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The Trembling Trademark Owners

Why is so much fear being created in the name of protecting trademark owners? Say, if ICANN allowed some third party a generic Top-Level Domain (gTLD) called .panasonic will the sky fall? No, not at all, as Panasonic, the true and rightful TM holder will hit the unauthorized gTLD with a 2x4 and no judge would oppose issuing a cease-and-desist order. Now the other question is are there enough empty headed candidates to apply for this. No, because why someone would spend $500K and months to get this name approved. The problem is not here it is on the other side of the trademarking spectrum where weakling and deadbeat trademarks in narrow classification have clogged the business name identity.

Say, when ICANN issues a third party a gTLD .united will all of the 113,647 ‘united’ name users and hundreds of trade mark holders of ‘united’ in related wares worldwide will panic? No they cannot. Exclusive global ownership was never their cup of tea in the first place.

They knew all along that there were over hundred thousand identical names already being used in the market place; United airlines. United motel, United bank, United trust, United bakeries, United trucks or United logistics, so post gTLD approval why will they hit the ceiling in rage. No they will not, coy as they are and embarrassed of the fact they simply would follow their old routine and try to protect their own turf, under their trademark classification of wares but mainly stay mum. So long as you can open a hotdog stand in the lobby of United Airlines, called United Doggies they have no exclusive ownership to the name ‘united’ as others like Rolex, Panasonic or Sony have their ironclad exclusive marks.

The corporate landscape is flooded with highly duplicated names not only in the USA but all over the world and the very lucky ones have their nomenclature under the Five Star Standard of Naming.

This analysis is only about a dictionary word in common domain, but there are many other similar cases, of generic, and other diluted name identity trends. The trademark owners are nice bunch for at least they own some marks and trying hard to push their business but most do not have global exclusivity and false alarms shouldn’t deter the proceeding of the gTLD mandate.

By Naseem Javed, Expert: Global Naming Complexities, Corporate Nomenclature, Image & Branding

He is the founder of ABC Namebank, author of ‘Domination: The GTLD Name Game’, syndicated columnist, keynote speaker and specialist on global naming complexities.

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Left of the dot Kevin Murphy  –  Jan 18, 2011 7:03 PM

Isn’t it the main fear that united.web, to name a random example, will wind up being held for ransom by some cybersquatter or other?

Left of the dot Naseem Javed  –  Jan 18, 2011 7:16 PM

True Kevin, we live in an overly flooded legal system, but no one can rightfully claim a ‘generic’ or a ‘dictionary word’ use… in each and every classification.
Only the weaker TM owners are squeeking as the iron clad TMs are mum as they have nothing to worry about. Trust this helps

There are implications beyond what you write Karl Auerbach  –  Jan 18, 2011 9:27 PM

I am glad you wrote your note as it reflects something that I’ve been saying for years, which is that there is no need for a central authority of domain names for the entire internet.  The point you make, that those with cognizable legal rights in a name have means, outside of ICANN, to enforce their rights, makes ICANN a dispensable institution.

There are implications, however, that are much broader than mere trademark matters.  In fact the recognition that there are existing, non-ICANN, processes, can lead a market based, consumer-choice driven solution to the top level domain wars.

I am an advocate of competing, consistent DNS root systems.

In other words I do not subscribe to the proposition that the internet must have exactly one catholic DNS root.  (There is no technical means, nor DNSSEC, to prevent competing DNS roots.  And, in fact, there have long been root zone definitions other than the legacy NTIA/Verisign/ICANN root zone, and the sky has not fallen as a result.)

Rather I subscribe to the proposition that there can be many DNS roots, each with its own catalog of top level domains, and that the real issue is not that of singularity of root but rather consistency of the contents.

The key word is “consistency”.  I, like most everyone else, don’t like internet surprises.  (I even less like misrepresentations of identity.)

As you recognize, trademark (and others with rights in names) have the means to enforce their right.  This means that there are non-ICANN solutions to situations in which there may be dissonance between TLD names in different roots.

This, in turn, means that the whole matter of new TLDs can be left to the normal processes of providers “building their brand” and consumers choosing among competing offerings.  Just as no centralized planning authority is required to regulate the deployment and naming of brands of canned soups on shelves of competing supermarket chains, no central planning authority is required to pre-define the deployment and naming of top level domains.

Where there is a name conflict there already exist legal processes to resolve the matter; when it comes to whether there is a need, consumers decide with their choice whether to use or to avoid a particular offering.

I elaborated on these ideas in more detail about two years ago in “What would the internet be like had there been no ICANN?”

The deeper question is do we want the internet to be run on the basis of open entry to providers and consumer choice among those providers or do we want to continue down the road of the kind of central planning authorities used in the old USSR.

implications beyond Naseem Javed  –  Jan 18, 2011 9:49 PM

Ken, good points, I too was once a harsh critic of ICANN and never liked behind the door sluggish decisions, but things are changing and we need a far stronger and transparent leadership like ICANN ever more so with the global expansion of internet users. The gTLD program is a big test for them and we all await the outcome.

Overzealous protection Daniel R. Tobias  –  Jan 19, 2011 1:01 AM

I remember lots of instances of overzealous trademark protection during earlier new TLD rounds, and various corporate lawyers spouting off in articles about how essential it was to protect their marks, like for instance the Caterpillar heavy-equipment company insisting that they absolutely had to have the word “cat” in all TLDs.  (What did they think about the .cat domain?)

CAT & Coke Naseem Javed  –  Jan 19, 2011 1:24 AM

Daniel, the domain name protection industry tried all such things and provided some small success. 25,000 registrations around every other major brand name is a joke. CAT is a brand like Coke and needed some protection. Bottomline weak names are problem and 95% of name out there are weak names.

CAT got your tongue? Daniel R. Tobias  –  Jan 19, 2011 1:46 AM

But why shouldn’t feline enthusiasts have a chance to get a “CAT” domain?  Why should one company get a monopoly on a common word like that?

Tongue Naseem Javed  –  Jan 19, 2011 2:04 AM

Dan, at times gtld is an open game, any group can try, but Protection can only be secured with a protectable name… CAT is cat. The global feline association may try to invest 500K?

.cat Karl Auerbach  –  Jan 19, 2011 2:06 AM

One should not forget that a strong proponent of the .cat top level domain was a very well liked (and deservedly well liked) member of the ICANN board of directors from Barcelona Catalonia.

This ought not to reflect negatively on the person involved - who had every right to aspire to a TLD for his home region - but rather on the ICANN process that allowed the appearance of favorable treatment to occur.

By-way, I want .dog, the TLD for dyslexics.

cats and dogs of the gtld Naseem Javed  –  Jan 19, 2011 4:59 AM

.dog it is…. well done Karl

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