Re: Trademarks, random strings, sharing, reserved words

[Olivier MJ Crepin-Leblond <ocl@gih.com>]

On Jan 13,  0:58, Carl Oppedahl wrote:

> You and I may be in complete agreement on this point, but that's not
> dispositive of the issue.  Look at the many cases where trademark owners
> seem to show no embarassment at waiting two or more years and then, for the
> first time, asserting that mere ownership of a domain name somehow counts
> as trademark infringement.  Clue.com, perfection.com, regis.com, juno.com.
> Those are the publicly visible cases, and for each of those there are
> dozens more that happen not to have reached public view.  Something has to
> be done to provide some stability for domain name owners in such cases.

Would you support the idea of having .tm.int and .tm.<iso3166-code> in
place, with a 60-day waiting period there, and make no change as far
as the other gTLDs are concerned ?
The "tm"-class domains would include trademark issues, and the non-"tm"
class domains would have nothing to do with trademarks, by decree passed
by ISOC, IAHC , or whatever ?  Trademarks battles would be confined to the
"TM"-class domains, which would have a higher public profile than the non-tm
class domains.

[separate note]
You also mention the protection of companies like "clue.com, perfection.com,
regis.com, and juno.com". Well, I'm not a trademark attorney, but having had
to go through trademarking procedures for a couple of products recently, 
it looks to me as though "clue" and especially "perfection" are not 
trademarkable by themselves as such.
[end of separate note]

Okay, so you want to protect those people having already been allocated
with a domain name from having the domain name taken away from them when
a trademark owner appears on the scene. I agree, it would be nice to do so,
but I see no simple solution to this. Furthermore, he who doesn't know of a
law is not safe from prosecution when he breaks it. 
In case my suggestion above is not followed, guidelines for creation of new 
domain names should be such that they should mention "it is in the applicant's
advantage that they should ensure that the domain name they want to register
does not infringe on existing trademarks. It is the applicant's responsibility
to conduct a search of such trademark existance if they want to avoid problems
down the line if a clash of trademark were to occur."

Having a 60-day waiting period will not make a difference in a court that
knows nothing of the Internet, and believe me, there are plenty of these
around. Furthermore, the false sense of security provided by the IAHC's
60-day waiting period may prompt the original domain name owner to
sue the IAHC (or whoever will run the registry) by arguing that they
were assured that past the 60-day waiting period, their domain name should
be clear of trademark conflicts. IMHO, I fear that having a waiting period 
will make it more painful for everybody at the end of the day, not only
because everybody will have to wait for 60 days for a new domain (and that
slows down business considerably) but also because every party involved will
be assured of their good conscience and that they are right in their beliefs.
Unfortunately, in a court of law, the decision swings only on way, and someone
will pay the price, although they were in their right.

> see Juno Electric showing no apparent embarassment at trying to deny Juno
> Online the use of juno.com, a move which, if successful, would have
> rendered seven hundred thousand people unable to receive their email.
> Something must be done.

Both are in their wrong.
Ideally, Juno Electric should have had juno-electric.com and Juno Online should 
have been juno-online.com if they both wanted to be safe (or rather, safer) 
from court battles. Today we see two companies fighting out "juno" - what tells 
us that there aren't hundreds of "juno something" in the world who want to
have "juno" by itself ?


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Olivier MJ Crepin-Leblond  |----------> Global Information Highway Limited
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