Re: Domain Names and Trademarks

["Martin B. Schwimmer" <martys@interport.net>]

This is a re-posting of my earlier message entitled "Nike and Consumer
Confusion."  I am re-posting it so that it appears under the original
thread - Domain Names and Trademarks

I have been trying in this thread to put forth basic elements of trademark
law, in this case the scope of protection of a famous mark, and the manner
in which trademark law has developed a likelihood of confusion analysis, as
a model for a flexible form of dispute resolution for domain names.


At 03:19 PM 8/14/98 -0400, Milton Mueller wrote:
>martymel@interport.net wrote:
>
>> It is not by industry - it is by likelihood of confusion.  The use of
>> NIKE on sunglasses would be barred, whether or not Nike was selling
>> sunglasses.  That is because a consumer would expect a connection
>> between NIKE brand sunglasses, and Nike, the company.
>
>The word "Nike" is the Greek word for the Goddess of Victory. It is a
common term that >was appropriated by a shoe maker and made into a famous
shoe brand. But the word can >appear in many other contexts
>unrelated to the US shoe maker. One could name a sports team using the
word, one could >form a Greek mythology study society, or one could name
another product after it in a >market--and a
>language--totally unrelated to the American shoe maker and its typography
or logos. All >of this should be perfectly legal and easy to do.

>Apparently, "martymel" believes that the shoe corporation has a legitimate
right to pre->empt the character string "nike" in all second-level domains,
just as its "famousness" >should allow it to
>pre-empt its use on any sportswear, regardless of whether Nike itself
manufactures it. >The WIPO RFC, in section 4B, explicitly raises the issue
of protecting such "famous" >names in all gTLDs.
>


No, I do not apparently believe that, that is your strawman argument.  I do
not advocate that all famous marks should pre-empt all usages in all
domains, especially the hypothetical domains (.arts) which you posit.


I do believe that some marks should prevail in virtually all gTLDs.
BERT-AND-ERNIE or COOKIE MONSTER for example (although the idea of
cookiemonster.mil is appealing).

I also believe that in order to determine a proper dispute resolution
mechanism, that we look at how trademark law around the world deals with an
analogous problem.  

I believe that in the 142 countries which belong to the Paris Convention
for the Protection of Industrial Property, Nike will be able to prevent
trademark registration of NIKE by third parties on a wide range of goods
depending on how that country implements its treaties obligations, Nike's
ability to prove fame in that particular jurisdiction, and the goods in
question.  

In many jurisdictions, Nike would likely be able to prevent the use of NIKE
on, for example sunglasses and athletic bags most of the time, even if Nike
didn't manufacture those items, if it could show that consumers beleived
that such goods originated with NIKE.  

Nike would likely fail against the use of Nike for ball bearings and video
streaming software.  So trademark law is not a rigged system where the big
trademark owner wins all the time.

And I think that under certain circumstances, NIKE would be unable to stop
the use of NIKE for footwear, because some jurisdictions still favor local
counterfeitors.

In any event, Nike probably wouldn't care and likely couldn't stop a
Hellenic study group using NIKE to name itself and would unlikely have any
rights (unless the study group started selling sneakers).

You raise the issue of a hypothetical .arts gTLD.  

If such a gTLD existed, and requirements for commercial utilization of that
gTLD were articulated and agreed to by the registrant (for example, use had
something to do with art), and the owner of nike.art abided by these
requriements (i.e. it didn't sell sportswear) then Nike probably would not
care and probably would not be able to do anything about it because, under
these specific hypothetical circumstances, there would be no likelihood of
confusion, and, under U.S. law, probably no dilution.  

An important point here is that the third-party ownership of nike.art would
not foreclose Nike from utilizing its own famous mark.

By the way, Mr. Lovell raises the issue of mis-use of domains.  I think his
point illustrates, among other problems, how for-profit registries are not
motivated to enforce any rule which limits the number of registrations it
processes.

Incidentally, I have no affiliation with Nike and am currently wearing New
Balance shoes.




