60-day wait and repository

[Robert Frank <bobf@corsearch.com>]

First, congratulations to all who have worked on the development of the IAHC proposal.  That includes all those dedicated souls who have written or read on the various lists over the last three years and those who have participated in the numerous conferences run by Harvard, ISOC, CIX, etc.  Although the IAHC plan is not perfect, it has many characteristics that will help the internet community.

I have several comments about the draft, mainly dealing with the 60-day period and the Repository.  First, my perspective.  For almost 14 years I have been the President of CORSEARCH, Inc. which is the second largest trademark research firm in the world.  For 1997 we anticipate completing over 35,000 trademark searches, most of which will also include a "domain name" search.  In the US alone, it is estimated that over 100,000 full trademark searches will be completed in 1997 and tens of thousands of "knockout" searches will also be completed by persons using various online databases. In our industry, over 50% of the "full" searches are completed on a schedule taking approximately one-week from search order to the report being in the attorney's hands (with a search fee of approximately $325).  Less than 10% are completed in one day or less (with search fees alone often exceeding $700).  After that, the attorney has to read the report, prepare an opinion letter for their client, send the report to the client and often further discuss the clearance report.  The point of this is that in most companies both the attorneys and the marketing personnel realize that clearing a name takes about two weeks.  As recently as 5 years ago the same process took over two months.

Further, not all searches are created equal.  Some are for clearing a proposed new name, others are for policing existing names for infringers.  Still others are to used to determine if a name is either diluted or generic. 
 
I see postings from representatives of companies like Memra or Image Online Design.  I hope you all took time to get your names cleared before beginning your business.  If you haven't, then perhaps you should read the 1996 case between Tommy Hilfiger and the International Star-Class Yachting Association.  Not searching a name prior to using it has been determined by a Federal Court of Appeals to be a type of willful trademark infringement (if, of course it is first determined to be infringing at all) whose penalties are far greater than non-willful infringement.  Since Star Class, alot more companies and individuals are searching than ever before.  They have to because of the consequences.

>From a business perspective one would say that I would advocate that everyone conduct a domain name search; more business and more money for me.  However, all the trademark search firms that provide full searches give away the domain name search as a part of the full search.  We all began offering domain name searches over a year ago and no one has raised rates considerably since then.  We incur extra expenses but do not charge for the service.  What I am advocating later in this posting is so advocated because it is in the best interest, IMHO, of *all*  trademark or tradename or service mark owners or applicants.

The 60-day waiting period is essential.  As I read the postings, the Registries will not be involved at all with the evaluation of whether the proposed domain name conflicts with an existing trademark and will abide by court orders from courts of proper jurisdiction.  This is fine and gets rid of one of the major problems with the current (NSI) dispute program.  But to affect this proposal it becomes essential that a source of all proposed and currently registered domain names be readily available for use by both lay persons and attorneys.  That source has to be quite a bit more sophisticated than the whois feature offered by NSI and proposed in the IAHC draft.  Here's why.  Toys R Us has successfully stopped other companies from using the "R Us" formative just as McDonald's has successfully stopped McDonuts and McBagels and McDentist.   It is impossible for Toys R Us or McDonalds to think of every name that might have an "R Us" feature or a "Mc" prefix.  They may not know that a Coffees R Us or McCoffee exist in order to do a whois to identify the owner and to bring an appropriate action.  Instead, companies often rely on outside search firms who have more sophisticated searching software to uncover these infringers, whether the use be found in the Federal, State, or domain name registries or by simple common law usage.  (I will not bore you with the concept of "confusingly similar" as applied to trademark law.  Suffice it to say that companies have been told to stop using a "confusingly similar" name to some else's registered trademark for years and this is a sound principle of trademark law.  It does not have to be "identical" (whatever that is) to be infringing.)

Given the time frames mentioned previously, reducing the time period to 30-days will require companies and their attorney's to order expedited searches on potential infringing names which will cost those companies more money then if they had the luxury of the 60-day window.  Adequate time should be allowed for a thorough review by the attorney, thorough discussion with the client, and timely filing with a court of papers seeking to injoin the Registrant.  So much has been written about the unfair advantages that big businesses have.  I can assure you that if you go to a 30-day holding process, small businesses will be hurt more; they will have to order expedited searches and pay their attorneys a premium for rush reviews.  Big companies like Pepsi and Texas Instruments can more easily afford a $850 same day search than can a smaller entity such as Memra or Image Online Design.  If you don't want to fill the pockets of attorneys with money, don't given them the opportunity.

This brings me to my second point, the Repository.  According to the draft there is no provision for the Repository to release the domain name database, including domain name, owner, administrative contact, equest that IAHC and CORE consider this suggestions.

Finally, at the Harvard Conference a few months ago, my dear friend Don Mitchell of NSF (and the person who oversees the NSI contract) said that if I wanted the InterNic database easily released I should post an RFC to the IETF outlining the request.  Regretfully, people at the IETF told me that such a request was not proper for an RFC.  But the IAHC draft, as I understand things, will be (or is) an RFC and therefore, I request that the IAHC include some provision for total release of the "demographic" (non-financial) data to the public of the domain name database as held by the Repository.  If the comments against such a release are not as strong as Don believes they may be, then possibly it will help persuade him to release the InterNic database.  That would be a major accomplishment as well.


Sorry for the length.  I look forward to the comments in response.  Again, great job folks.  Keep it up.

Robert Frank, President
CORSEARCH, Inc.
16 West 22nd Street, 8th Floor
NY, NY 10010

The entire text of this posting was created in my small mind and it is that small mind that is solely responsible for its content.  The opinions and distortion of facts are purely mine as well.