The following problems seem to me of particular importance concerning Working Group
B and C reports:I. How can trademark problems in the Internet, concerning existing
and new gTLDs, be solved?
II. How can the „tripple-registration-problem“ of IOD,
CORE and name.space concerning .web registrations in particular and multiple registrations
in general be solved?
III. How many and which new gTLDs should be added to the
existing ones?
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I. How can trademark problems in the Internet,
concerning existing and new gTLDs, be solved?
A. Situation:
1. Each trademark
extends to one or several classes within any trademark system. Generally, classes
are applied according to the International Clas-sification System of Nizza. Several
registrations using the same expression are possible.
Example: If you register
"all-in-one" for class 30, because you are selling sandwi-ches, someone else may
register "all-in-one" for watches (class 14), whithout causing any trademark infringement.
2.
Not all countries in the world have signed the protocol of Madrid of the OMPI (Organisation
Mondial de la Proprieté intellectuelle). That means, if you have a registered trademark
for all European Countries following to the International Classification of Nizza,
you still need to register it e.g. as a U.S. trademark in the U.S. separately.
3.
You may only register a trademark in your own country, too.
B. Problems:
1.
There are more trademarks than just "one per word".
2. Fameous trademarks like
"Coca Cola" need a special, global protection.
3. People, who's names are registered
by someone else as a trademark, need a protection.
4. Companies and Clubs, etc.,
who's names are older than a registered trademark and who therefore are allowed to
continue using that name need to be protected, too.
C. Possible solution:
1.
ICANN guarantees the integrity of trademarked names under the cctlds of the countries,
to which the trademarks protection extends, following a first-come-first-serve system
among the trademark-owners themselves in re-spect of the trademark-names being registered
in different classes.
At least 42 trademarks concerning the same expression can
be registered in the 42 sections/classes existing. Only the first trademark owner
will be able to register the domain name of the trademarked expression concerned
without any additions.
All other trademark owners will have the right of using
the same domain-name, adding the number of the classes they registered the
expression concerned.
Example: "all-in-one-1", "all-in-one-2", "all-in-one-3","all-in-one-42".
2.
For trademarks registered in more than 10 countries, a new gtld ought to be established.
The best solution might be the creation of the
.tm gtld for the U.S and
the
.reg gtld for all other countries
Both endings are already generally known
as trademark abbreviations.
3. Internationally well-known trademarks like CocaCola
should be treated differently and get their own gtld, where no one else may be allowed
to register. The best gtld for this purpose might be:
.1 (read: dot one)
.1,
because per trademark there is only 1 company in the world allowed to regi-ster
.1,
because as a digit it is international and undependent from any language.
.1,
because it is easy to remember and therefore from an economical point of view more
interesting for the companies concerned to change from .com to .1.
As only internationally
known companies get the permission to register in .1, it might be ideed very interesting
to change from .com.
All names registered in .1 are automatically registered in
.tm and .reg, in order to guarantee a global trademark protection to the company
con-cerned.
4. Individuals, who's names are registered by someone else as a trademark
are limited to the registration within the existing gtlds and cctlds and do not get
any access to .1, .tm or .reg.
Within the existing gtlds and cctlds, they are
granted the same rights as trademark owners.
Example: Should Mr. Siemens be taken
away his www.siemens.de?
The answer is: No.
The rule must be "first-come-first-serve".
If the company Siemens wants to register their domain-name afterwards, they
may use: www.siemens.1 (as it is world-wide known) or www.siemens.reg or www.siemens.tm
or www.siemens-1.de.
5. Companies and Clubs, etc., who's names are older than a
registered trademark and who therefore are allowed to continue using that name should
be limited to the registration within the existing gtlds and cctlds without getting
access to .1, .tm or .reg..
Within the existing gtlds and cctlds, they are granted
the same rights as trademark owners.
Example: Should the Rotary-Club be taken away
his www.rotary.de, if I register a trademark on "rotary"? The answer is: No.
The
rule must again be "first-come-first-serve". If someone owning the trademark "rotary"
wants to register this name, too, he may still use: www.rotary.1 (if the company
is globally recognized), www.rotary.reg or www.rotary.tm (if registered in more than
10 countries) or www.rotary-1.de (if registered in Germany for class 1).