>Likelihood of confusion is a trickier issue that the statement above makes
it appear to be. It is possible for a consumer to be temporarily confused
by a domain name without raising any serious
>trademark issues. For example, if I want to go to the Nike shoe web site
but end up at a site, "nike.art" say, with a collection of reproductions of
the famous marble sculpture of the Greek goddess, I
>have exhibited confusion. But since there is no real confusion between the
products, and the sculpture site is not pretending to BE the shoe maker,
there is no intellectual property issue here at all.
>I simply continue my search.


Likelihood of confusion is indeed a tricky issue.  Reasonable minds differ
on how to resolve specific fact patterns and countries apply (and refer to)
the test differently from country to country.  

Tha is not an argument against applying the test, it merely shows that
fairness is not always easy.

I doubt that NSI (or would-be competitors) can do it properly.  The absence
of this determination is why some parties were able to practice what has
been referred to as reverse domain name highjacking.  The owners of the
POKEY mark would not have been able to prevailing against the
non-infringing use of POKEY.

Nevertheless, the requirements of fairness in domain name allocation
requires some type of confusion determination.  National courts are one
solution, but they are an expensive, slow option.  I recommend that new
IANA swfitly seeks an expedited form of dispute resolution.
>



>Let us make a clear distinction, then, between the *exploitation* of
consumer confusion by trademark infringers, and the kind of misdirection or
temporary confusion that (in the absence of better
>directories and catalogues) is bound to occur as the Internet domain name
space grows more complex.



Explain how the clear distinction works when I adopt a mis-spelling of
amazon.com, and put a link to barnesandnoble.com on the page (purely
hypothetical situation).


>The "famous" trademark owners are, deliberately I think, conflating these
two types of confusion in order to gain extraordinary expansions of their
rights in the name space. In effect, they are
>claiming that their trademark rights are violated whenever anyone who
wants to find their site ends up at a different domain name.


This is more strawman stuff.



 >This is nonsense. There is nothing in trademark law, or in general
>concepts of justice, that require public communication media to be
structured to _guarantee_ mark owners that their mark must be easily found
by anyone trying to find it.


But they are guaranteed that third parties can't deliberately trade off
those rights.


 >Brand owners must assume the
>responsibility of marketing their brand. This costs money. Tough luck!


Tough luck that it costs money for legitimate brand-building or tough luck
that criminals and infringers violate their rights and that that costs
money?   


>Fame costs money to maintain; usually the rewards are worth it. Yes, it
would be less expensive for brand owners to publicize
>their web sites if the Internet were organized to give them ownership
rights over a character string and any combination of character strings
that remotely resembles their brand name. But the Internet
>does not exist to serve trademark holders.
>
>Granting famous name holders pre-emptive rights over names in all SLDs is
wrong, for the following reasons:
>    * It privileges trademark rights over communication and information
rights; i.e., it declares, without any factual findings, that any usage of
the character string "nike" by anybody in any way is
>illegal. There is no legal or moral basis for such a claim.
>    * It privileges Western multinationals to the exclusion of developing
economies by allowing generic terms to be "owned" by currently developed
economies. Basically, existing firms get to colonize
>the name space in a privileged fashion and exclude newcomers.


Quote the source for your statement that famous mark owners want
pre-emptive rights in all SLDs (without having to prove harm in that
particular SLD).

Even if your reasoning is correct, it is still a strawman argument because
it is premature.  Let's talk about gTLDs not in the abstract, before we
know what the gTLD is, how it will operate, who may own a domain name in
it.  Commercially oriented gTLDs have to be treated differently for
non-commercially oriented gTLDs in terms of whether procedure and dispute
resolution.  The consumer may react one way to turner.news and another way
to turner.name (assuming people don't abuse gTLD distinctions). Let's hear
a proposal.

 But take into account that it depends on the domain name.  I cannot think
of a bona fide reason for a third party to obtain msnbc. I think msnbc.com,
msnbc.art, msnbc.rec, msnbc.info, msnbc.shop, and msnbc.mueller, all
suggest a connection or endorsement with msnbc.  Can you think of a gTLD
system that handles this situation?



mbs