Re: Trademarks, random strings, sharing, reserved words

[Carl Oppedahl <carl@oppedahl.com>]

At 01:42 AM 01/13/97 +0000, Olivier MJ Crepin-Leblond wrote:
>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.

Unfortunately it is not within anyone's power, not ISOC, not IAHC, nor
anyone else, to cause any particular top-level domains to "have nothing to
do with trademarks".

>[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]

Try to explain that to the owner of clue.com, who faces not one but two
lawsuits to attempt to keep from losing his domain name.  (See
<http://www.patents.com/clue/clue.sht>.)

Try to explain that to the owner of perfection.com, who faces a similarly
daunting challenge to his domain name.

Oddly enough, in the two cases you mention, the covetous party is the same
-- Hasbro.  Hasbro has registered trademarks for both clue and perfection,
for children's games.

>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. 

What you probably don't appreciate is that neither owner (clue.com or
perfection.com) is breaking any law, nor doing anything that amounts to
trademark infringement.

>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."

We already have such language in place for most domain name registration
authorities.  The language is essentially meaningless, however, for many
reasons.

1.  In which countries do you feel a would-be domain name owner should
search?  All countries that have trademark systems?  Keep in mind that
there are about 180 such countries, and that most of them have only paper
records that can only be searched in person.  If your view is that fewer
than all 180 countries need to be searched, kindly explain how you reach
your recommendation.

2.  Trademark infringement is specific to the trademark owner's goods or
services.  Hasbro's trademark rights are limited more or less to children's
games.  If the owners of clue.com and perfection.com had done searches such
as you suggest, they would have found the Hasbro trademarks, but would have
given them no further thought.  clue.com is a computer systems consultancy,
and has nothing to do with childrens' games.  perfection.com is a printing
company, and they don't print children's games in case you wondered.  So
the search you propose would not have helped them.

>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. 

I know better than you, and I believe courts will pay quite a bit of
attention to the 60-day period if put into effect.

>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. 

Neither the IAHC nor anyone else has made such assurances.  

>> 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 ?

So you are saying no one at all should have juno.com?  Why not let it go to
the first one to apply for it (in this case, Juno Online)?