INTERNET-DRAFT D. Kolis Category: Informational Tuttle and Associates Expires: June 1997 January 1997 Management Issues Regarding Trademark Specific Domains Status of this Memo This document is an Internet-Draft. Internet-Drafts are working documents of the Internet Engineering Task Force (IETF), its areas, and its working groups. Note that other groups may also distribute working documents as Internet-Drafts. Internet-Drafts are draft documents valid for a maximum of six months and may be updated, replaced, or made obsolete by other documents at any time. It is inappropriate to use Internet- Drafts as reference material or to cite them other than as ``work in progress.'' To learn the current status of any Internet-Draft, please check the ``1id-abstracts.txt'' listing contained in the Internet- Drafts Shadow Directories on ftp.is.co.za (Africa), nic.nordu.net (Europe), munnari.oz.au (Pacific Rim), ds.internic.net (US East Coast), or ftp.isi.edu (US West Coast). 1. Abstract The purpose of this document is to communicate a number of possible technical and procedural understandings regarding domains which hold trademarks, tradenames and services marks. These remarks are made in the context of the International Ad Hoc Committee, as per the document; "Draft Specifications for Administration and Management of gTLDs" of 19 December 1996. The hope is that by securing understandings with registrars, the CORE and intellectual property holders, a number of vexing problems regarding trademarks can be minimized. New technology is seen as an underutilized resource in managing the intrinsic conflict between a domain name and a trademark. 2. Background and Goals Assumptions in the context of this paper. 2a. Intellectual Property Adds Value to the Human Experience. Trademarks play a significant role in clarifying the transactions of everyone who functions either as a consumer or supplier of products and services. It is important to recall logos and trademarks are invariably rendered as graphical images. The identification function is therefore functional even for low literacy and illiterate persons. There may be some component of elitism in those who create and administer these symbols, but using them is part of life for everyone. 2b. The number of conceptual symbols is effectively infinite. Domain names are a troublesome problem as trademarks because they are hardly marks at all. The limited character set means there is only one way to render a word. In graphical arts, the identities CARLSBAD (in the context of a brewer), and CARLSBAD (in the context of a tourist attraction), is apparent because the graphics differ. The entire body of law which supports trademarks arose around the context of use, the name itself, and the graphical identity associated with the mark. As this paper hopes to communicate, the graphical reality of the marks can be better utilized technically in conjunction with trademark specific domains. 2c. Methods to expose misuse of symbols benefits humankind. In support of the goal of identifying participants for legitimate transactions, identifying forgery has value. It may allow the consumer to avoid the misrepresention, and acts as a deterrent to fraud. Specific complexities with trade dress and parody do however concern us. These issues, as important as they are must still be construed as fringe issues to the functionality of a trademark system. 2d. Infringement is often accidental, market momentum is complex. The world is full of surprises and unexpected interests collide when buying patterns suddenly change. A general ability to puruse marks on a global scale would allow infringement problems to be more easily discovered before animosities occur. Of course, the Internet itself is nearly the ideal "remote viewing system". 2e. Administration of electronic commerce via the WWW is new. It will take institutions some time to adapt to the new realities, new skills must be learned by many. This takes time. 2f. There is no desire for new supra-national policing agencies. Generally the existing components of world administration, the nation state, the UN etc. are expected to adapt to Internet, as opposed to some new, unnamed agency which would usurp these existing "powers". Generally organizations such as the World Intellectual Property Organization, and International Trademark Association do not crave neo-judicial powers. The point being an intrinsically flexible, distributed enforcement modality is envisioned, as opposed to some "beefed up" existing organization, or a new one. 3. Critique The following paragraphs appear in the IAHC draft of 19 Dec 96. The indented text is either an amplification, modification or comment regarding the IAHC document. "While it is recognized that there is not yet an international trademark registration which is, of itself, valid for multiple countries in all regions of the world, it is also recognized that there exist international standards for trademarks, and that additional standards are being developed, and more will be developed in the future. In fact, accelerated development of international trademark standards may be driven by new technologies such as the Internet." The three major modalities of trademark use in the world differ substantially. The website http://www.wipo.int from the World Intellectual Property Organization treats the Madrid agreement well. Briefly the agreement extends of body of understandings which began with treaties in 1891 regarding symbols. Of extreme significance is the United States is not a signatory. The IAHC document, generally focuses the utility of the tm.int on a Madrid agreement style understanding. I think the philosophy of the United States understanding of trademark rights is too different from the Madrid style, and within a planning time frame, of perhaps twenty five years it is unlikely the U.S. will sign. In the context of the Internet, non-compliance from the United States is quite significant. Recommendations in this paper move in a direction wherein the int.tm would more easily represent both the United States of America model, the Madrid model, and in fact the hundred states which prefer either some unilateral or non-internationally reconciled model. Of course it can be argued that this is precisely why administrations are being asked to construct a tm.