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Re: Any past examples??
- Date: Sun, 12 Jan 1997 14:10:58 -0800
- From: Sally_Abel@fwpa.com (Sally Abel)
- Subject: Re: Any past examples??
Leo:
You wrote:
>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 If such a historical reference exists, was any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?
I am not aware of such an historical
reference in trademark law per se. Many
countries have opposition procedures by
which an application to register a
trademark can be challenged -- if the
challenger is successful the registration
will not issue and the applicant may or
may not infringe the challenger's rights
(depending on the country) by use or
continued use of the mark.
In my mind, it is the immediate,
international nature of use of a domain
on the net that differentiates this
situation, as well as the unique role of
the registrars (and, to a lesser extent,
the fact that opposition proceedings or
other dispute resolution mechanisms are
inappropriate within the context of the
dns).
Sally
Speaking for myself, not the IAHC
<html><head></head><BODY bgcolor="#FFFFFF"><p><font size=2 color="#000000"
face="Arial">Sally...One other question that was previously posed to Carl
Oppendahl:<br>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 If such a historical reference exists, was any statistical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?<br>----------<br>: From: Sally Abel <<font
color="#0000FF"><u>Sally_Abel@fwpa.com</u><font color="#000000">><br>: To:
<font color="#0000FF"><u>iahc-discuss@iahc.org</u><font color="#000000"><br>:
Subject: IAHC Proposal (Attacks Thereon)<br>: Date: Thursday, January 09, 1997
6:57 PM<br>: <br>: <br>: <br>:
A number of folks on this list
have questioned the 60 day <br>: waiiting period, asking (a) what purpose it
serves, and (b) why 60 days, <br>: rather than 10, 30, 59 or whatever. Many
thoughtful responses have been <br>: posted to date, so I will try to avoid
being (too) repetitive if <br>: possible. <br>:
<br>:
(a) Purpose of the waiting
period. <br>: <br>:
&n
bsp; The primary purpose of a waiting period is to encourage early
<br>:
&n
bsp; dispute resolution which should result in:<br>:
<br>:
&n
bsp; * A reduction in litigation by encouraging dispute
resolution <br>:
&n
bsp; beforee that point;<br>: <br>:
&n
bsp; * Fewer instances of domain name holders making
significant <br>:
&n
bsp; investment in a domain only to lose it;<br>:
<br>:
&n
bsp; * Increased certainty that a chosen domain can be
developed <br>:
&n
bsp; without unanticipated loss of the domain down the road;<br>:
<br>:
&n
bsp; * Decreased registry challenges.<br>:
<br>: <br>:
Manny domain name applicants
want an SLD that is or is capable of being <br>: more than part of a simple
address. In fact, those who oppose a waiting period <br>: as being an
imposition on business development when the IAHC proposal includes <br>: a
random alphanumeric for those who do not want to wait 60 days, appear to <br>:
believe that a domain name creates a valuable identity for the new business
<br>: that the business should not have to wait 60 days for (a reference was
made <br>: yesterday to the need to "brand"). This valuable
identity is what is known to <br>: trademark owners as "goodwill", and
it is this "goodwill" that is the essence <br>: of trademark rights.
So, if you believe that it is important to preserve a <br>: domain name
holder's goodwill, you can understand the importance of doing the <br>: same for
a trademark owners.<br>: <br>:
A waiting period is an attempt
to sstrike a balance between the <br>: trademark owner's interest in preserving
its goodwill, and the domain name <br>: applicant's interest in a domain name
that may be perceived as generating <br>: "goodwill" or as an
important business symbol. ("Trademark owner" should be <br>: read
broadly to include other names which may be legally protectable in a <br>:
commercial context, from business names and organization's names, all the way
<br>: to celebrity's names).<br>: <br>:
Combined with public notice of
the application and related contact <br>: information, the waiting period gives
the trademark owner time necessary to <br>: assess whether a particular domain
may be a problem and to contact the <br>: applicant, before the name is awarded
and the financial and emotional investment<br>: significant, to attempt to
resolve the perceived problem. With a 60 day period,<br>: trademark owners
will not have an incentiive to sue first and ask questions <br>: later.<br>:
<br>:
Obviously there will be some
litigation where the parties <br>: cannot resolve their differences amicably and
the trademark owner <br>: believes litigation is necessary to protect trademark
rights. But with <br>: a 60 day period, those instances should be
infrequent, and the domain <br>: holder will be in a strong position to assess
whether to proceed with <br>: the name in light of the challenge, again before
making a significant <br>: investment in the domain.<br>:
<br>:
It is true that the waiting
period proposed by IAHC does not legally <br>: require a challenger to raise a
challenge during the waiting period (for such a <br>: legal requirement, we
would have to go to Congress and the other 200+ <br>: governments around the
world)<br>: <br>:
 p; However, U.S. courts and most
courts around the world already<br>: follow guidelines when granting preliminary
injunctive relief (such as shutting <br>: off a domain name) -- specifically
most courts won't grant such relief unless <br>: the challenger has acted very
quickly to challenge the allegedly illegal conduct<br>: -- if the challenger
waits, then he will lose his right to preliminary relief. <br>: The reason
the courts require quick action to obtain preliminary injunctive <br>: relief is
because it is unfair to grant it if the challenger has just sat on <br>: his/her
rights while the challenged party continued the allegedly objectionable <br>:
activity.<br>: <br>:
How quickly a challenger must
act varies with the circumstances,<br>: and varies from country to country.