6. Individuals,
clubs or companies, who register cctld names which are:
a. Not protected by any
trademark in the country of the cctld concerned (I.C.1.)
b. Not corresponding
to their own name, in the case of individuals (I.C.4.)
c. Not older than an existing
trademark of a third party (I.C.5.)
And therefore do not meet any of the requirements
mentioned under I.C.1-5. will lose the registered domain name immediately upon the
request of an individual, club or company meeting one of the requests mentioned under
I.C.1-5.
7. No further trademark protection in the Internet ought to be established.
D.
Effects:
1. 100% protection of internationally well-known companies and trademarks,
who will be the only ones to register their name under .1 and get automatically pro-tected
in .tm and .reg, as well.
2. 100% protection of less known, but internationally
registered trademarks, who can register their names under .reg and .tm. Late-comer-international-trademark-owners
will have to add the digit/s of one of their registered classes at the end of the
name.
3. 100% protection of „small“ trademark owners, who can register their name
in the cctlds of the countries, where their trademark is valid. Late-comer-trademark-owners
will have to add the digit/s of one of their registered classes at the end of the
name.
4. 100% protection of individuals, companies and clubs, who's legal name
provokes a conflict with an existing trademark. They can register/keep their name
under any of the existing cctlds and gtlds (except: .1, .tm and .reg), if still available.
5.
100% registration liberty for everybody in all gtlds (except .1, .tm and .reg) and
no trademark control whatsoever.
E. Conclusion of section I:
This system
doesn’t cause any confusion and solves the trademark problems in the Internet. Three
new gtlds have to be introduced for this purpose: .1, .tm and .reg.
No trademark
protection is offered under any of the other gtlds. The Internet community may quietly
register domain-names there, without fearing the danger of breaching trademark laws.
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II.
How can the „tripple-registration-problem“ of IOD, CORE and name.space concerning
.web registrations in particular and multiple registrations in general be solved?
It
is fascinating how everybody now offers registration services for .web, although
it is known that IOD is registering .web since 1996 already.
But the problem is
of more general nature: Anyone offering registration services which have already
been offered by someone else, knows that in a „first-come-first serve“ system like
the Internet this is a clear breach of the rules creating enormeous problems not
only to his own clients, but also to the clients who registered with his already
existing competitor, because only one registration can be accepted in the end.
A.
Problem:
Only on registered name can get access to the A-root Servers.
B.
Detail analysis:
1. CORE and name.space seem have caused the .web problem, as they
knew of the existence of .web registrations, when they started their services.
Individuals who used their services where not likely to know about this conflict.
CORE and name.space should therefore be forced to paying back the registration fee
to people using their services concerning .web registrations.
2. If IOD’s registrations
are anulated, too, the risk of trademark infringements, while introducing .web as
a new gtld again, is high: IOD (webtld.com) was originally authorized by the IANA
to register .web domain names and registered a trade-mark on the.web.
If .web will
never again be considered as a possible new gtld ending, this causes no problem and
we can drop the matter, if yes, it may be better to accept the existing registrations
as such avoiding possible legal conflicts to come.
3. No monopoly: IOD (or anyone
else) can not be accepted as the only registrar for .web, even if at one point IOD
was entitled to register .web domain names.
All accredited registrars of gtlds
- if IOD meets the requirements it will be among them – must be entitled to register
.web domain-names following to the usual first-come-first-serve rules.
4. IOD must
renounce to its trademark or allow all other accredited registrars the use of „.web“.
This issue will be non-existing, if the above paragraph C is applied. In that case,
no trademark protection is granted under any gtld, except: .1, .tm and .reg.
5.
All registrations on .web domain names have to be immediately frozen, as well as
all registrations under any other „possible“ new gtld to come.
C. General considerations:
Existing
registrations are taken into consideration, if:
1. The registrar of the gtld, which
is going to be officially introduced by ICANN as a new gtld, is able to prove
that he was the first registrar to register that particular gtld.
2. The domain
names have been registered before ICANN freezed all registrations, as described under
B.5.
