Re: Who really benefits from 60-day period?

[Carl Oppedahl <carl@oppedahl.com>]

At 10:50 AM 01/08/97 -0800, Michael Dillon wrote:
>On Wed, 8 Jan 1997, Carl Oppedahl wrote:
>
>> 1.  IAHC proposal in place.  Covetous trademark owner awakens to the
>> Internet, tries to grab a domain name that is a couple of years old.  Judge
>> laughs the trademark owner out of court, pointing out that the trademark
>> owner hasn't offered any good excuse why it didn't speak up during the
>> 60-day period.
>
>The trademark owner is going to know in advance that the 60 day waiting
>period may end up being used against them so they will prepare a legal
>argument that shows why the 60 days is not relevant. For instance, if
>I were to register pepsi.inet and for some reason Pepsico's trademark
>people missed the notice I don't see how that would give me any protection
>from Pepsico when I start to infringe upon their trademark by running the 
>"Coke is better!" website at http://www.pepsi.inet

You have selected an extremely atypical example, namely a unique and coined
trademark.  Nobody who registers pepsi.xxx or exxon.xxx is going to get
away with it, 60-day period or not.  If you use an example like pepsi, it
is easy to say that the 60-day period will not make any difference.  

But if you use a more typical example, such as clue.com or regis.com or
juno.com, then it is easy to see how the 60-day period could make a big
difference.

>Also, you are presuming that a judge would make case law that gives that
>60 day waiting period special powers. I think that in any case before the
>courts involving the 60 day waiting period, trademark owners will not want
>to see the 60 day period create a case-law precedent for diluting their
>rights after the 60 days and so they will take measures to prevent that. 
>I expect that one of those measures will be to directly launch suit
>against CORE and the IAHC. In this instance, there will be no possibility
>of interpleader.

Why not?

>> There is no way, none at all, that any domain name registration authority
>> is going to take sides in a domain name dispute.  
>
>By creating the 60 day waiting period they already have taken sides
>with the trademark owners who do not currently have a domain name. 

Wrong.  By creating the 60-day waiting period they are taking sides with
the domain name owners who would like to have stable domain names.

>They
>are encouraging trademark owners to launch frivolous suits against
>new domain name owners who have not infringed on a trademark and who have
>no intentions of doing business in a way that infringes on a trademark.

Wrong.  They are discouraging such suits generally, and are compressing the
few suits that remain into a narrow time window.

>The actions of CORE/IAHC is directly damaging to these people and in
>addition the 60 day waiting period is directly damaging to a whole
>class of people, those who wish to register new domains, so it could well
>lead to a class action suit against CORE/IAHC.

No, you are mistaken.  Anybody who wants a domain name in ten seconds can
simply set up a third- or fourth-level domain.

>The solution is for CORE/IAHC to *NOT* stack the deck but to merely make
>sure that the public information regarding domain name owners and their
>domains is easily and promptly accessible to the public. 
>
>CORE/IAHC needs to say to trademark owners: We will not assist you in
>policing your trademarks, if you wish to police them then our registry
>information is readily accessible to you.

That's what we have now, anybody who wants to can do a Whois or search the
Thomson & Thomson database that offers a sophisticated search engine
drawing upon the Whois contents.  And, despite having that searching
capability now, we see many cases in which domain name owners who have been
using their domain names for years, not harming anyone, who find themselves
facing grab attempts by trademark owners.


---
Carl Oppedahl, Oppedahl & Larson, patent law firm
http://www.patents.com/ has hundreds of pages of answers to 
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