NYLawyer.com article on the fact that there are fewer domain name disputes these days.

Paccar v. Telescan, No. 00-2183 (6th Cir. Feb. 5, 2003) (Injunction against defendant’s use of PETERBILT and KENTWORTH trademarks affirmed in part, vacated in part).

This is a very pro-plaintiff infringement case involving the domain names peterbilttrucks.com, and kentworthtrucks.com and two other variants, registered to a company which provides communication services to truckers.  There was apparently no cyber-squatting cause brought. 

Of interest from the decision:

The district court did not adopt a per se rule that every domain name identifies the owner or affiliation of the site. Instead, the district court joined many other courts in stating the obvious: words in many domain names can and do communicate information as to the source or sponsor of the web site (citations omitted).

and:

In Brookfield, the Ninth Circuit explained why simultaneous use of the Internet as a marketing tool exacerbates the likelihood of confusion:

In the Internet context, in particular, entering a web site takes little effort–usually one click from a linked site or a search engine’s list; thus, Web surfers are more likely to be confused as to the ownership of a web site than traditional patrons of a brick-and-mortar store would be of a store’s ownership.

Brookfield, 174 F.3d at 1057. Even in the absence of proof regarding Internet marketing’s effect on consumer confusion, the district court’s finding that using the Internet as a marketing channel increases the likelihood of confusion is not clearly erroneous.”

There is also a lengthy discussion as to rejection of a nominative fair use defense (for more on nominative fair use, see the Beach Boys case here.)

Accordingly to this branding company’s diatribe against brands with the word SOLUTIONS, I should not re-name my law firm TRADEMARK, COPYRIGHT and DOMAIN NAME SOLUTIONS, regardless how accurate.

A worried consumer writes Walt Mossberg of the Wall Street Journal:

Q: I have just installed a cable modem and Linksys Wireless Network (802.11b) in my home. Did I make a mistake by not going with a “Wi-Fi” network? I’m now worried I won’t be able to hook up to Wi-Fi networks when I’m traveling with my laptop.

to which Mr. Mossberg replies:

A: You most likely did go with a Wi-Fi network. Wi-Fi isn’t a technology per se. It’s actually a label bestowed by an association of companies on wireless gear that meets certain standards for interoperability. The companies pay the association, which is called WECA, to test their equipment and bestow the Wi-Fi label. The engineering term for the underlying technology in the equipment is either 802.11b, 802.11a or, soon, 802.11g. But the popular trade name is Wi-Fi.

You can check whether your wireless product is officially Wi-Fi compatible by going to the WECA Web site, at www.weca.net, and clicking on the icon that says “Wi-Fi Certified Products.” Even if a particular product isn’t officially Wi-Fi certified, it may still be compatible with Wi-Fi gear, but there’s no guarantee. Most, if not all, Linksys gear is certified as Wi-Fi compatible. You should find a Wi-Fi logo somewhere on the box or the unit itself.

From a trademark point of view, WI-FI is functioning as a certification mark, owned by WECA.  Certification trademarks don’t indicate the source of a product like a conventional trademark, but instead indicate quality (Underwriters Lab Approval), regional origin (Roquefort Cheese) or the origin of a component (such as union labor).

I was surprised to read in McCarthy’s that TEFLON is a certification mark owned by DuPont (which itself no longer makes Teflon).  LINUX is not a certification mark.  The owner of a certification mark cannot refuse a license of its mark for any reason other than the failure to meet certification criteria.

Here’s fun: use WI-FI (and WIFI) as metasearch terms and see how many applicants may be trying to claim some rights in the term.

Here are links to correspondence between the owners of the mark MEDIANEWS GROUP protesting the use of MEDIANEWS for a column about, I’m going to guess, media news.  Poynter caved and renamed the column after its author.

