Trademarks are completely inappropriate for ICANN jurisdiction

[Dan Krimm <dan@xxxxxxxxxxxxxxxx>]

In response to Mr. Chua, ICANN is an entirely inappropriate jurisdiction to
address trademark regulation, for several reasons.


 (1) ICANN can only establish unified global policies on gTLDS, because
gTLDs are universally global in reach.  However, trademark law is
intrinsically territorial and market-sector driven.  A trademark that
applies in one region may not apply in another region, and a trademark that
applies in one market sector may not apply in another market sector.  Would
".discover" apply to Discover Magazine (Disney Publishing), or the Discover
credit card (Discover Financial Services), or the Discovery Channel on U.S.
cable TV (Discovery Communications) or something else?  And would those
trademarks apply outside the U.S.?

ICANN is not in a position to resolve such territorial and market-sectoral
conflicts, yet any policy on TLDs that must necessarily have global reach
across the global Internet.  It is literally impossible to create a "rights
protection mechanism" (RPM) that will do justice to trademarks on a global
basis, based on the current legal regime of trademark law.

If anyone is to create a new and unprecedented globally-based legal regime
for trademarks, ICANN is certainly not in a position to do so with expert
capacity and legal authority.  As Prof. Mueller stated earlier in this
comment period: "Legal and other conflicts over those names should be
handled outside the ICANN process, ex post, relying on national and agreed
international law."

ICANN simply lacks the institutional capacity and competence to establish
any globally-based RPM for trademarks.  Perhaps this ought to be referred
to WIPO instead.


 (2) Domain names are qualitatively very different from trademarks, and
there is no reason "a priori" that domains should be expected to be covered
under the legal regime of trademark protection.

In the first place, trademark protection hinges on the subjective
impressions of "typical" consumers, with regard to potential confusion of
products and services.  Part of the inherent difficulty in devising a
global regime for trademark protection is that it would require the
definition of a "global public" according to which standards the regulation
would be applied.  But, because of the vast diversity of culture and
remaining boundaries separating various regional communities, there is no
such "global public" to appeal to in any effort to devise such a global
trademark regime.

ICANN is certainly not in a position to resolve this deep and intractable
legal conundrum on its own.


 (3) In the second place, trademarks are intrinsically context-dependent,
whereas domains are intrinsically abstract in nature.

Trademark rights cannot be applied without reference to a particular
commercial-use context, because that context is ineliminable in determining
whether there could be confusion to a typical consumer.

Domains exist simply as strings, and may be used for all sorts of purposes,
commercial and non-commercial.  It is impossible to determine such use in
the case of a single gTLD, as use can only be determined at the
second-level domain level, in connection with the design and content of a
particular web site, etc.

Domain names and trademarks are simply "apples and oranges" and there is no
reason to think that they should be equated (and good reason to think they
should not be equated).


     The claim that the lack of an RPM for trademarks within the ICANN gTLD
approval process would lead to any "abuse in the [gTLD] registration
process" seems unlikely at best.  One would first need to define what could
possibly constitute such "abuse" for gTLDs, and that is already
questionable given the difference in nature of trademarks and domain names.
The burden of proof is on those who claim that such abuse could exist in
the first place, and they must describe such abuse in tangible terms before
it can even be considered properly.  While a particular use of a trademark
on a particular web site could certainly be infringing, based on use
context and regional scope, that determination can only be made ex post in
a national court of law, and is impossible to predict in any ex ante
registration process for the domain name itself.  In the case of gTLDs,
there is no way to predict the use cases such that any trademark regulation
regime could be applied to it ex ante.

The IPC seems to be claiming some fictitious rights that simply do not
exist in current national and international law, when it comes to
evaluating domain names on their own merits, and therefore such claims
should be entirely ignored in this policy-making process, and in the
approval policy itself when finalized.