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Ray King (ray@webwurx.com)
Fri, 21 Aug 1998 10:59:56 -0400
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I have been following this group for quite some time now (since the start I
think) and I am immensely interested in what is being discussed since I have
a few domains of my own and am very concerned over losing one in a trademark
battle with Major League Baseball.
I have currently been sent notices and warnings from their legal counsel
claiming that by simply "registering" the domain name "ALLSTARGAME.COM", I
am violating trademark laws and am engaging in deceptive and damaging
practices against the Office of the Commissioner of Baseball and MLB.
Now the way I look at this is such:
1. "All star game" is a generic, descriptive and most importantly, a common
term for a meeting of the best players in ANY organized game at ANY level to
engage in the game which they play. In fact, the Merriam-Webster dictionary
has an entry for "All-star" as: "a member of an All Star Team". And I
assume this Team would play in an All Star Game, right???
2. A company MUST police its trademark, or run the risk of losing it due to
common use as a descriptive term. Obviously, the Office of the Commissioner
of Baseball failed to enforce this trademark from 1933 to 1998, as every
high-school, college, university and major sporting league has what is
called an "all star game". In fact, the NHL registered the trademark "NHL
ALL-STAR GAME" in Canada in 1979 without any problems from Major League
Baseball or the Office of the Commissioner or Baseball. Now this is a hell
of a lot closer to an infringement than simply registering a name with the
word "allstargame" in the domain.
About a week ago, they registered the .NET and .ORG variations, perhaps in
hope of building a case against me. It is obvious that, much like ZIPPER,
ESCALATOR, and even almost XEROX, failure to enforce a trademark renders it
useless and unenforceable if everyone seems to use it as a general,
descriptive term, as mentioned above.
3. With the policies that InterNIC has set forth, they have the right to
arbitrarily shut me down and put the name on indefinite hold until things
are settled in court.
It was clear when I discussed things with them, that I do not intend to
harm or dilute their trademark (which they have never provided me any proof
of, but I know now exists), but run a legitimate website, completely clear
of confusion with the "Major League All Star Game", or the Office of the
Commissioner of Baseball.
When I first registered the name about a month ago, I saw it was available
and I booked it because it was a good domain name and good domain names are
hard to find these days - especially in the .COM area. It was not booked to
somehow "destroy" Baseball, but to use for a future project, as my company
builds Internet games, services and software.
What I do with it should not matter, as long as I do not INTENTIONALY
INFRINGE ON ANOTHERS TRADEMARK or use it in any way that may CAUSE
CONFUSION. I am out now to prove a point. And the point is that both sides
of the coin need to be examined before making the assumption that just
because I use a domain with similar words as a someones trademark, that I
am out to get them and harm the goodwill built up in whatever industry the
trademark holder may operate.
My position thus is perhaps a bit more flexible than some of the members of
this group and Id like to raise some points, many of which have been
brought up before:
Lets assume that the following is completely accurate (and I think it is)
since it is based on earlier posts:
1. A trademark is for a specific geographic area or industry and is
protected as such.
You should only use a trademark where the trademark has been registered and
for a specific purpose, as detailed in your trademark registration. The
trademark system is what allows this.
2. A domain name is worldwide and deals strictly with the Internet.
A domain name by default can be accessed by any other computer in the world
connected to a network providing access to the Internet. The DNS system is
what allows this.
3. A trademark does not automatically entitle the owner to a domain name.
4. A domain name does not automatically entitle the owner to a trademark.
5. There are many people who can hold a single and usable trademark. It is
possible for someone to own the exact same trademark as another person in
the same city, state, country or world provided they do not infringe on
anothers mark.
As discussed earlier, many people use the word "Delta" as a trademark:
"Delta" Airlines
"Delta" Faucets
Oldsmobile even owned a car called the "Delta" 88
There are 96 trademarks for the word "delta" in the USA and the Canadian
trademark database has over 200 in various states of legitimacy (from filed
to abandoned).
(Sources:
http://www.trademark-search.com
http://strategis.ic.gc.ca/cgi-bin/trade-marks/search_e.pl )
6. Only 1 person can own any single and usable domain name. It is
impossible for someone to own the same domain name as another person in the
same city, state, country or world. (we are assuming "second level+first
level" domains like "domain+com")
allstargame.com
allstargame.net
allstargame.org
These are all unique and CAN NOT be mistaken for anything else, since it is
impossible to have two of these existing at the same time.
7. Both systems run on the premise of first come, first served.
Whoever files first for a trademark, gets it.
Whoever files first for a domain name gets it.
8. A "famous mark" is a mark that is not likely to be mistaken for anything
else than what the mark was originally intended for, and should be treated
as a special case.
