Re: Interesting Domain Name Trademark Dispute (fwd)

[Carl Oppedahl <carl@oppedahl.com>]

At 09:22 PM 01/11/97 -0800, Michael Dillon wrote:
>---------- Forwarded message ----------
>Date: Sat, 11 Jan 97 19:52:06 -0800
>From: Michael L Judson <judson@linex.com>
>Reply-To: inet-access@earth.com
>To: inet-access@earth.com
>Subject: Interesting Domain Name Trademark Dispute
>Resent-Date: Sat, 11 Jan 1997 21:36:10 -0700 (MST)
>Resent-From: inet-access@earth.com
>
>Here's an interesting domain name trademark dispute.  We host a domain
>name in the .org heirarchy.  The administrative contact for this domain
>recently received a message from someone who had the same name in the
>.com heirarchy and says that that name has a US trademark.  Assuming
>this is true, I doubt that this person has a legal leg to stand on
>since they currently hold a domain name in the .com heirarchy and the
>.com heirarchy is a more appropriate heirarchy for a commercial
>organization.
>
>This isn't an issue about someone "stealing" a domain name, but about
>someone claiming they have a right to a particular domain name in
>every heirarchy.  Has anybody else encountered a similar situation?

I have not seen any such cases in court.  If there had been such cases, of
course it would be on a public record and we could see how they were decided.

Based on client inquiries I have received, I expect NSI has handled at
least half a dozen such cases.  Unfortunately, NSI conducts its proceeds in
secret so it's impossible to know how NSI decided the cases.

The one area where such a claim might make some sense is the special (quite
rare, actually) case in which the name is a coined name (not a word out of
the dictionary) that is unique worldwide, and is well known to all
consumers.  Such trademarks are exceedingly rare, probably less than a
tenth of a percent of all trademarks.  Examples might be Pepsi, Exxon,
Kodak, Xerox, Coca-Cola.