Sally...One other question that was previously posed to Carl Oppendahl:
Can you cite a specific example of a past experience in trademark law where a group of name users agreed to a self-imposed delay in using those names until trademark holders had an opportunity to review the names that were proposed for use? If such a historical reference exists, was any statistical record kept to show the effectiveness that the self-imposed delay had in reducing trademark litigation?
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: From: Sally Abel <Sally_Abel@fwpa.com>
: To: iahc-discuss@iahc.org
: Subject: IAHC Proposal (Attacks Thereon)
: Date: Thursday, January 09, 1997 6:57 PM
:
:
:
: A number of folks on this list have questioned the 60 day
: waiting period, asking (a) what purpose it serves, and (b) why 60 days,
: rather than 10, 30, 59 or whatever. Many thoughtful responses have been
: posted to date, so I will try to avoid being (too) repetitive if
: possible.
:
: (a) Purpose of the waiting period.
:
: The primary purpose of a waiting period is to encourage early
: dispute resolution which should result in:
:
: * A reduction in litigation by encouraging dispute resolution
: before that point;
:
: * Fewer instances of domain name holders making significant
: investment in a domain only to lose it;
:
: * Increased certainty that a chosen domain can be developed
: without unanticipated loss of the domain down the road;
:
: * Decreased registry challenges.
:
:
: Many domain name applicants want an SLD that is or is capable of being
: more than part of a simple address. In fact, those who oppose a waiting period
: as being an imposition on business development when the IAHC proposal includes
: a random alphanumeric for those who do not want to wait 60 days, appear to
: believe that a domain name creates a valuable identity for the new business
: that the business should not have to wait 60 days for (a reference was made
: yesterday to the need to "brand"). This valuable identity is what is known to
: trademark owners as "goodwill", and it is this "goodwill" that is the essence
: of trademark rights. So, if you believe that it is important to preserve a
: domain name holder's goodwill, you can understand the importance of doing the
: same for a trademark owners.
:
: A waiting period is an attempt to strike a balance between the
: trademark owner's interest in preserving its goodwill, and the domain name
: applicant's interest in a domain name that may be perceived as generating
: "goodwill" or as an important business symbol. ("Trademark owner" should be
: read broadly to include other names which may be legally protectable in a
: commercial context, from business names and organization's names, all the way
: to celebrity's names).
:
: Combined with public notice of the application and related contact
: information, the waiting period gives the trademark owner time necessary to
: assess whether a particular domain may be a problem and to contact the
: applicant, before the name is awarded and the financial and emotional investment
: significant, to attempt to resolve the perceived problem. With a 60 day period,
: trademark owners will not have an incentive to sue first and ask questions
: later.
:
: Obviously there will be some litigation where the parties
: cannot resolve their differences amicably and the trademark owner
: believes litigation is necessary to protect trademark rights. But with
: a 60 day period, those instances should be infrequent, and the domain
: holder will be in a strong position to assess whether to proceed with
: the name in light of the challenge, again before making a significant
: investment in the domain.
:
: It is true that the waiting period proposed by IAHC does not legally
: require a challenger to raise a challenge during the waiting period (for such a
: legal requirement, we would have to go to Congress and the other 200+
: governments around the world)
:
: However, U.S. courts and most courts around the world already
: follow guidelines when granting preliminary injunctive relief (such as shutting
: off a domain name) -- specifically most courts won't grant such relief unless
: the challenger has acted very quickly to challenge the allegedly illegal conduct
: -- if the challenger waits, then he will lose his right to preliminary relief.
: The reason the courts require quick action to obtain preliminary injunctive
: relief is because it is unfair to grant it if the challenger has just sat on
: his/her rights while the challenged party continued the allegedly objectionable
: activity.
:
: How quickly a challenger must act varies with the circumstances,
: and varies from country to country. For example, someone seeking a preliminary
: injunction against trademark infringement in Germany must sue within 4-6 weeks
: of finding out about the infringement. In the U.S., the period is usually a
: longer and will depend upon how badly hurt both sides will be if the relief is
: or is not granted. For example, if the alleged infringer has already invested
: heavily in the allegedly infringing name and has used it for six months
: publicly, and the challenger knew about the name six months ago, but didn't do
: anything to challenge it, a court will "balance the equities" and will likely
: conclude that the challenger should have acted more quickly and the challenged
: party will be greatly harmed by a preliminary injunction -- so it will refuse to
: grant the preliminary injunction.
:
: This is how the waiting period is intended to work. By creating
: a system whereby a domain name applicant's intention to use a new domain
: name is published on a public register for 60 days before use,
: challengers will *as a practical matter* be forced into acting quickly
: during the waiting period. There will be no hard-and-fast legal
: requirement. BUT courts will look at the fact that the new name was
: published and that a waiting period was imposed and will be very
: reluctant to grant preliminary relief to a challenger who failed to act
: during the waiting period. This is basically true under most of the
: world's various trademark laws. And, of course, challengers (and their
: lawyers) will know this and will therefore be pushed into acting quickly
: if they want to shut down an allegedly infringing new domain name.
:
: Of course, it would be even better if all challengers *had* to raise
: their objections before expiration of the waiting period -- this would increase
: certainty and fairness. However, while this may be a laudable long-term goal,
: it cannot be implemented quickly in the short-term because it would require the
: passage of legislation in each country around the world.
:
: So, while not perfect, the purpose of the 60 day waiting period
: is to not only give challengers an opportunity to raise a challenge
: before someone invests in a domain name, but indeed to effectively
: require (to the extent possible) that such a challenge be raised before
: use is begun, so that a domain name user isn't put into the unfair
: position of using and investing in a domain name that will ultimately
: end up being taken away.
:
: (b) Why 60 days?
:
: The choice of 60 days is not arbitrary. In order for courts to
: hold challengers to raising their challenge within the waiting period,
: the period has to be long enough that no-one can argue that they didn't
: have enough time to raise a challenge. Unfortunately, it does take time
: for notice of a published domain name to reach interested parties, and
: for those parties to investigate the domain name, and for a demand letter
: to be sent and responded to, and for a challenger to pull together court
: papers -- if sufficient time isn't provided for in the waiting period for
: this activity to occur, then challengers will successfully argue that
: they shouldn't be held to acting within the waiting period, which is not
: what we want!
:
: Generally, the shortest period for acting to obtain preliminary
: relief in a trademark case is 4-6 weeks, as in Germany. But most
: countries allow substantially more time, usually several months and
: sometimes a year or longer (depending on the circumstances). The
: International Trademark Association's (INTA's) original proposal for a
: waiting period was 90 days in recognition of this norm. However, in view
: of the demands of "internet time," IAHC has chosen to propose 60 days,
: which is a short period of time, but probably still long enough that the
: courts should generally be willing to hold challengers to it. In
: addition, if a challenger acts early in the 60 day waiting period, then
: the waiting period will allow some time for the parties to work out an
: amicable resolution without actually going to court. If a waiting period
: of less than 60 days is adopted, we run a real risk of the courts
: deciding not to "enforce" the waiting period on challengers seeking
: preliminary injunctive relief.
:
:
:
: Sally Abel
: Not speaking on behalf of the IAHC
: