Sunday, 31 January 2010

To the rescue of the trademark community: Are trademark owners panicking in light of the STI recommendation?

I have been thinking for quite some time now to write something on the process and the final report, produced by the Special Trademark Issues (STI) team. I was a member of that team, representing the Non-Commercial Users Constituency (NCUC) and - trust me when I tell to all you individual users – I really did my best to ensure that the end result would be far better than the previous IRT recommendation, the ICANN staff proposal – even the UDRP experience.

What we all need to understand from this exercise is that the STI recommendation was one of compromise. The STI was conscious that without a consensus policy document, we would go back to the Staff recommendations or even worse to the IRT. In an ideal world, I wouldn’t even allow ICANN to propose the creation of a policy document for the protection of the trademark community. In reality, we don’t need either policy recommendations. We avoid the pink elephant in the room, which is a UDRP amendment. But, unfortunately, we don’t live in an ideal world and, therefore, it was a question – do we let the trademark community take again the lead on this or do we engage in discussions and seek to balance (to the most feasible extent and given the political climate within ICANN) the new trademark law policy proposals?

I’ve just finished reading the comments posted on the ICANN website on the STI recommendation. This time around, there seemed to be a change of scene, as trademarks owners flooded the ICANN email servers, asking for more. Microsoft, the CocaCola company, Red Bull and Time Warner are amongst the few big corporations that submitted comments asking additions that the STI debated and rejected. Strong phrases, like the trademark community is ready to “roll up its sleeves to grapple this task” (Time Warner) are only indicative of the panic they face as we move towards proposals that seek to deliver justice and refrain from the current trademark-dominated culture. Where did trademark owners really get the idea from that it is all about protecting them – what about protecting legitimate domain name registrants from obvious and overt Trademark Lawyer abuse and trademark intimidation?

But, I have to admit – reading the comments of trademark owners, mashing up the same arguments was fun. Much of their language had Harry Potter reference – “He Whose Full Name Shall Not Be Spoken”. They hardly referred to terms like legitimate registrants or lawful domain name holders, as if they don’t exist or have any rights. So, let’s make another thing clear. There are legitimate owners out there; there are free speech advocates out there and they deserve appropriate levels of protection. So, dear trademark owners, legitimate registrants are not just “other participants” in the process – they are vital players just like you and they have a name: LEGITIMATE REGISTRANTS.

In line with the STI recommendations, the comments focused on two streams.

For the Trademark Clearinghouse, the trademark community is asking for inclusion of common law rights and any other form of protection you can possibly think of. But, the TC is not meant to be a rights’ protection mechanism – it is supposed to be an efficiency mechanism. Who is ICANN to replace the operation and functions of national offices? Who are the trademark owners to impose common law rights on every single jurisdiction around the world, which does not necessarily understand them? Why shouldn’t trademark owners bear the cost of it – it is a TRADEMARK Clearinghouse – who else should pay for it?

For the URS, the message sent by the trademark community was the following: let’s forget all about justice. Let’s transfer the domain name, even if we don’t design a system to do that and we already have one in place and let’s scrap off the appeals process, per WIPO’s recommendation, as it impedes the speed of the mechanism. Oh, and let’s make another thing clear: the UDRP is not expensive. It was meant to be a cheap mechanism and its filling fee is still cheap. Now, if trademark law firms charge their clients thousands of dollars for a simple complaint, that is not the system’s concern. Just change your trademark law firm, as a complaint should not cost you thousands and thousands of dollars.

I am not trying to advocate that the STI is perfect. However, it is a good document and one that, for the first time, has included the views of the Non-commercial users.

But, if you ask me: what we needed and we still nee is a UDRP amendment – there is really so much we can learn from the UDRP and so much we can fix. Of course, that would mean the trademark community getting exposed to the flaws of the UDRP and the fact that over the past ten years that have received expansive levels of protection.

The more I think about it, the more I realize on thing: we shouldn’t even be talking about trademark law here. We should rather re-name it to “Brand law”, because it is all about these big brands that consider the DNS as their own space.

With this in mind, I was happy to see some of the comments suggesting the unreasonableness of the trademark community and the whole scope of their demands. I was happy to read small businesses expressing their concerns and fears of the trademark domination in the DNS. These are the ones that also deserve our attention.

I guess the only message, if any, I would like to send with this post is: don’t believe that trademarks owners will lose with these new proposals. Whoever reads the comments, please understand that the trademark community is not only well-protected – it is actually over-protected and they should not be asking for higher levels of protection.

5 comments:

Antony said...

Excellent commentary, thanks for this. Tweeted this out to my miserably small following on Twitter. Keep it coming!

Antony Van Couvering

Cales said...

I concede that there are legitimate registrants out there and free speech ought to be protected.

However, for every legitimate registration which incorporates a trade-mark, there must be 10 that don’t. For example, I agree that someone should have the right to criticize Guinness or Ford or any other mark (provided the site is not for commercial purposes and does NOT generate ANY revenues). But, to back up my statement, go and search for Links of London charms. Here is a designer jeweller which, last I checked, had listed more than 30 sites that were both incorporating its mark and selling counterfeit goods and I doubt their list is exhaustive. What is more is Links of London is having to continually battle to shut down these sites. Registration is too easy – shut down one domain, another opens. Further still, these sites are of a high quality, appear to offer excellent customer service you would expect from such a company and ultimately consumers can be easily misled. eBay is no better as evidence in the cases before the ECJ show that 2/3 of fragranced goods are counterfeit. Don’t even get me started on Google!

In short, I disagree that brand owners are well protected in the online world. Branding works; brand law doesn’t and a primary reason for its failure is internet law, domain name law or any other area you wish to categorize it under. One can say that marks are protected online, and that rights holders have a mechanism to prevent infringement/passing-off, but the bottom line is that the registration of domain names which incorporate a trade-mark is far too easy and it is little wonder why trade-mark owners are seeking additional protection – both for themselves and for consumers.

Konstantinos said...

You are missing the point Cales - given the circumstances and the source of where protection mechanisms derive (ICANN), trademark owners are getting (and want to get) more than they deserve. You seem to forget that there are always courts of adjudication, which, in any case, have the superiority and authority to produce decisions, create precedent and promote justice. There will always be infringement on the Internet, but, given this realization, we cannot justify trademark domination of the DNS.
I suggest you go an read the comments the STI report received and you will see that small trademark owners have concerns over this 'brand' proliferation. We seem to have the tendency to forget them and their needs.

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