<nettime> Milton Mueller study on domain names and trademarks

[Declan McCullagh <declan@well.com> (by way of pgp@pgmedia.net (name.space))]

date: Wed, 03 Jun 1998 15:34:55 -0400
from: Milton Mueller <mueller@syr.edu>
to: politech list <politech@vorlon.mit.edu>
subject: Domain names and trademarks

ACADEMIC STUDY DEBUNKS TRADEMARK- DOMAIN NAME CLAIMS

JUNE 3, 1998

An independent academic study raises serious questions about
current efforts to require domain name registries to aid in the
policing and enforcement of trademark rights.

The report, authored by Professor Milton Mueller of the Syracuse
University School of Information Studies, collects statistical
data about what kind of conflicts have actually led to
trademark-based challenges to domain name registrations, and what
kind of settlements or decisions have resulted.

The study collected a sample of 120 cases of conflict between
domain name registrants and trademark owners. These cases were
classified into four distinct types, based on the way in which
the challenged domain name was being used and the intent of the
original registrant. The four distinct categories of conflict
were:
* Infringement - where there is possibility of confusion, intent to
deceive, and/or dilution of a trademark
* Speculation - where names are registered with the intent to
resell for profit, but not used in conjunction with the sale of
products and services.
* Character string conflicts - where two or more organizations have
legitimate claims to a name and there is no intent to infringe a
trademark.
* Parody and preemption - where names are registered and used
non-commercially to satirize or otherwise make a point about the
organization referenced by the name.

Of these four categories, only the first would be classified as
trademark infringement under existing law.

The statistical evidence shows that infringing cases formed a
very small minority - slightly less than 12 percent - of the sample.
Moreover, in nearly all of the cases of real infringement, the
data show that court litigation provided a quick and effective
remedy. Disturbingly, the largest number of cases (49%)
constitute character string conflicts. These cases involve common
names (such as "prince" or "united") that may be legitimately
used by hundreds of organizations or businesses. If the largest
single category of trademark-domain name conflicts arise in this
way, trademark rights are being inserted into disputes in which
they have no legitimate role. 36% of the cases resulted from name
speculation; 4% resulted from parody. Altogether, a whopping 88%
of the cases constituted types of conflicts where the application
of trademark rights is problematical at best.

The study concludes that in the domain name arena, property
rights in trademarks are being pushed beyond the bounds
established in law. The report criticizes efforts by the Internet
Society, the World Intellectual Property Organization, and the
International Telecommunication Union to regulate domain name
distribution on behalf of trademark owners. The study supports
the conclusion of a November 1997 International Trademark
Association (INTA) report that domain name registries should not
be involved in trademark claims, as existing legal remedies are
sufficient to protect legitimate trademark rights.

The complete study is being submitted to academic journals and
will be publicly available in July. Questions about the study and
its method can be directed to Dr. Milton
Mueller, mueller@syr.edu.

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