I think we can all think of famous trademarks and I bet that almost 80-90%
of these actually own their own name because they were resourceful enough
and policed their trademarks enough and that they were first in line to
register them or they took rightful legal action to protect a famous mark.
The big question is, what makes a mark famous as opposed to not-famous??
Coca-Cola, Nike, and IBM for instance might qualify under this title as
these companies have spent ample time and resources building a WORLDWIDE
(just like the Internet) trademark and thus should have access to all forms
of their EXACT trademark, in every gTLD and ccTLD (or at least the ccTLDs
where the famous mark has been registered). If a company has made the
effort to file for worldwide protection (trademarks in many countries where
it operates), they should be given the same rights to the worldwide Internet.
We are entering an era where "worldwide commerce" is becoming everyday
stuff. Coca-Cola, Nike and IBM each had to spend millions, or even billions
of dollars in many countries to build up their businesses and claim a
trademark worldwide and should rightfully have full access to their
trademarks in a worldwide setting, the Internet. It is important to point
out that these names are all very popular worldwide and are just as unlikely
to be mistaken for something else besides their respective goods/services in
New York as they would be in Paris or Hong Kong.
If a company uses a trademark in a single state/province/country or for a
single product not sold or marketed currently to a worldwide audience, then
another person using a similar or exact domain name in a worldwide sense
should not in any way limit or impair that company from doing business as it
always has, assuming that the owner of the domain is not intentionally
infringing on the mark. It is up to the trademark holder to recognize that
the Internet is a way to establish worldwide exposure, and if they react too
late, they should not be allowed to sue someone unless their business is in
some way being harmed, and I dont think ownership of a word plus a suffix
justifies any harm done, unless confusion or damage is quantitatively and/or
qualitatively proven.
Customers will surely realize if they go to the domain in question, that it
is probably not associated with the company they are looking for and they
will do a search, or contact the company through traditional means. Once
they find out the real domain name, they bookmark the site or remember it
for future use. In no way has the domain name holder done anything wrong
and in no way has the trademark owner been damaged in any way. If I go to
micros0ft.com, it will be OBVIOUS that I have the wrong place and I will
look elsewhere for the real site. The site at Micros0ft.com does not claim
to be, nor does it even remotely resemble anything that might belong to
Microsoft, and unless you are a real bonehead, this will be apparent. This
is probably why Microsoft is not fighting to shut the site down.
Think of two roads in a city. One called King Street, one called King Road.
If I made the mistake of going to King Street, when I was supposed to go to
King Road, it will become apparent, and I will double check to make sure and
find the right road. If it is not the right road, I dont think I will be
suing the city because they mislead me by making two roads with the same
name - even though they could have called one of the roads something unique
and not the same as another. This is how people are taught to think. Why
is this so different with the Internet? If I cant find something useful
when putting in a domain name, I will do a search to get a better result -
and 99 times out of 100, I will find a better result.
Now, if we take these 8 basic points and look at them closely, we can see
that the answer to all these discussions is clearer (for me anyway):
A domain name holder should have the "first come, first served" right to any
domain they feel like registering, just like a trademark.
Should a domain name be used in a fashion that EXPLICITLY infringes upon the
mark of a trademark holder, the owner of the domain will be advised to
discontinue current unlawful use (but NOT GIVE UP THE NAME)
Should the owner of this domain not respect the wishes of the trademark
holder or challenge the request, an arbitration session will be set-up so
that both sides can present their sides. This should be coordinated with
the registry in question, WIPO and/or the new non-profit organization
outlined in the Magaziner paper. It will be obvious if someone is
EXPLICITLY violating a trademark or using a famous mark. The arbitrator or
"arbitration panel" will have final say in what happens with the challenged
domain name and hopefully will use sound judgment in determining the nature
of the infringement, if any.
So if I go back to my original problem with "ALLSTARGAME.COM": Unless I
used it to promote, display, sell or distribute anything related to major
League Baseball or the Office of the Commissioner of Baseball, there should
be no problem in using the name. Should I do anything to harm or dilute the
mark, I will be warned, and if I continue to use the domain, the arbitration
process may be called upon to make a ruling.
There are UNLIMITED uses for any domain name. The reason we have them is so
that we can all REMEMBER our favorite places online that much easier. I may
choose to register any domain name, provided it is available and use it as
an intuitive and easy to remember pointer to an Internet page.
There are LIMITED uses for a trademark. The reason we have trademarks is to
protect the investment in a particular product or service and to establish
that investment as an exclusively tangible and enforceable right to use in a
specific geographical area.
