[gnso-rn-wg] RE: [gtld-council] NCUC proposals to amend gnso recommendations on new gtld policy

["Mike Rodenbaugh" <mxr@xxxxxxxxxxxxx>]

This is a rather silly discussion if it is predicated on the notion that
a non-profit will want to own and operate a TLD, corresponding to a
well-known trademark, for some non-commercial purpose.  It would be an
extremely ridiculous NGO that wanted to spend tens or hundreds of
thousands of dollars to own and operate a TLD for the purpose of
criticizing one company, when it could spend under $100 for any number
of other domain name options.  

The only TLDs that non-profit entities are likely to want are TLDs that
correspond to their trademarks, for the same reasons that other
well-known trademark owners might want a corresponding TLD.  

Is the NCUC aware of any specific organization interested in registering
a 'gripe TLD'?  Assuming so, I think ICANN would make a much more
reasonable decision to disallow that because activity of registering
domains for others (the function of a registry, after all) would be
inherently commercial, and would be confusing and an aid to criminals as
previously stated.

Mike Rodenbaugh

Sr. Legal Director

Yahoo! Inc.

 

NOTICE:  This communication is confidential and may be protected by
attorney-client and/or work product privilege.  If you are not the
intended recipient, please notify me by reply, and delete this
communication and any attachments.


-----Original Message-----
From: Robin Gross [mailto:robin@xxxxxxxxxxxxx] 
Sent: Monday, June 04, 2007 5:59 PM
To: Mike Rodenbaugh
Cc: gtld-council@xxxxxxxxxxxxxx; gnso-rn-wg@xxxxxxxxx
Subject: Re: [gtld-council] NCUC proposals to amend gnso recommendations
on new gtld policy

There are at least 2 faulty assumptions in your statement.  You assume 
that all tlds will be businesses, but surely nonprofits will want to 
apply for tlds and there are countless other non-commercial 
possibilities.  A consumer watch-dog group that monitors irresponsible 
corporate behavior may want to register a tld such as ".enron" to 
provide the public with information about Enron, Inc.  The NGO would not

violate any trademark rules as the case law makes clear since people 
have a free expression right to use a trademark to discuss a company or 
its products.

The other faulty assumption is that the law would treat a top-level 
domain differently from other domains and grant a lower level of 
protection for free expression at the top-level.   There is no legal 
precedent to support that argument.

Robin


Mike Rodenbaugh wrote:

>None of those cases are on point, all involve 2d or higher-level
>domains.  I do not dispute that there are many non-commercial uses of
>trademarks that are legit.  On the other hand, operating a TLD that
>corresponds to a well-known trademark, without consent of trademark
>holder, would be an inherently commercial activity likely to cause
>confusion and enable criminal conduct.  Such commercial activity would
>not be protected by any of the precedents you cite, or any other
>principal of law that I am aware of.
>
>Mike Rodenbaugh
>
>Sr. Legal Director
>
>Yahoo! Inc.
>
> 
>
>NOTICE:  This communication is confidential and may be protected by
>attorney-client and/or work product privilege.  If you are not the
>intended recipient, please notify me by reply, and delete this
>communication and any attachments.
>
>
>-----Original Message-----
>From: Robin Gross [mailto:robin@xxxxxxxxxxxxx] 
>Sent: Monday, June 04, 2007 4:08 PM
>To: Mike Rodenbaugh
>Cc: gtld-council@xxxxxxxxxxxxxx; gnso-rn-wg@xxxxxxxxx
>Subject: Re: [gtld-council] NCUC proposals to amend gnso
recommendations
>on new gtld policy
>
>Hi Mike,
>
>Well US courts have consistently disagreed with your view and ruled
that
>
>there are numerous lawful uses of a trademark in a domain name by 
>someone other than a trademark holder.  Trademark law has never granted

>a monopoly on language.  It only regulates specific uses of words or 
>symbols, and only commercial uses.  Non-commercial expression is not 
>regulated by trademark rules under the law.
>
>One of the most cited US legal precedents to examine the boundary of 
>free expression rights and trademark rights is Taubman v. Webfeats 319 
>F.3d 770 (6th Circuit 2003), an early "cyber-gripe case".   The court 
>explained, "we will first explain the interrelation between the First 
>Amendment and the Lanham Act. ... The Lanham Act is constitutional 
>because it only regulates commercial speech, which is entitled to 
>reduced protections under the First Amendment."   In Taubman the 
>appellate court held that many expressions of a mark were not a 
>'trademark use' and not likely to cause confusion and  therefore 
>"outside the jurisdiction of the Lanham Act and necessarily protected
by
>
>the First Amendment." 
>
>The 6th Circuit spoke directly to our issue, "The rooftops of our past 
>have evolved into the Internet domain names of our present.  We find 
>that the domain name is a type of public expression, no different in 
>scope than a billboard or a pulpit, and [defendant] has a First 
>Amendment right to express his opinion about [plaintiff], as long as
his
>
>speech is not commercially misleading, the Lanham Act cannot be
summoned
>
>to prevent it."  Taubman explicitly held there First Amendment 
>protection to use a trademark in a domain name to criticize a business.
>
>See:
>  http://pacer.ca6.uscourts.gov/cgi-bin/getopn.pl?OPINION=03a0043p.06
>
>Another US circuit, the 9th, has also set similar precedent in Bosley 
>Med. Inst. v. Kremer, 403 F.3d 672 (9th Cir. 2005) over a
non-commercial
>
>gripe-site using a trademark in its domain name.  Again the court
agreed
>
>that the non-commercial expression of opinion was not a "trademark use"

