(Fwd) Use of Repository Data for Certain Purposes

[Horns@t-online.de (Axel H. Horns)]

------- Forwarded Message Follows -------
From:          Self <ahh>
To:            iahc-discuss@iahc.org
Subject:       Use of Repository Data for Certain Purposes
Date:          Sat, 11 Jan 1997 11:38:59 +0100

The IAHC Draft mentiones "legitimate interests of domain 
name holders and trademark owners" being a basis for a strong 
recommendation to *publish* applications sixty days prior to assigning
the requested SLD to the applicant. Such publication should take place
on a publicly available, publicized web site and include the SLD and
the contact and use information as contained in the application
(Section 5.4).

When assigned, SLD data will be hold in a "Repository". According to
the IAHC Draft Specification of 12/19/1996, such repository contains
the primary (master) data for a registry (Section 4.1). Such data
might be made available via WHOIS or WAIS.

Both published SLD applications as well as assigned SLDs will 
inevitably attract the attention of agencies performing promotion by
"Targeted Advertising" on the basis of names and adresses drawn from
repository databases. Hence, it is to be expected that strong arguing
will come up, demanding that the web site for publishing SLD
applications and the WHOIS / WAIS databases should be set up so that
no download of complete repository databases is possible.

However, there remains a problem. It should be seen as a part of the
legitimate interests of the trademark owners to be able to scan both
SLD applications as well as assigned SLDs for infringements with their
trademarks. With regard to identical infringement this is fairly
trivial and can be done with tools like WHOIS etc.

The trademark law of most countries comprises also an infringement of
a trademark by similar, but not identical strings. This concept of
'similarity' depends on national or regional law and might, inter
alia, be phonetical similarity. Hence, from a trademark owner's point
of view, it is necessary to be able to scan the repositories for
infringements by SLDs which are similar but not identical to a given
trademark.

It should be well recognized that detecting 'similar' SLDs comprises
some heuristics, and there is no standard procedure to deal therewith.
This cannot be accomplished by registrars on an objective and uniform
basis. As a result, trademark owners might want to download entire
repository databases into their particular heuristical software in
order to detect infringements. I think that such doing should be
considered legitimate.

There should be an outlet for an *authoritative* and *complete* full
copy of application databases as well as repository databases. My
present experience with .de TLD is that the WHOIS databases maintained
by RIPE NCC and DENIC are neither authoritative nor complete. This
should be improved.

An publicly available ftp site might be suitable for this purpose.

Please note that, in the world of trademarks, printed Official 
Gazettes (and sometimes even related computer files) comprising all
relevant particulars of trademark applications and/or registrations
are distributed by all of of the national or regional Trademark
Offices, and the trademark applicants / owners are not entitled to
suppress the public dissemination of such information. Hence, there
should be no restrictions with regard to SLD repositories which are
more restrictive than the current trademark practise.

This topic is particularly relevant with regard to present 
trend to establish 'sui generis' database protection. The Directive
96/9/EG of the European Commission as well as current WIPO proposals
seem to make clear that SLD repositories will be covered by 'sui
generis' regulations now or in near future. Although the WIPO draft
treaty for database protection has been postponed, this topic seems
also be covered by Art. 5 of the WIPO Copyright Treaty CRNR/DC/89. In
order to avoid any legal problems for the trademark owners, the SLD
registrars should be bound by CORE-MoU to grant a free license to the
public to make and distribute copies of repository databases.

Axel H. Horns


--
Dipl.-Phys. Axel H. Horns
     Patentanwalt
(German Patent Attorney)
http://horns.netplace.de
mailto:Horns@T-Online.de