Based on this, is it not logical to protect the rights of any particular
product or service based on trademark law as it applies to the world as a
whole. We must also consider that a domain name does not have any limits
with regards to method of use and limiting the use to that of a similar
trademark is both ILLOGICAL and WASTEFUL, considering the current domain
situation. So a domain is different than a trademark in that it is not
bound by a specific product, service or geographical area, but can be used
for any purpose, so long as it does not harm a trademark owner by its use.
Lets deal with infringers of actual trademarks and not with people who
simply had the foresight to book good domain names, even if they are similar
to existing trademarks. As long as there is no OBVIOUS infringement, why
are so many being prosecuted simply for registering and using a good domain
name.
This whole Micros0ft.com thing is a perfect example. When the site was a
mockery of the software behemoth, Microsoft had a right to seek a shut-down
since it DID CAUSE A PROBLEM. Now, the owner is using it for a personal
site and Microsoft cant say anything since they have nothing to say
besides: "Hey nice name, I have one very similar to it. Good luck". The
odds of someone confusing microsoft.com with micros0ft.com are pretty slim,
and even if it happened, it is pretty obvious that the wrong page had been
reached and the client would find the right URL to go to.
Heres another point to consider: Why does nobody complain to the phone
companies when they list a bunch of companies using the same name on the
same page? In much the same fashion as phone books, the odds of finding who
you are looking for, without using a search engine, is quite low. Why cant
we just live with the fact that we have limited capacity to remember
everything and the best way to find someone is to search for them. And
thus, even if I were Delta Air, with a domain name like
thedeltaairdomain.com for example, it would only take a second to key in
"Delta Air" in MetaCrawler or Yahoo! and get only pages that are relevant to
what I was looking for: Delta Air. It works for the phone companies, why
not domains - instead of being printed on paper, they are printed in
cyberspace, but can be accessed just as easily. It may be the only logical
way to look at this without engaging in an endless argument.
If you made it this far through my rant, I applaud you. There is no easy
way to solve this and both sides are going to have to compromise. I only
hope what I said sparks other ideas and we do figure out a way so that
everybody is happy. Whether this is to add new gTLDs or to set up
procedures for dealing with domain registrations or trademark disputes, it
is crucial that the goal be to find long-term solutions and not deal with
todays problems, if they can even be considered problems in most cases.
This whole thing is like being late for a bus trip and thinking just because
you booked your ticket first means that you should be given the best seat.
But because you are late getting to the bus depot, you do not get the best
seat on the bus, but it is nevertheless a seat that works the same as all
the others. Well, news is that just like missing a bus, those who missed
the domain name opportunity did not show up early enough and now find that
all the good names are gone, but some names are still available and it is a
matter of finding the best one left and living with it. There are hundreds
of worldwide TLDs (although almost all trademark disputes deal with the .COM
domains) and the odds of finding a good, relevant domain are pretty good,
granted they are becoming more scarce everyday.
This makes it all the more important that trademark holders find a suitable
domain NOW and not make it hard for others to do business without being
harassed by them and their lawyers. If an infringement is obvious, there
are legal remedies, if not, live and let live. This is about a fundamental
right to book a domain name, and the rules have always been the same: first
come, first served. How simply registering a domain constitutes an
infraction of trademark law is absurd. A trademark does not grant ownership
of a domain unless you were first to get that domain AND own the trademark.
Trademark holders should have been first to get the domain to protect their
rights anyway.
The bottom line is that we should wait to see what happens with any domain
name booked and if there are overlapping trademark issues, they can be
resolved with generally accepted legal remedies or via WIPO or an
arbitration body. In the end, I think these companies should be suing
their legal firms for not taking appropriate actions long ago to protect the
rights of their clients. This whole thing is not always the fault of
scrupulous domain name grabbers, but really the fault of the trademark
owners by not being able to foresee these problems and take actions to
prevent this from happening (yes, I know many of you completely disagree
with me here). It was a generally accepted fact that these problems existed
in 1994/95, but yet we see problems with names booked only months ago. And
as a final point, many trademarks, including famous ones still do not have
the .NET and .ORG names booked. What are you people waiting for? Get the
names, protect them and stop bitching and whining!!!
Thanks for your attention to these matters and I hope we can all come to a
amicable solution where both independent domain name holders and trademark
holders can find common ground and get this all worked through.
Sincerely,
Ray King
ShockMedia Inc.
(Quick Note: Can we have it so that the list-server sends all posts from a
*single address* to make it easier to sort through mail? We could have all
the mail coming from a single account like: DNS-PROC-WIPO. It would make my
life much easier, and I assume that of many other members also
and it seems
like quite a trivial thing to do
)
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