Re: Conflict resolution?

["G. Gervaise Davis III" <ggd@iplawyers.com>]

On 19 Nov 96 at 11:58, Gert Blij wrote:



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> From: Aveek Datta <MoNoLiTH+@CMU.EDU>
> To: iahc-discuss@iahc.org
> Subject: Re: Conflict resolution?
> Date: Monday, November 18, 1996 11:18
> 
> Domain names were  always supposed to confer no trademark status.

I can't agree with this, neither with the "first come, first serve"
argument. The present conflict resolution document very specifically
refers to the right of trademark owners to _their_ domain name and has
a whole lot of other great rules and regulations. The problem is that
they are only words and are not enforceable, other than for the two
parties to go to court (in America) to slug it out.

Gert

>>>>Gert and others -

You are, respectfully, both wrong.  The problem is that a domain name 
is not automatically a trademark use and more significantly, as I 
have pointed out here and elsewhere for a year, the problem is that 
TM's are registered in 42 international classes, and unless the 
domain name system deals with this, you could have 42 TM owners, at a 
minimum, demanding their right to the same domain name.  Even with 42 
classes, it is also possible to have hundreds or thousands of valid 
TM's in one country for the same word.  Look up in any TM database 
the words  "United"  "Allied" "U.S. x x x" or "bass" - the latter of 
which has 762 or more valid marks in the US PTO.

Second, if I use a domain name only as an email drop for personal 
use, it is neither commercial use nor trademark use and the TM owners 
of the world have absolutely no right to object to the use of it by 
another person or entity.  I have already won 1 such case in federal 
court, and have caused  another four or five tm owners to go away 
after explaining this issue and the current law.

IAHC and other Internet entities cannot solve a problem which is 
inherently an International legal issue over differing TM laws and TM 
laws that are all based on exclusive use in a specific country and 
for a specific product.

G. Gervaise Davis III, Business and Intellectual Property Lawyer
Davis & Schroeder P.C., P.O. Box 3080, Monterey, CA 93942
voice - 408.649.1122      facsimile - 408.649.0566
Visit our WebPage at http://www.iplawyers.com for more information
and addresses of other members of the law firm.