3. The registrar concerned has handed over an electronic list of all registered
domain names to ICANN within 24 hours after ICANN freezed all registrations, as described
under B.5.
D. Solution:
1. All registrations of new gtlds are immediately
and officially frozen.
2. All registrations effected through the first registrar
of a „new“ gtld remain valid, if they have been submitted before the official freezing-date
of registrations to new gtlds.
3. All accredited registrars of gtlds continue with
the registrations of the new gtlds as soon as they are officially introduced by ICANN.
4.
All registrars who where not the first to register a „new“ gtld are forced to paying
back the registration fees to their clients.
E. Conclusion of section II:
1.
Everybody, who registered a domain name under a new gtld gets the right to keep his
domain-name, if he has registered it with the first (even if „self-named“) registrar
to offer this particular gtld registration service, because in this case, he did
not harm anybody else’s rights by registering.
Everybody who registered with a
„self-named“ registrar who offered the same services later, knew or should have known
that he was likely to harm someone, who had already registered that particular domain
name before. Such action was and still is a clear breach of the generally accepted
„first-come-first-serve“ rule of the Internet.
Such a breach was only possible,
because additional „self-named“ registrars offered their services without respecting
existing registrations effected by an earlier „self-named“ registrar and because
no electronic control system was offered to the clients.
People who registered
with later „self-named“ registrars will therefore lose the domain names they registered,
but get back the fees they paid.
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III. How many and
which new gTLDs should be added to the existing ones?
A. Considerations:
Once
the two preceding questions are solved, adding new gtlds will cause no legal problems
anymore. But there are a lot of pro and contras to be considered:
1. Pro: An unlimited
number of DOT-endings give an incredible variety of new domain names and new „good“
names will become popular. Names like busi-ness.com will probably become less attractive
than they are now.
2. Contra: Speculation shall always take place - probably with
different names than before, but even if the „good names“ will be different, they
will stay rare. There are enough „investors“ to buy them quickly.
3. Contra: An
unlimited number of new gtlds may increase the registration-hysteria existing. Each
time new gtlds will be entered the amount of people trying to speculate with them
may grow. Tell someone, that this time you registered a name in .shop, which sold
for 10'000$ afterwards and you'll have hundreds or thousands to try to get the same
name in the next gtld to come. There is an interesting saying: The more roads you
build, the worse traffic becomes ...
4. Contra: You loose the existing „orientation“
within the Internet.
5. Pro: You may not need any such „orientation“.
6. Contra:
Instead of adding 6-10 new gtlds, it might be prudent to first add only one gtld
and to see what happens.
7. Pro: What should happen? – After all it doesn’t effect
the Internet as such, but just the registration and availability of domain names.
B.
Solution:
1. ICANN adds the gtlds .1, .tm and .reg in order to solve the problems
discussed here under paragraphe I. and II and freezes all other registrations of
„new“ gtlds. ICANN analyses the effects these steps have on the stability of the
Internet.
2. If the result is positive, ICANN adds the gtld .web (see II.C. and
D.) and analyses again the effects this step has on the stability of the Internet.
3.
If it worked out sufficiently well, ICANN adds another 10 gtlds in the order they
appeared in the Internet-discussions as „new gtlds“ (see II.C and D.)
ICANN analyses
the effects these steps have on the stability of the Internet.
4. If there is still
a large demand for further „new“ gtlds or for a complete liberation of the DOT-endings,
ICANN allows any kind of DOT-endings. If not, not further or only a few and well
determined gtlds are added.
C. Conclusion of section III:
1. A „step by step
policy“ might be best when adding new gtlds and gives an opportunity to stop adding,
as soon as the request for new gtlds grows less. Any confusion can be kept as small
as possible.
People, who registered with whatever first „new“ gtld registrar before
registrations were frozen will not be disappointed and as soon as „their“ new
gtld is added, their registration is taken into account.
All others get their money
back and a fair chance to use it again for registering another domain name within
the official „new“ gtlds, as soon as they are added.
All trademark conflicts are
solved before new gtlds are added.
I hope this will be helpful to ICANN.
Please
excuse my non-native english
... and thank you for your time.