Re: 60 day waiting period -- look at the facts!

[Carl Oppedahl <carl@oppedahl.com>]

At 03:43 PM 01/06/97 -0800, Christopher Ambler wrote:

>> Keep in mind *who* one lodges a complaint with.  Under the IAHC proposal,
>> the complaint is lodged with a court.  And someone who waits until the
>> 59th day to file their complaint with a court, having taken no previous
steps
>> to raise their concern with the domain name owner, is going to find it
>> difficult or impossible to talk the court into granting a preliminary
>> injunction.
>
>They why 60 days, if 59 is so obviously useless? Why not 30? Why not 10? Why
>not just not at all?

I didn't say it was obviously useless.  The idea is to provide some
non-negligible time period during which someone who feels the domain name
*in and of itself* presents a trademark infringement could have griped, and
failed to, thus providing some stability for the domain name owner and an
indication why the court should be skeptical of someone who comes in after
a couple of years claiming that the domain name *in and of itself* is an
infringement.  Ten is too small.  Thirty might be okay, 45 better.  I am
not absolutely tied to sixty.

I have been there and done that, defending domain names against attack by
NSI and by trademark owners.  In most of these cases I have represented the
domain name owner.  If someone were to attack my position (you haven't, but
others have) as somehow representing the party line of trademark owners,
that person would be sadly mistaken.  My bias, if any, is in favor of
innocent domain name owners.

What I am trying to say is (1) I am on your side, and (2) I speak with more
experience in this area than probably any other commenter who has
participated in these discussions.  

>> With the 60-day period being followed, a grabby trademark owner will have
>> a hard time explaining why they waited until long after the 60-day
period to
>> gripe about the domain name.
>
>Not at all. "Your honour, we were not made aware of this 60-day period
when we
>registered our trademark with the USPTO, had no way of knowing, and are
just now
>entering into the Internet arena with our advertising. Had the USPTO
notified us
>of this new requirement, we would have begun paying our trademark attorney
extra
>to police this as well."

I disagree.  The USPTO is irrelevant for at least two reasons.  First, any
domain name (no matter what the last two or three letters may be) is
worldwide, and may offend some trademark owner anywhere in the world.
There is nothing other than historical accident to make the USPTO
better-known.  Second, in many cases the trademark owner who has a
legitimate gripe may easily not have a trademark registration at all, which
again makes the USPTO irreleveant.

This "I didn't know about the sixty days" excuse will get used at most
once.  Then some judge will laugh the trademark owner out of court, and it
will be written up in the casebooks, and it will be unavailable from that
day forward.

>> Let's state this clearly.  Stability of URLs is very, very important to
>> the Internet.  More important, I suggest, than instant registry of domain
>> names.  (And please recall that if somebody needs a domain name in a
>> hurry, they can always simply register a third- or fourth-level domain
name, and
>> obtain what they want instantly.)
>
>Except for those companies not yet on the Internet, or who want brand-name
>(read: trademark) development. Those companies are going to sue, 60-day wait
>or not.
>
>Let's state this clearly. The 60-day wait will serve absolutely no purpose
>whatsoever. Those who are going to sue are going to sue anyway.

So you favor quick registration over long-term stability.  Well, you are
certainly entitled to your own preferences.  As I said, I feel stability is
more important.


---
Carl Oppedahl, Oppedahl & Larson, patent law firm
http://www.patents.com/ has hundreds of pages of answers to 
frequently asked questions on patent, copyright, and trademark law