Re: Domain Names and Trademarks

[Bill Lovell <wsl@cerebalaw.com>]

Martin B. Schwimmer wrote:
> 
> KathyrnKL@aol.com wrote:
> 
> "according to all studies conducting of the
> Internet, the vast majority of use is for noncommercial purposes -- email,
> chat rooms, research, education.  The vast majority of domain names are also
> for noncommercial purposes:  personal websites, political websites, community
> organization websites, email, FTP sites, etc. In the real world, these
> noncommercial users of words do not have to preclear their use of any terms or
> titles with a central Trademark office anywhere. For such a requirement to
> exist in cyberspace would be a great burden on speech worldwide."
> 
> Could you please provide citations to "all studies"  Maybe it is a
> semantical difference but if you look at the measure of activity - hits -
> it seems that the most popular sites - yahoo.com, the various search
> engines, cnn.com, amazon.com - are all commercial enterprises.  If you use
> altavista to do educational research, your personal use is educational but
> altavista's use of the domain name is very very commercial, and someone who
> adopts a mis-spelling of altavista (do a whois search of the names owned by
> Data Arts, which specializes in mis-spellings) would appear to be
> benefitting from DEC's goodwill in the ALTAVISTA mark and domain name.

This seems to be a semantic difference in statistical terms, i.e.,
"mean,"
"median," and "mode."  The "mode" in terms of hits would clearly be
yahoo
and the like, but in terms of the "mean" of general usage KathrynKL is 
probably right.

And as it happens, Alta Vista had to buy the altavista.com domain name
from a previous registrant for some $2.3 million, as I recall from the
public accounts.  Evidently the original registrant had a legitimate
right to the name in the trademark sense, and was in no sense a cyber-
squatter, but yet so much mileage is put on the issue of a company 
being able to use its very own name as a domain name that we get these
ridiculous situations.  Again, I lay the responsibility for this mess
onto Network Solutions, Inc., which first made the trademark-domain name
connection with its policies, although I readily acknowledge that if
they
had not thought of it, someone else no doubt would have.  In any case,
the 
view now exists that the use of a domain name IS a trademark use and can 
be infringing if other conditions (i.e., likelihood of confusion) are
met, 
and that should really never have come about.  Trademark infringement is 
but one means of committing an unfair trade practice, and it might have 
been better to proceed on other theories such as interference with a 
business relationship, commercial libel, or so on, and leave trademark
law out of it. (But don't hold me to that -- I'm just thinking out
loud.)
> 
> While it is not readily apparent why harmonizing the DNS with trademark law
> is an unnecessary burden on speech - after all, in this discussion group
> you were not prevented from making political speech using the aol.com
> domain name - perhaps clearly labeled "personal" or "non-commercial" gTLDs
> that did not require pre-clearing, while commercial gTLDs would be subject
> to pre-clearing - would represent the accomodation of non-commercial use
> and the pre-existing trademark rights of the world's businesses?  If
> non-commercial use is in fact responsible for the vast majority of domain
> names, then the for-profit registries would back this proposal.  If their
> interest is in accomodating name speculators, then they might not.

Put another way, if Network Solutions had kept .com to mean commercial,
.org to mean a non-profit organization, things would have been better,
and
I agree. (I would personally like to see four-letter domain names, one
of
which would be .porn -- we are not in Windows 3.1 any more -- that could 
then easily be blocked.) However, what is to prevent anyone from
registering 
a non-commercial domain and then blatantly using it for commercial
purposes? 
Who wants to try to police the net?
> 
William S. Lovell