browse comments: Comment on WIPO RFC-3 and abusive registration of domain names

Comment on WIPO RFC-3 and abusive registration of domain names
Rocky Cabagnot (rockycabagnot@hotmail.com)
Thu, 18 Mar 1999 10:01:49 PST

Browse by: [ date ][ subject ][ author ]
Next message: Russ: "comments on rfc-3"
Previous message: mpollack@fcsl.edu: "WIPO RFC-3"

An Alternative Proposal for the WIPO - Introducing (domain name).tmk

by Rocky M. Cabagnot, J.D./MAMC Candidate, University of Florida
March 18, 1999

Introduction

There are a number of competing values that are at play when the
issue of abusive registration of domain names arises. On one hand, the
"rightful" trademark owner does not want dilution of their trademark at
the hands of "cybersquatters." They have a substantive argument that a
third party using a domain name using their trademark will inflict
economic damage. However, there is the issue of who is exactly the
"rightful" trademark owner. For example, McDonalds (TM - Trademark) is
a multinational fast food corporation known throughout the globe. It
would be reasonable for the lay person to assume that a McDonalds.com
means McDonalds (TM), the hamburger company. However, there are
probably thousands of entities that use the name McDonalds throughout
the world. Perhaps, there is a McDonalds hardware store in Ireland or a
McDonalds Furniture store in Canada. These particualar McDonalds,
arguably, have as strong an argument for McDonalds.com as McDonalds
(TM). (Note - the author assumes that McDonalds (TM) owns the rights to
McDonalds.com)

The issue of who is the "rightful" owner of a trademark is diluted
when put in the context of the global internet. Certainly, there are
"cyber-pirates" who are plundering domain names in the hopes of holding
ransom the name from an entity that is tied inextricably to the domain
name, whether by trademark or family name, etc. However, a better
solution can be found without following the route of arguing about
abusive registration and punishments that follow.

What do Trademark Owners Want?
Generally, the trademark owners want the exclusivity of the domain
name. And more specifically, it is the very prominent and
hypercapitalized trademark owners who desire this exclusivity of domain
name. To battle in courts with "cyber-pirates" does not make economic
sense for these hypercapitalized trademark owners. In general, the
"cyber-pirate" is judgement proof, i.e. hypocapitalized and the
trademark owner will expend more resources to capture and penalize the
"cyberpirate" than reap any damages and monies from the pirate.
Certainly, it can be argued that once captured and brought to justice,
the "cyberpirate" should relinquish the domain name to the dominant
trademark owner. This still begs the question. Who is the "rightful"
trademark owner? In the global context, this question is certainly
problematized by McDonalds(TM) of America and various McDonalds
throughout the globe. A new approach is needed to separate the
McDonalds (TM) that truly relies on the exclusivity of its name and
trademark to sell its product from the cyberpirates and the various
other McDonalds who have just as much an argument for a place on .com
gTLD.

The Proposal - A New gTLD...Introducing (Domain name).tmk

At present, WIPO has reported there are only seven gTLDs. There are
four gTLDs that are restricted, i.e. edu, int., gov., and mil. In my
proposal, .tmk would be a restricted gTLD, which would be assigned to
the prominant trademark owner. The prominent trademark owner would be
determined by various factors - (1) ownership of a trademark under a
country's intellectual property law;(2)"famousness" of domain name to
trademark owner, using social science research and polls; (3) the area
of business conducted,i.e. is this trademark owner multinational or
local; (4) the amount of capitalization of the trademark holder.
Furthermore, for new entrants to the domain name system, there will be a
substantial capital entry fee. Those hypercapitalized entities that
already maintain .com tGLD will be allowed a parallel cite to .tmk.
Many other factors and criteria can be added to this. The important
point to note is that the hypercapitalized trademark holders desire
exclusivity of domain name. The usage of .tmk will give these trademark
holders the necessary exclusivity they desire and they can answer in the
affirmative that they are the "rightful" trademark and domain holder in
the global internet context.

Here's an example of how the proposal would work. An international
tribunal is set up to oversee the assignment of .tmk sites. Those
hypercapitalized domain holders on the .com system that meet the
enumerated criteria for .tmk will be assigned a parallel .tmk site as
well. For example, McDonalds (TM) will have both a McDonalds.com and a
McDonalds.tmk address. This approach is geared towards future entities
that want the exclusivity of domain name without running afoul of
cybersquatters and entities throughout the world who may have just as
strong a claim to the .com domain name. This approach will be
contingent upon a world wide adoption of .tmk as the preferred address
for large and well known trademark holders, particularly
hypercapitalized trademark holders with a multinational business scale.
This .tmk approach addresses the cybersquatter problem by excluding most
of those entities because new entrants into the .tmk system would have
to furnish a substantial capital entry fee. Most cybersquatters will not
be able to afford the substantial capital entry fee to .tmk. and will be
deterred. It is foreseeable that over time, .com will be the secondary
tGLD to .tmk concerning commerce. It is exclusive because it is meant
for the hypercapitalized entity, like McDonalds, Sony, Phillips, or
Panavision. The .tmk system addresses the "rightful" owner problem in a
global context because .tmk will be overseen by an international/global
tribunal that will weigh all the factors mentioned earlier. For
example, The McDonalds furniture company in Canada will probably not
qualify for McDonalds.tmk because they will not meet the global
criteria.

Conclusion
The adoption of .tmk will help global businesses in the long run.
Certainly, there is the counterargument that .com is the preferred
domain system and is quite recognizable to the everyday internet
consumer. However, The strength of the .tmk system is that it will
allow the consumer the ability to separate the recognizable trademark
holder from another. It is foreseeable that the .tmk system would be
limited to those entities that can afford it. Hence, they could gain
the exclusivity of name without running afoul of the many problems they
meet in the .com tGLD. In the long run, .tmk would be synonymous with
the large multinational business entities that the world is growing
accustomed to, like McDonalds, Sony, etc.

The .tmk approach will save the time and necessity of squandering
resources on challenging cyber-pirates and whomever else in the .com
tGLD paradigm. Instead of court costs, negotiations, problems with who
exactly is the "rightful" owner, the trademark holder can just be
assigned a .tmk site and still have their .com site to continue doing
business. However, over the course of time, the conversion and
preference of using .tmk from both the business and consumer will help
mitigate the problems of cyber-pirates and the adminstrative costs of
dealing with them while giving those trademark holders the exclusivity
they desire most.

Get Your Private, Free Email at http://www.hotmail.com