Davina Lee at Bird & Bird in Hong Kong writes to advise that Intellectual Property Department has made available online trademark search of the Hong Kong registry.  Right now you can search by mark, soon you will be able to search by regsitrant as well.  I used PIKACHU as a test and it displays images nicely for a search if this kind.

Last week Ben Edelman released his report on typo-squatting  (for example the registration of geapliances.com in order, imho, to divert traffic intended for geappliances.com, to a porno site).

Today’s ICANNWatch and Friday’s Copyfight linked to a paper from Seth Finkelstein, describing a program for “fuzzy-searching” of domain names, somewhat remiscent of Google’s “Did you mean . . . ” spell-checker. 

Can “fuzzy” functionality be added to a browser?  What if typing geapliances.com into an address bar led to at least a portion of the screen saying “Did you mean to access geappliances.com” (with perhaps additional descriptive info).

Why can’t an address bar in a browser have increased functionality – for example can common names replace urls in the address bar?  Alternately, can a common name system replace an address bar?  A good common name system would allow Joe’s Pizza in Armonk to coexist with Joe’s Pizza  in Thornwood.

This leads me to one of my pet obsessions: “Brand As Navigator”  by which I mean improving the experience of the consumer (and brand owner) in matching a request for a brand with an authorized source of the brand.  We are not talking about policing measures such as better UDRPs or better “sunrise periods” for new TLDs, but by the development and deployment of better navigational systems on the Internet.

My thinking starts with several propositions:

1.  The domain name system is an addressing system, not a directory.

2.  Users misuse the DNS as a directory when they use the address bar of a browser to guess a domain name.

3.  Trademark owners, domain name speculators, ICANN, registrars and TLD registries all institutionalized this misuse in their own ways.

4.  Development of good navigational systems may have been stunted by the diversion of resources into the domain name system (note the use of “may have”).

5. The magnitude of trademark infringement, trademark dilution, cyber-squatting, typo-squatting,  and mere consumer confusion, has likely been increased by the absence of better navigational systems and the emphasis on domain names.

6.  Small business owners are hurt the most, in my opinion, by the absence of good navigational systems – Joe’s Pizza for example.  See here.

The trademark lobby, in its relationship with the DNS, has taken primarily a reactive role, namely advocating methods to control the daunting amount of infringing behavior (disclosure – as a former member of INTA’s Internet committee, and as a current member of the IPC of ICANN, I’ll take blame on that point). 

What we have not seen from the trademark lobby, nor, to the best of my knowledge, from the business constituency of ICANN, is a push towards the creation of new navigational systems which would allow the user to utilize brand names and business names as navigational systems – without the (in my view) unacceptable level of external costs with which the DNS currently burdens brand owners.

RealNames (regardless of your views on whether it was good or bad), was at least an attempt at solving the problem.  I personally don’t think that the underlying technology of a global navigational system should be proprietary, and RealNames’ demise removed the threat of someone “cornering” name navigation for now.  However, Microsoft (RealName’s major investor), reportedly has shown broad interest in the technology.

This to me suggests that the time has come for a discussion between, among other concerned parties, ICANN and its constituencies, the IETF, and the W3C to look at the next generation of navigational systems.  To be sure, there are various initiatives in the broad area, such as the Common Name Resolution Protocol.  My worry is that these protocols are being developed without input from brand owners (see parapgraph 8 in this RFC).  I hope that changes.  At this stage of the process, making sure that the person typing in DELTA gets the DELTA they want (and not an unrelated DELTA or an infringer), is a usability enhancement issue, not a legal issue.

Usually denials of cert in trademark cases get next to no coverage.  The denial of cert in the BARBIE GIRL case has gotten an astounding amount of ink (and pixels).  Here’s the latest, a parody article from MSNBC.

The BARBIE GIRL case illustrates one peril in going after a perceived “tarnishment” of a property – the lawsuit keeps the tarnishment circulating long long after it normally would have dissipated.  If the press loves to hate you, be judicious in what you protest.