Subject: Administration and Management of gTLDs Date: Mon, 27 Jan 1997 20:47:51 +0200 From: michael berkson To: iahc-submit Northern Telecom (Nortel) welcomes International Ad Hoc Committee's attempt to resolve the conflict between (a) the proprietary rights inherent in trade marks and company or business names or identities and (b) the flexibility and lack of regulation of the Domain Name system, when flexibility is such a feature of the success of the Internet. These comments refer to unresolved issues. Trade marks (brand names) and company or domain names serve different functions, although there is some overlap. The First Council Directive of 21 December 1988 of the Council of the European Communities, 89/104/EEC, describes a trade mark as a graphical sign capable of distinguishing the goods or services from one undertaking from those of other undertakings.2 Trade marks are associated with supply of goods or services. A domain name need not necessarily be so associated but even if it is not, use by a third party of a name confusingly similar to a registered or unregistered trade mark may destroy the value or even the validity of the trade mark by diminishing its factual distinctiveness. For this reason Nortel strongly urges that the interests of trade mark owners should be preferred to those of third parties seeking domain names. Minor variations between names may be sufficient for operation of the Internet but not for trade marks, where a confusingly similar use may well constitute an infringement or reduce the value of the mark. There are, in fact, two aspects of the trade mark problem - infringement and validity. Commercial use of the same or a similar sign in relation to the same or similar goods or services infringes the rights of the trade mark owner. Infringement issues are best handled by the courts but the Registries should not knowingly allocate domain names in violation of established rights. Use of a domain name or any other identity as an address is not necessarily trade mark infringement unless associated with commercial activities, but, as indicated above, the possibility of confusion will reduce the value of a trade mark by diminishing its distinctiveness and the associated goodwill, even to the extent that the trade mark is invalidated. Conflict between trade marks and company names can arise in legitimate circumstances, but too easy a system of allocating domain names also gives opportunities for piracy or extortion. Nortel accepts that the Registries will not be able to conduct clearance searches but we wonder whether the proposed sworn statement goes far enough. A number of commercial and governmental organisations are now able to undertake worldwide screening searches for conflicting names or trade marks. A possible suggestion is that the applicant for a new domain name should adduce evidence that he has procured such searches or, preferably, include the search results themselves. Given the transnational character of the Internet, allocation of jurisdiction is essential. The territory of the Registrar is a logical solution provided that it does not exclude the defendant's own domicile or residence. In other words, it is suggested that a domain name applicant must submit to the non-exclusive jurisdiction of the relevant tribunal The compulsory 60 day publication period must be introduced as soon as possible. While Nortel does not wish to involve the Registries in dispute procedures, a trade mark owner alerted by the publication of an application for a new Domain Name must be able to advise the Registrar of his prior rights and preferably can oppose allocation of the Domain Name. In any event, Domain Names would be suspended until expiry of the 60 day publication period or settlement of opposition if later. Ideally, trade mark owners should be able to apply to a Registrar for revocation of existing Domain Names without having to involve the courts, but Nortel recognises the difficulties. It is hoped that IAHC's proposal for annual renewal of Domain Names will reduce the possibility of conflicts. A straightforward Directory of Domain Names is essential. There are benefits in strengthening the proposed trade mark specific domain name spaces. In particular, conflicts might be reduced if Second Line Domain names associated with the supply of goods or services, ie commercial applications, are always registered in the relevant Trade Mark Specific Domain Name space to the exclusion of other Top Level Domains. In order to reflect the territorial aspect of trade marks, all trade mark specific domain name spaces should include a country or regional designation such as CTM (European Community) or MADR (WIPO International Registration). (In this context it should be noted that different countries may be designated in the WIPO-administered International Registrations.). Possibly a discount on registration and renewal fees could be offered for multiple applications. Similarly, Trade Mark Specific Domain Names should always include an indication of the relevant goods or services, in order to reflect the inherent characteristics of a trade mark and to allow for co-existence of similar marks in the same territory. This is preferable to a random number tag. Thus, the form of a Trade Mark Specific Domain Name would always be TRADEMARK .tm. Trade mark specific domain name spaces will be adopted only if they confer benefits on the trade mark owner. At least as far as registered trade marks are concerned, it is suggested that a Trade Mark Specific Domain Name should have preference over third party registrations in other domain spaces. This should extend to confusingly similar derivatives as well as to identical Domain Names. M D Berkson Trade Mark Attorney Nortel Patents West Road Harlow Essex CM17 9NA UK