Re: Trademarks, random strings, sharing, reserved words

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

On Jan 13,  9:41, Carl Oppedahl wrote:

> 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".

I expect that if a specific trademark top level domain category is present,
trademark disputes will be taken out of other gTLDs.
In the same manner, you expect that using a 60 day registration delay
period will protect the initial domain owner in court, or at least help
swing the balance in his favour.

Both of us "expect" this to happen. Until it comes to the crunch we
don't really know what will happen. What de do know, is that a 60 day
delay in registration will slow down business on the Internet to a
great extent, and complicate the mechanism for putting together web
sites etc.

> >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 Hasbro has registered trademarks on common words for children's
games ? It's a matter for courts to address, not us or the IAHC. Let's
keep the law in courts.

> 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.

If so, they'll win the case. If they lose, strictly speaking they have
broken the law.

> 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.

By making the domain name as specific as possible, the possibility of
conflict is greatly diminished. I would suggest to check for trademarks
in the country of registration and in the US (simply because the US
has the largest number of addresses in the gTLDs), and making the address
very specific indeed. We cannot stamp-out conflict altogether, but we
can try and reduce the possibility of conflict.

> 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.

I am not competent to comment on the validity of trademarks using such
common words as "clue" and "perfection", although I doubt such trademarks
would ever be allowed in the UK when using the regular trademarking
process. Even then, the use of such common words make the trademark very
weak indeed. However, a search by the original owners of the domains
would have shown them an organge light, telling them "warning - trouble
ahead".

> >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.

You are entitled to your opinions, and I am entitled to mine, but both
are just what they are: opinions. We will only know once the first case
reaches the courts. And it will.

> >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.  

I quote from the document:

quote> In further considering the existing operation of the ISO
quote> 3166 second level domain spaces, IAHC recommends that the
quote> administrators of these spaces add a fixed 60 day
quote> notification period between application and delegation as a
quote> means of reducing the subsequent levels of litigation within
quote> these name spaces, as per the related recommendations in
quote> section 4 of this document relating to gTLDs.

"as a means of reducing the subsequent levels of litigation"  

i.e: once the 60 day period is over, the level of litigation will
     be (dixit IAHC) reduced.

> 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)?

Here we're in agreement... but we're back to square one.

Thanks for the stimulating discussion.

-- 
Olivier MJ Crepin-Leblond  |----------> Global Information Highway Limited
Phone: +44 (0)956 84 1113  | Always 60 seconds |  E-mail:    <ocl@gih.com>
Fax  : +44 (0)171 937 7666 | ahead of the past |  Web: http://www.gih.com/