{country code} SLD. The problem is similar to the European Maastricht treaty issue of subsidiary domains of application. In the hundred states in the non reconciled model, would any representation of a trademark constitute a "registration" simply because it appears somewhere in tm.int? For instance look at the way a logo "looks" in tm.int to each of the three power blocs: U.S.A. = Only counts if it is actually in use. Madrid = Means nothing unless it is filed with the WIPO. Other = Undocumented response. My proposal, which is a recommendation more than a directive, is that each tm.int have a single html page which tries to legally address all three. For countries in "other", a paper based registry, or predictably a web presence is tm.{country code} would be prudent. This is addressed specifically in this document under recommendations. "IAHC recognizes that trademark owners such as these might prefer a trademark-domain space that is international in nature. IAHC therefore recommends that an international trademark-specific domain space be created, and recommends to the organization responsible for the administration of the .int TLD that it delegate to an appropriate international trademark administration organization, such as WIPO, the responsibility for the creation and administration of an international trademark-specific domain name space, under the international sub-domain .tm.int. My view on this might be controversial, but I believe the intent here, or perhaps simply the wording is problematic. If the United States perceives, "administration" to include a limitation on the issuance of trademarks displayed in the U.S.A. (simply because they exist in this domain), it conflicts with the use dominant versus filing dominant model. All sorts of exotic legal torts could find refuge in this dichotomy. Most of these could be resolved by having a functional presence in the USA with those marks, for instance in the underutilized ANY.us domain. However, the whole point of this paper is to make technical and organizational recommendations which make the tm.int domain maximally palatable to all stakeholders. "The details concerning registration in that domain space should be developed in cooperation with the relevant trademark offices." This is more feasible if the goal is to make a more transparent commercial world-space. The point being the plurality of "relevant trademark offices". The recommendation portion of this document will amplify this relationship, while attenuating the previous quoted paragraph. "It appears that a domain name in a trademark-specific domain space would have to have an element, such as a random number tag, to accommodate the required criterion that a unique domain name should be available to every trademark owner, even if there are many different owners of the identical trademark. Since such a domain name may not be particularly user-friendly, IAHC recommends that each trademark-specific domain name space should be accompanied by an on-line, user-friendly directory, which would allow a user who enters a trademark to easily find the associated web page." To say the name would not be user friendly is at a minimum, an understatement. In comparison the a name.com or, name.ltd, for example a domain name featuring a random number or string is hardly mnemonic. Worse, if the number is sequential or small or random through a minimally sized number set, guessing may frequently hit an organization which has an identical name, yet is not related to the company of interest. Longer number or random characters are better in this regard, obviously. But there marketing value is further attenuated, rendering the domain as a stand alone site somewhat undesirable. Of course the point being if the user could enter the trademark as a text string, and there was only one, there would be no point to the tm.int domain whatsoever. The place to enter it would be more like Acme.com where the "Acme" was certain. "The user-friendliness of such a directory could be enhanced by including the associated logo in the directory. It may also be found desirable to establish a single directory which covers all of the trademark-specific domain name spaces(including country code spaces and the international space), and perhaps even to open the directory to trademark owners who have domain names in other TLDs but who wish to be listed in the trademark-domainname directory." I suggest the directory is preferrably the logo images, sorted by software agents such as search engines by any criteria. In this view each int.tm without exception and perhaps tm.