Re: Thread 2: 60-day issue

[Carl Oppedahl <carl@oppedahl.com>]

At 10:33 AM 12/25/96 -0800, Kent Crispin wrote:

>Carl Oppedahl said:

>[...]

>> Under the IAHC proposal, a covetous trademark owner that reacts within the
>> 60-day period will have to try to find a court that feels it necessary to
>> order a transfer of the domain name.
 
>> But please, please, think about this.  If some trademark owner decides it
>> cares enough about its trademark to obsessively study the lists of domain
>> names that are in their 60-day periods ... why doesn't that trademark owner
>> simply register the domain name?  The very fact that it did not bother to
>> register it stands for something.

>Good point.  And it undercuts the value of the 60 day waiting period 
>even further -- how are you going to convince a judge 4 years from 
>now that some company that had *no* internet involvement up to then 
>should have been looking at lists of domain names for possible 
>trademark infringement?

No, that's not how it works.  I've explained this several times but am
quite willing to explain it again.

Trademark owners who assert claims against domain name owners fall into two
categories.

1.  Trademark owners who have found someone who is infringing their
trademark -- using a name that causes confusion among customers as to the
origin of goods or services.  This use may be in a second-level domain, or
may be embedded in the text of a web site.  Such infringing conduct might
easily have begun only long after the domain name was registered.  It is
easy to recognize these trademark owners because the only relief they ask
for from the court is that the defendant "cease and desist" from its
infringing conduct.

2.  Trademark owners who go to register a domain name, discover that the
one they want was taken years ago, and figure "why not?" given NSI's
terrible policy, the one that always takes the side of the trademark owner,
so they try to frighten or browbeat the domain name owner into giving up
the domain name.  These trademark owners merely covet a domain name, but
have no bona fide claim of trademark infringement.  To the extent that they
try to pretend that registering a domain name, and doing nothing else,
counts as trademark infringement, well, the infringement began the day the
domain name was registered, didn't it?  It is easy to recognize these
trademark owners because the relief they ask for from the court is that the
court order the transfer of the domain name to the plaintiff.

Now let's return to your question.  You asked "how am I going to convince a
judge 4 years from now that some company that had *no* internet involvement
up to then should have been looking at lists of domain names for possible
trademark infringement?"  

The answer in the case of #1 is, there is no need to convince a judge of
anything like that.  If the conduct of the domain name owner gives rise to
confusion as to the origin of goods or services, then that conduct (which
is happening now, and presumably only recently began) is what matters.
What the trademark owner did or did not do back when the domain name was
registered (and before the offending conduct began) is of little or no
interest to the court or to the parties.

The answer in the case of #2 is, again there is no need to convince a judge
of anything like that.  The party that needs to convince the judge of
something is the trademark owner, who has the difficult task of explaining
why, if mere ownership of a domain name counts as infringement, didn't the
tradmark owner do something back during the 60-day period?  The honest
trademark owner will not even bother to sue, knowing that it doesn't have a
good answer to this question.