Re: Thread 2: 60-day issue

[Carl Oppedahl <carl@oppedahl.com>]

At 12:15 PM 12/25/96 -0800, Kent Crispin wrote:

>Carl Oppedahl said:
>> 
>[...]
>> 
>> 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.
>
>Eh? The honest trademark owner would say "How was I supposed to know 
>about the 60 day period? -- I didn't know domain names existed back 
>then."
>
>Suppose I get the name "pepsico.com" -- Pepsi doesn't know the the
>internet exists.  Pepsi wakes up one morning and discovers the
>internet, and says "Hey, some joker is using 'pepsico.com'".  The
>judge says "sorry, you should have complained during the 60 day
>waiting period".  Pepsi's expensive lawyers tell the judge "there was
>no legal requirement that we look at this web page we just found out
>about.  We certainly could not be held responsible for knowing about
>it."

You have selected an extremely rare example, the example of a unique
trademark.  Only one company in the entire world uses the trademark Pepsi,
or so close as to make no matter.  In that case, Pepsi's expensive lawyers
say "gosh, your honor, we only yesterday learned that the Internet exists",
everyone giggles at how stupid Pepsi must be to have trusted its future to
such lawyers, and because the trademark is unique, the judge orders the
domain name owner to cease and desist.  And Pepsi hires new lawyers.

In such a case the 60-day period is irrelevant.  Anybody who registers a
domain name "pepsi" or "pepsico" knows or should know that any court in the
world will order them to stop.  

The other 99.99% of trademarks are non-unique.  Juno Electric (a maker of
electric lights) looks around and discovers the Internet.  Tries to
register "juno.com", learns that it was taken a year before by an email
service provider.  Juno Electric's expensive lawyers tell the judge "there
was no legal requirement that we look at this web page we just found out
about.  We certainly could not be held responsible for knowing about it."
Judge says, "hey, you snooze you lose.  Maybe you should register
junoelectric.com or maybe you should register in the US domain."

>And if ownership of a domain name does *not* constitute infringement
>then what good does the 60 day wait do? I go get pepsico.com.  Pepsi
>immediately sends me a letter, well within the 60 days.  I tell them
>to go to hell -- they can pay me $600000 for the name, if they like,
>but mere ownership of a domain name doesn't constitute infringement, 
>so I intend to keep it...I now own something clearly valuable to 
>Pepsi, and it's just a matter of negotiation, now.

Nope, you are mistaken.  Pepsi, owner of a unique trademark, will have no
difficulty using the Federal Anti-Dilution Law to obtain an order directing
you to cease and desist.  You have no negotiating power then.