Anne Gundelfinger writes:>I am Senior Counsel for
marketing legal issues, as well as Director of Trademarks and Brands, for Intel Corporation.
I am commenting on several of the issues raised on the question of adding new gTLDs.<
Are
your suggestions personal or Intel's position? Not trying to be a jerk, just curious.
>Third,
the new gTLDs should absolutely be subject to the UDRP. UDRP principles should
apply to all gTLDs, regardless of whether open or restricted. Of course the
nature of a particular gTLD may impact the outcome of cases in that gTLD, but the
UDRP should apply nevertheless.<
How does one make use of the UDRP differently
for different gTLD's? Would a hypothetical .pers(onal) or .fam(ily) domain be policed
for anyone registering MacDonalds? How does one police but to a lesser extent?
>The
UDRP is proving to be an effective tool for resolving the most egregious cybersquatting
problems and intellectual property infringements, while leaving the tougher legal
calls to the courts and/or to negotiation between the parties.<
This I strongly
disagree with for numerous reasons. I'll rant about that elsewhere, for now one example,
you also state:
>As these are generic words, another person's registration of them
in new gTLDs would not constitute infringement or cybersquatting, given that there
can be no trademark rights established in generic words, regardless of length or
extent of use.<
There are numerous (perhaps even the majority of) UDRP rulings
which run counter to this. How is it that you see the UDRP as effective?
>A sunrise
(early registration) system would relieve the infrastructure of any obligation to
"police" domain name applications.<
How does one know whom to allow as an early
registrant without policing the system? Surely the honors system wouldn't work, it
would take somebody or some body to act as gatekeeper. If there is a gatekeeper mechanism
to be put in place, why can that function not also handle whom is allowed where?
For example, with a chartered restricted TLD, either like .airline or using the
.reg suggestion or some combination thereof, there is presumably some means of proving
without a great deal of trouble (perhaps by linking to USPTO, and subsequently other,
databases) that one has a trademark and that it relates to the airline industry.
In
such a case there is no need for a sunrise, you either fit in that category or you
do not, and cybersquatters (and others) have no opportunity to register in that domain
at all. The cost of this gatekeeper function need not be excessive, it would be in
line with other costs of doing business online and as a TM holder. Even $500 for
registering the domain is about half the cost (fees vary somewhat) of disputing one
through the UDRP. As one can register a .com now for $15 (again fees vary), that
would leave in this example $495 per domain to cover administrative costs. As the
gatekeeper doesn't have to deal with thousands of spurious registrations this need
not create a backlog or hardship.
>With the foregoing restrictions (and perhaps
others) on a sunrise registration system for trademark owners, the protection granted
to mark holders is very narrow indeed, and is unlikely to prevent non-infringing
or fair uses of domain names that are not identical to registered marks.<
That
doesn't seem to follow, and certainly wouldn't hold true using the existing UDRP
as the majority of cases won by the TM holder to date have been for domains that
aren't identical, are fair use, or aren't infringing (often all three) under US TM
law. Short of TM holders renouncing any right to use UDRP in return for such a sunrise,
there is no reason to believe that the existence of a sunrise would change the quantity
or quality of disputes (or rulings).
>Allowing trademark owners a self-help remedy
that is narrowly crafted and that effectively avoids the problem upfront makes loads
of sense. This is not preferential treatment -- its just the only way to effectively
avoid the problem. Further exploration of a sunrise period is merited.<
Respectfully,
it isn't the only, or necessarily most effective, way to deal with the problem of
cybersquatting. Having specific restricted chartered gTLD's either by industry or
by a catchall .reg or by some combination of those solves numerous problems. It stops
cybersquatters cold, it gives the general public faith that they are getting the
true Intel site, and improves navigation in the case of industry specific TLD's or
second level domains. Trademarks were put in place and originally intended for consumers
after all, not the companies which hold them. What exists at present is both public
confusion and TM holders using those TM's to reverse hijack domains.
In return
for closed TLDs, if someone registers 'Intelsux' in an existing (or new) open TLD
you would have to live with it. If someone registers 'Intel' in one of those open
TLDs the courts or the UDRP could be used to deal with it. I would argue those are
the only cases they should consider, short of deliberate fraud or passing off, which
also have existing remedies.
The vast majority of net users, including many who
purchase and resell generic domain names, oppose true cybersquatting. At the moment,
and after your proposal, this small group would still have much more time and money
spent on them than is necessary, with both TM holders and many innocent net users
and domain holders inconvenienced. We can either continue to wrestle with this problem
in much the same way as the net community deals with each new virus or hacker exploit,
ie: largely reactive, or try to proactively fix that problem once and for all.