RE: Thread 2: 60-day issue

[Carl Oppedahl <carl@oppedahl.com>]

At 02:08 PM 12/25/96 +0100, David Rosenthal wrote:

>>But the point that I was trying to make was that trademarks aren't
>>everything and that we are doing a disservice to divide the world into
>>two
>>camps;  those with trademarks on a name and those without. 
>>
>
>Correct. At least under Swiss Law (and probably many legal systems in
>Europe) trademarks are not really as relevant  as one might believe
>listening to all those discussions. This is because a trademark gives
>it's owner only protection from beeing used in connection with similar
>goods or services. A financial service using the domain bigbucks.xxx
>will not infringe the trademark of a shoe manufacturing chain that has a
>trademark on "bigbucks" as well. 

The US law is this way also.  One problem with the present NSI trademark
domain name policy is that it fails to understand this.

>Besides: If there is trademark infringement, it is one even if it goes
>unnoticed for the 60 days. I don't know what a judge would say in the
>US, but at least in my country you would have to had accepted a
>infringing use of your trademark possibily for years for loosing your
>rights to stop the infringement. Here in Switzerland all trademarks have
>to be registered to get legal protection (this is not the case in the US
>...) and within that procedure there is also some thing similar to the
>60 day-waiting period. It sure helps to avoid lawsuits, but it has not
>stopped judges to test the validity of a trademark later on once it is
>part of a lawsuit. 

What is important to keep in mind is the difference between the following:

1.  someone who is *using a domain name in a way that causes confusion with
respect to some area of goods or services*

2.  someone who simply *owns* a domain name that someone else covets.

In the case of #1, if the trademark owner runs to a judge and asks for the
judge to order the domain name owner to quit, the judge might issue such an
order, even if the domain name has been in place for many years.  The
proposed 60-day waiting period may easily be irrelevant, especially if the
offending use began last week (even if the domain name is many years old).

In the case of #2, the proposed 60-day period may be of substantial
benefit.  The covetous trademark owner goes to court and says something
that, reduced to its essence, is "I really wish I had signed up for that
domain name years ago, make them give it to me".  The court then says "is
there some good excuse why you didn't raise this issue during the 60-day
waiting period?"  Or, more likely the trademark owner does not even bother
to court, because they know they would be asked this question and they know
they would not have a satisfactory answer.

>-- Ok, so, since it could avoid lawsuits, is the 60 day waiting period a
>good idea? No, not at all. You actually can use a trademark in
>Switzerland also if is still in the process of beeing registered or even
>before. But you cannot use a domain-name within the 60 day waiting
>period under the proposal. 

See the above.

If somone is eager to use a domain name and can't wait the 60 days, let
them (1) plan more than 60 days in advance, or (2) use a higher-level
domain (e.g. newname.oldname.com).

>Why not allowing to use the domain-name immediately and leave the risks
>to the person that want's to do so? 

One problem with it is that then the domain name registration authority may
do something stupid, as NSI did, enacting a policy that puts innocent
domain name owners at risk of losing their domain names years after
registration, despite their not infringing any trademarks.

>However, most cases here can be and most likeley will be resolved using
>fair competition law. When doing so, the 60-day waiting period makes
>absolute no sense, because only the *real* use (and not the intended
>use) of the domain name will be relevant, which under the propopsal
>obviously can occur only after the 60 days.

No, you have made my point for me.  Of course you are right that there is a
world of difference betweeen the mere owning of a domain name, and what you
do with the domain name.  The 60-day period clearly separates these two
things, which is all for the good.  The merely covetous trademark owner who
simply wants someone else's domain name (and I have counseled dozens of
domain name owners in situations such as this) will generally discover its
feelings of envy after the 60 days is over, and thus is much less likely to
succeed at disrupting the domain name owner's business, as compared with
the situation under the terribly flawed NSI policy.