As a metaphor and not necessarily a legal parallel except in the extended sense, there was a law in the United Kingdom, repealed in 1904 I believe, requiring a man with a red flag to walk in front of any motor vehicle, not to frighten the horses. That was a bad law, excessively in the interests of horseowners, who wanted to maintain their peace, quiet, status and presumably the resale value of their mounts. As subsequent events proved, it was not only a bad law, it wasn't even in horseowners' long-term interest. Most horseowners came to see that they wanted a car and a horse, and a box to put the horse in behind the car, and grumpily agreed over the gin that they really did quite like Bentleys, Cadillacs and those wonderful 4x4s for attaching the horsebox to.
It is, I think, quite possible to argue the contrarian view to Mr Fenello's conclusion that the realities of trademark holders and the rest of the world diverge irreconciliably; indeed, were trademark holders able to perceive that a complex, dynamic, everchanging and vastly extended market for domains is to their advantage, that if they can not only hold, but buy, sell, stock, differentiate, market all flavours, hold one strong central mark, extend it, add to it, dispose of parts of it, they would be able to reconcile their conservatism with the get-on-and do-it gusto of the ecommerce dns extenders. It is of course conceivable that this is an argument for trademark lawyers rather than holders, but I am sure if the former were fully convinced of the benefits, they could apply their able advocacy to the matter in respect of the latter, to the benefit of the latter. Which is what it is all about. I should be delighted to put this to the test by explaining these advantages to a given set of trademark holders directly to gain their reaction, even if this is somewhat post hoc.
I stand corrected if someone tells me the above law is still on the
statute book. I deplore my lack of conciseness alongside Mr Fenello's
admirable clarity.
MM
Jay Fenello wrote:
This exchange highlights the problems existing
between Trademarks and Domain Names, and it frames
the debate over adding new gTLDs.On one side of this debate, you have the Trademark
community.In their attempt to completely protect a Trademark
from any infringement, real or imagined, large
trademark owners have been attempting to "lock
up" their name in every conceivable permutation.Continuing the example used below:
pizzahut.com pizzahut.org pizzahut.net
pizzahut.to pizzahut.nu pizzahut.co.jp
pizza-hut.com pizza-hut.org pizza-hut.net
pizza-hut.to pizza-hut.nu pizza-hut.co.jp
etc. etc. etc.And if there were 10 permutations to a trademark
(i.e. pizzahut, pizza-hut, etc.), and there were
250 or so TLDs, then these large trademark owners
would have to register 2500 domain names to
protect their mark.Continuing this line of reasoning to the absurd,
if there were 100 sub-domains per TLD that *might*
be confusing, these same interests would want to
"lock up" those names as well. For example:
pizzahut.restaurant.com pizzahut.food.com
pizza-hut.restaurant.com pizza-hut.food.com
pizzahut.restaurant.to pizzahut.food.to
pizza-hut.restaurant.to pizza-hut.food.toDoing the math, if there were 10 permutations,
in 100 sub-domains, in 250 TLDs, then these large
trademark owners would have to register 250,000
domain names to protect their mark!!!Under this scenario, every new TLD would require a
trademark owner to register 1,000 new domain names,
with an ongoing commitment to monitor another name
space.Is it any wonder that they do not want any more
TLDS????On the other side of this debate, you have those
who look at the world in more pragmatic terms (yes,
these *are* biased opinions :-). You have those
who fear the process described above, in effect,
has negative implications on freedom of speechand control of language issues.
You also have those who realize that this process
is NOT consistent with the way Trademarks exist in
the real world. For example, Trademark owners today
accept multiple, similar (but non confusing) uses for
their trademarks! For example, Acme Tires, Acme
Rubber, Acme Chemicals, etc. They even accept
similar *and* confusing marks, as long as they
exist in different jurisdictions.This frames the meta-issue that underlies the whole
DNS fiasco. Both sides are driven by their respective
realities, and both sides are correct.For example, those who want to expand the name space
believe that adding new gTLDs will provide additional
diversity that will *diminish* the battles over good
domain names. And they are correct, of course, unless
the trademark interests simply purchase and/or regulate
these new domain names to protect their marks.IMHO, the world would be a better place if we could
all agree that Trademarks and Domain Names interface
as an integrated whole, *not* based on each level of
the domain name. In other words, the entire domain
name can be a trademark, but a trademark is not
automatically a domain name.For example, Amazon.com is a domain name as well as
a trademark. IBM, a trademark, is not automatically
a domain name like IBM.TLD, nor is IBM.SLD.TLD, nor
is IBM.3LD.SLD.TLD, etc. Normal trademark rules
should apply to qualifying the latter.Finally, I also suggest that we embrace market
mechanisms to allocate desirable domain names,
not regulation.Respectfully,
Jay Fenello
President, Iperdome, Inc.
404-943-0524 http://www.iperdome.comAt 2/19/99, 02:48 PM, 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).
>
--
Mark Measday
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