{country code} domains would simply be effortlessly found. This has vast advantages ... No intrinsic synchronization, no Madrid versus U.S.A. versus Europe model, no single agency to supervise. As far as the "other TLDs who wish to be listed", my recommendation is to make any image anywhere on Internet a potential referent to a trademark, to be discovered only if the end user is interested in the objects pedigree. "A formal check of the ownership and validity of the trademark registration on which the domain name application is based would be required. It should be made clear that there would be no obligation on the part of any trademark owner to register in any of the trademark-specific domain name spaces, or to be listed in any associated trademark-domain name directory. In addition, there would be no negative legal consequences to a trademark owner for not having a trademark-specific domain name or not being listed in a trademark-domain name directory. In particular, the existence of a trademark-specific domain name space does not imply that trademark rights in other top-level domain name spaces are negatively affected in any way." The "formal check", no matter how implemented, even if voluntary, makes the defense of the marks easier in the USA Model. True, "The existence of a trademark-specific domain name space does not imply that trademark rights in other top-level domain name spaces are negatively affected in any way.". But at least in the USA model, trademark rights would be positively enhanced by being there. If additionally, the marks where referenced thousands or perhaps millions of times, in the USA model this would prove irrefutable proof the mark is in use. I am not using the term "irrefutable" lightly. Like a television commercial with a Nielson poll showing audited numbers, and a Audit bureau print run, this simple software counter, in the USA model would be devastating evidence if the collection methodology was admissible legally. Regarding the Madrid Protocol, and/or Madrid System nations, it is extremely predictable the WIPO would welcome an administrative link adding special status to the tm.int domain. The nature of bureaucracy means they will, of course insist probably for decades the definitive database is the one totally under there administrative control. However, once some software aggregate, whether distributed on tm.Any domains, software agents, or however implemented exists on Internet, the detail of purchasing reference materials to verify the obvious; (that a mark in tm.int is under Madrid administration) will be a detail. It would be cynical to suggest, as a specialized agency of the United Nations, the funds flowing to WIPO might pre-bias them to "stick to the paper and forget the tubes", however, if this is the case adding a checkoff box to integrate tm.int with their process, for some fee would not be particularly controversial. 4. Recommendations 4a. If/when registrars are permitted to register tm.int, they must supply the domain applicant with a memorandum and html reference under control of CORE regarding the special administration recommendations suggested. I do not see why they should be expected to supply further documentation, regarding any more of a legitimate use then for a gTLD. I am adamant they acknowledge they have been exposed to the specific fact the domain is intended to secure property rights at some time in the future. A careful reading of INTA's paper at: www.inta.org/inta/intaprop.htm shows a registration requirement with great merit. Of course, the give and take means we can conveniently strike "90 days wait" and pencil in "60 days of anticipation". 4b. The registrar suggests they supply a email name and password for potential correspondence regarding planning the domain. It is not mandatory for the customer to accept, it is mandatory to offer. 4c. A name is to be selected which is non English such as 0.html. The recommendation be put forth all int.tm users have a WWW page http://1234.MARKNAME.TM.INT/0.HTML. Where 1234 is the number scramble and MARKNAME is the mark. It may have any human readable text, such as a greeting, warning, etc. It has a single mandatory link "for more information" which points to a CORE specified WWW URL. It can have any number of other links, for any purpose, in any language. The single first page can be of any length. It is to have one specimen of each mark the owner considers proprietary. A general suggested format will be supplied, using the HTML construct of TABLE. A row exists for Madrid registration number, Year of issuance, and any other identifier the owner feels lays claim to the object. A research line item is whether sound, and motion graphics are equally represented. My view is this is a possibility, but the creator would be prudent to supply still images as well. 4d. If the user expects coverage in the USA (s)he certainly does not specifically require Internet representation at all. However, if they would like the Internet exposure to "count towards" exposure they might refer to these objects from time to time from their ordinary domain name pages. 4e. National ISO TLD's using tm.'s. Should report to Core, specifically: *) Whether they want to implement trademark subdomains *) If so, when *) Preferred characters; (example tm, reg, mr) *) Madrid Protocol? (Yes/No) *) Madrid Agreement? (Yes/No) *) EU Agreement? (Yes/no) *) Regional agreement?(trading block clause) *) HTML URL for there public policy posting *) HTML URL for the body of law, if any in force *) email for two named persons for scholarly correspondence *) Do they recommend 0.html pages to there assignees 4f. In order to automatically gather all tm.int trademarks it is assumed the steward can supply reverse mappings for all subdomains, if this is not the case, some other reporting provisions should apply. 5. Conclusion The future of Internet is vast beyond imagination. However balancing order and chaos is very difficult. I envision many novel ways to use the above trademark superstructure, but the concept of "one thing at a time", seems prudent when the DNS is the issue. One of my interests is the future of the lowly; "set top box", on cable television. I can imagine any number of convenient Television style media interactions which would benefit by discriminating trademarks graphically and use the references; (such as URL's) creatively. I hope the above is useful in policy formation. Incidentally, time permitting I would like to construct some software to further elucidate the concepts above. Please feel free to email me for current progress. 6. Author Address Dan Kolis Tuttle and Associates 16 Cambridge St North Unit 1 Lindsay, Ontario Canada (705) 328-3704 Pho/Fax dank@tanda.com