Proposal to Int'l Ad Hoc Committee

[Sally_Abel@fwpa.com (Sally Abel)]

The below was forwarded to me by
>  Ronald L. Yin <RLY@limbach.com> at INTERNET
>Date:    12/26/96 4:40 PM
who is not on the list:


>************************************************************
                            Proposal
     
     >This is a proposal to the IAHC committee with regard to
>changes in current procedure for awarding priority in the use of 
>Domain Names.
     
     >As the Description of the Working Group stated, "..the
>human-friendly quality of Domain Name strings also has made them 
>commercially valuable."  Therefore, let us recognize these 
>disputes for what they are: namely trademark disputes.  Thus, I 
>propose the following:
     
>1.   We should eliminate all iTLD, such as .com, .org, and .net, 
>which have international rights.  Trademarks rights are 
>territorial.  An owner of a mark X in country A should not have 
>an automatic right to that mark X all over the Internet world. 
>In the trademark area, the owner would have to prove that the 
>owner had the right of exclusivity in each of the countries 
>A,B,C...., and register the mark X in those countries.  The 
>Internet should follow similar protocol and procedure.  Thus, 
>all domain names should be subsumed within a country.  A domain 
>name XYZ.com must be followed by the country of domain 
>registration, e.g. USA, or JPN, or FRA etc.  In this manner 
>Bayer.com.deu can co-exist on the Internet world with 
>Bayer.com.usa.  For any international company, such as IBM to 
>own the rights to IBM.com in USA, DEU, FRA, JPN etc, it must go 
>to each of those countries and register with the Domain assignor 
>for those countries.  This would also eliminate the problem in 
>many countries which does not recognize common law rights.  In 
>many countries, trademark registration is the only means of 
>securing one's rights.  Thus, in those countries, the domain 
>name registrant may have to first register its trademark before 
>it can register its domain name. Furthermore, it permits each 
>country to set its own rules, and not be dictated by the rules 
>established in the United States.  
     
>2.   As for the rule in the United States, perhaps there should 
>be an Internet US Ad hoc Committee, to study the problem.  
>However, it seems to me that the entity responsible for domain 
>name assignment should not have to be in the position of 
>resolving trademark disputes.  They lack the legal resources to 
>do that.  I suggest that as between a registrant who seeks a 
>domain name which is the subject of a registered U.S. trademark, 
>versus the rights of an unregistered user, that the owner of the 
>registered US mark should prevail.  To the argument that this 
>favors the registrant of the US registration, the answer must be 
>that the Domain name assignor lacks the capacity to resolve 
>legal disputes, and registration in the US PTO is prima facie 
>evidence of commercial rights.
     
>3.   As for a dispute between two non-identical names, both 
>should be registrable notwithstanding ultimately there might be 
>confusion or likelihood of confusion in the trademark sense.  
     
>4.   Finally, as for a dispute between two domain names both 
>based upon identical registered U.S. marks, but for different 
>goods or services, I suggest that both be permitted to be 
>registered, with some kind of additional name differentiator. 
>For example, owner #1 owns the registered US trademark XYZ for 
>clothing.  Owner #2 owns the registered US trademark XYZ for 
>management consulting services.  Both should be allowed to be 
>registered within the United States, with XYZ and some kind of 
>differentiator.  The differentiator may be based upon:
>a.  the US trademark classification, e.g. XYZ-cl4 v. XYZ-cl39
>b.  single additional word for description, e.g. XYZ-clothing v. 
>XYZ-svc; or
>c.  territory, e.g. XYZ-CA v. XYZ-NY
     
>I trust this is of assistance.
     
>Very truly yours,
     
>***********************************************************
     
>================================================================ 
>Ronald L. Yin                voice: 408-291-5225 or 415-433-4150 
>Limbach & Limbach L.L.P.       fax: 408-292-7394 or 415-433-8716 
>rly@limbach.com


Sally