>subject to regulation by the mark holder. "[Defendant] is not 
>[plaintiff's] competitor; he is their critic.  His use of [plaintiff's]

>mark is not in connection with a sale of goods or service - it is in 
>connection with the expression of his opinion about [plaintiff's] goods

>and services.  [Plaintiff] cannot use the Lanham Act either as a shield

>from ... criticism, or as a sword to shut [defendant] up."
>See:
> 
>http://www.ca9.uscourts.gov/ca9/newopinions.nsf/3B0C93358B88F28D88256FD
9
>0056994B/$file/0455962.pdf?openelement
>
>The US 2nd Circuit has also provided strong protection for
noncommercial
>
>speech and recognized that words and phrases are used in many different

>ways in a digital environment, to serve differing goals, and that not 
>all of these uses are controlled by trademark law.  In 1-800 Contacts
v.
>
>WhenU.com 414 F3d 400 (2d Cir. 2005), the 2nd Circuit ruled that the 
>vast majority of such uses were outside the scope of trademark law and 
>only those specific uses visually associated with the sale of 
>goods/services could be regulated by trademark. 
>See:
>www.eff.org/legal/cases/1800*contacts*_v_whenu/decision.pdf
> 
>So the US law is clear in permitting numerous non-commercial uses of a 
>trademark in a domain name, to discuss, criticize, compare, provide 
>general information about a company or  product.  Freedom of expression

>is a legally recognized value that trademark rights do not supersede.

>The current gnso draft recommendations diverge significantly from the 
>law on this point.
>
>Robin
>
>Mike Rodenbaugh wrote:
>
>  
>
>>I disagree with the NCUC's suggested change to Reco #3.  There are
>>    
>>
>ample
>  
>
>>numbers of 2d and higher lever domains that can be used for freedom of
>>expression, with exponentially more to come.  NCUC seems to suggest
>>    
>>
>that
>  
>
>>some prospective TLD operator would want to run an entire TLD full of
>>gripe sites as to one trademark.  Such a business would not be
>>    
>>
>protected
>  
>
>>under the guise of 'freedom of expression' under any nation's law that
>>    
>>
>I
>  
>
>>am aware of.  
>>
>>The current Reco is tied to a core ICANN value of protecting security
>>and stability.  If a TLD corresponding to a well-known trademark were
>>awarded to any entity other than the trademark owner, it is highly
>>likely that many users would be confused and placed at higher risk of
>>crime through activity at that TLD.  This is the same security and
>>stability concern that underlies the UDRP, as to 2d level and higher
>>domains.
>>
>>
>>Mike Rodenbaugh
>>
>>Sr. Legal Director
>>
>>Yahoo! Inc.
>>
>>
>>
>>NOTICE:  This communication is confidential and may be protected by
>>attorney-client and/or work product privilege.  If you are not the
>>intended recipient, please notify me by reply, and delete this
>>communication and any attachments.
>>
>>
>>-----Original Message-----
>>From: owner-gtld-council@xxxxxxxxxxxxxx
>>[mailto:owner-gtld-council@xxxxxxxxxxxxxx] On Behalf Of Robin Gross
>>Sent: Saturday, June 02, 2007 10:23 AM
>>To: gtld-council@xxxxxxxxxxxxxx
>>Subject: [gtld-council] NCUC proposals to amend gnso recommendations
on
>>new gtld policy
>>
>>NCUC has developed 5 new proposals to amend the draft gnso 
>>recommendations on new gtld policy.  
>>
>>These proposals are meant to give some recognition to freedom of 
>>expression values in our recommendations.  The proposals also address 
>>concerns about ICANN becoming enmeshed in national policy debates and 
>>would keep the Internet core neutral of such conflicts. 
>>
>>The 5 proposals are not meant to be accepted only as a package, but 
>>should be considered individually also.
>>
>>NCUC proposals to amend draft GNSO recommendations:
>> http://www.ipjustice.org/ICANN/062007.html
>>
>>I welcome an opportunity to discuss the amendments at greater length
>>    
>>
>and
>  
>
>>will try to answer any questions you may have on them.
>>
>>Thank you for considering them.
>>
>>Best,
>>Robin
>>
>>
>>
>> 
>>
>>    
>>
>
>
>
>  
>