocopy Pizza
Hut materials and go to a print shop and make all kinds of misleading leaflets,
and sell a lot of pizzas in Hong Kong or Japan or Namibia before anyone would
notice. On the Internet, in contrast, searching techniques would make such
behavior quickly detectable.
So what the TM apologists like Schwimmer are claiming is quite extensive. We
used to accuse them of wanting ownership of a character string. Now it's clear
that they want to own the string AND all related combinations that might
possibly be related to it. The claim extends beyond the industry the TM holder
works in and beyond the jurisdiction, and becomes trans-industrial and global
in scope. Pizza Hut now has a right to all related character strings in all
jurisidictions, in all levels of the domain name hierarchy and regardless of
use or degree of confusion. Quite an astounding claim. It certainly bears no
relationship to trademark law.
--MM
Martin B. Schwimmer wrote:
> >>Also, in response to Martin Schwimmer:
> >>
> >>>In other words, if you added .inc, .ltd., .firm, .shop and .store
> >>>tomorrow, then anonymous folks could tomorrow register ebay.inc,
> >>>ebay.ltd, ebay.firm, ebay.shop and ebay.store, all of which, in my
> >>>humble but professional opinion, are likely to create confusion with
> >>>our friends over at ebay.com.
> >>
> >>This seems to be a reasonable concern, given that there is already
> >>quite a bit of registration of companies in ccTLDs. Wouldn't the
> >>companies who are interested in having those names in all (or even
> >>most) TLDs pursue the same avenues they are pursuing in the existing
> >>gTLDs?
> >>
> >>--gregbo
> >
> If I understand your question correctly:
>
> TM owners are utilizing services like netnames or namestake to obtain as
> many ccTLD versions of their TMs as they can reasonably afford, although it
> adds up - especially since a company may need to acquire several names in a
> particular ccTLD (because of reserved second level DNs (i.e. .co.jp). But
> that's just for one trademark. Many companies have more than one trademark
> or trading name they may wish to protect. And if the company's trademark
> consists of two words and they have to worry about variants
> (pizzahut.co.jp, pizza-hut.co.jp, pizzahut.jp, pizza-hut.jp) a block-out
> strategy becomes economically impossible for all but the largest companies.
> (note the irony that an original appeal of a gTLD was that you only needed
> one name and anybody in the world could get in touch with you).
>
> So if there was a huge number of undifferentiated gTLDS requiring
> registration of pizzahut.firm, pizza-hut.firm, etc., well, let's put it one
> way. Pizza Hut would likely oppose such a scenario and you couldn't
> criticize them for not putting ORSC's interests first. (p.s. The views
> expressed herein are not necessarily those of Pizza Hut, which was the
> first well known two word trademark I could think of. When in New York,
> you may wish to try pizza at John's, with locations on Bleeker Street in
> the Village and one on the West Side off Columbus).