For example, someone seeking a preliminary <br>: injunction against
trademark infringement in Germany must sue withiin 4-6 weeks <br>: of finding
out about the infringement. In the U.S., the period is usually a <br>:
longer and will depend upon how badly hurt both sides will be if the relief is
<br>: or is not granted. For example, if the alleged infringer has already
invested <br>: heavily in the allegedly infringing name and has used it for six
months <br>: publicly, and the challenger knew about the name six months ago,
but didn't do <br>: anything to challenge it, a court will "balance the
equities" and will likely <br>: conclude that the challenger should have
acted more quickly and the challenged <br>: party will be greatly harmed by a
preliminary injunction -- so it will refuse to<br>: grant the preliminary
injunction.<br>: <br>:
This is how the waiting period
is intended to work. By creating <br>: a system whereby a domain name
applicant's intention to use a new domain <br>: name is published on a public
registter for 60 days before use, <br>: challengers will *as a practical matter*
be forced into acting quickly <br>: during the waiting period. There will
be no hard-and-fast legal <br>: requirement. BUT courts will look at the
fact that the new name was <br>: published and that a waiting period was imposed
and will be very <br>: reluctant to grant preliminary relief to a challenger who
failed to act <br>: during the waiting period. This is basically true
under most of the <br>: world's various trademark laws. And, of course,
challengers (and their <br>: lawyers) will know this and will therefore be
pushed into acting quickly <br>: if they want to shut down an allegedly
infringing new domain name.<br>: <br>:
Of course, it would be even
better if all challengers *had* to raise <br>: their objections before
expiration of the waiting period -- this would increase <br>: certainty and
fairness. However, while thiss may be a laudable long-term goal, <br>: it
cannot be implemented quickly in the short-term because it would require the
<br>: passage of legislation in each country around the world. <br>:
<br>:
So, while not perfect, the
purpose of the 60 day waiting period<br>: is to not only give challengers an
opportunity to raise a challenge <br>: before someone invests in a domain name,
but indeed to effectively <br>: require (to the extent possible) that such a
challenge be raised before <br>: use is begun, so that a domain name user isn't
put into the unfair <br>: position of using and investing in a domain name that
will ultimately <br>: end up being taken away.<br>:
<br>:
(b) Why 60 days?<br>:
<br>:
The choice of 60 days is not
arbitrary. In order for courts to<br>: hold challengers to raising their
challenge within the waiting period, <br>: the period has to be long enough that
no-one can argue that they didn't <br>: have enough time to raise a challenge.
Unfortunately, it does take time <br>: for notice of a published domain
name to reach interested parties, and <br>: for those parties to investigate the
domain name, and for a demand letter <br>: to be sent and responded to, and for
a challenger to pull together court <br>: papers -- if sufficient time isn't
provided for in the waiting period for <br>: this activity to occur, then
challengers will successfully argue that <br>: they shouldn't be held to acting
within the waiting period, which is not <br>: what we want!<br>:
<br>:
Generally, the shortest period
for acting to obtain preliminary <br>: relief in a trademark case is 4-6 weeks,
as in Germany. But most <br>: countries allow substantially more time,
usually several monthss and <br>: sometimes a year or longer (depending on the
circumstances). The <br>: International Trademark Association's (INTA's)
original proposal for a <br>: waiting period was 90 days in recognition of this
norm. However, in view <br>: of the demands of "internet time,"
IAHC has chosen to propose 60 days, <br>: which is a short period of time, but
probably still long enough that the <br>: courts should generally be willing to
hold challengers to it. In <br>: addition, if a challenger acts early in
the 60 day waiting period, then <br>: the waiting period will allow some time
for the parties to work out an <br>: amicable resolution without actually going
to court. If a waiting period <br>: of less than 60 days is adopted, we
run a real risk of the courts <br>: deciding not to "enforce" the
waiting period on challengers seeking <br>: preliminary injunctive relief.<br>:
<br>:
&nnbsp; &
nbsp; &nb
sp;  
;<br>:
&n
bsp; &nbs
p;
<br>: Sally Abel<br>:
Not speaking on behalf of the IAHC<br>:
</p>
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