Re: Re[2]: IAHC Proposal (Attacks Thereon)

[Carl Oppedahl <carl@oppedahl.com>]

At 04:00 PM 01/13/97 -0800, Kent Crispin wrote:

>Carl Oppedahl allegedly said:
>
>[...]
>
>> How many domain names are there?  Seven hundred thousand?  That's how big
>> the problem is, if their domain names aren't sufficiently secure against
>> loss to covetous parties.
>
>The goal of the 60 day wait is to reduce litigation.  Therefore, the
>size of the problem is precisely the amount of litigation, that is,
>the dozen of so cases that we know about.  The number of consultations
>and inquiries you or anybody else has had is far, far less significant
>than the number of lawsuits.  To see this, consider the case where
>there were zero lawsuits, and lots of consultations. 

I am sorry to say this, but you are quite mistaken as to the goal.  The
goal is to promote stability of URLs (and domain names).

Those who have experience with litigation are aware that for each case that
goes to litigation, there are dozens of others that somehow reach their
conclusion prior to litigation.  Generally (after a few cases have been
decided) the parties manage to resolve their matters taking into account
how the court would have decided them.  This means that there is always a
multiplier effect -- for each case that's in the courts, there are dozens
of others with the same issues at stake.

Counting litigations is not the end of the inquiry, and it is a mistake if
you do that.  Counting litigations is merely the first of several steps in
assessing the actual size of the problem.

And in any event, the number of domain names is indeed a fair measure of
the size of the problem.  Domain name owners fall into two categories - the
ones who are are at risk of loss of the domain name and happen to be aware
of it, and the ones that are at risk of loss of the domain name and happen
not to be aware of it.  (There is a miniscule third category of domain name
owners who are not at significant risk, but it is small enough to be
ignored.)  You are apparently in the second category, and incorrectly think
you are in the third category.

It is a rude awakening when you get that nasty letter from NSI, or a nasty
letter from a trademark owner.  You have evidently not had that awakening.

>[...]
>> >A) It seems fairly clear that the 60 day wait will not hinder pirates 
>> >at all, and may very well help them -- they wouldn't have to pay for 
>> >the expense of maintaining nameservers, and every hapless trademark 
>> >owner would be scouring the list, and would have to start dealing 
>> >with the pirate immediately.  
>> 
>> "hapless", eh?  
>> 
>> You are, unfortunately, lumping together all pirates.  A more appropriate
>> analysis would treat two "pirate" categories separately.
>[...]
>> The 60-day wait will not help either pirates of category 1 or 2.
>
>And they are an insignificant set as well.
>
>> Category 3.  Those who register domain names (e.g. clue.com,
>> perfection.com) that represent words used by many companies, and who are
>> not, by their conduct, infringing any trademarks.  These parties are not
>> pirates at all, merely individuals or companies who awoke to the importance
>> of the Internet sooner than others. 
>
>Sally used the term "pirates" for these people.  I was followiong her 
>terminology. 

No, she did not.

>> There is no bona fide need for
>> trademark owners to monitor such parties, during the 60 days or at any
>> other time, hence they are not "hapless".
>
>You miss my point.  The owner of the "clue" trademark will be
>monitoring the list looking for what you consider to be the real
>pirates, and they won't be able to distinguish "real" pirates from
>name brokers.  So they will have to send a letter to the guy who gets
>"clue.com" regardless, warning him of a possible trademark
>infringement.  Now that guy comes back and says "Not to worry, I'm
>just a name broker, and by the way, you can buy clue.com from me for a
>mere $5000."

No, here is an area where I am sorry you do not understand the law.  The
owner of the "clue" trademark will not, in fact, monitor the list at all,
because (in the future world that follows after the IAHC proposal has been
followed for some time) it is irrelevant who has domain names containing
"clue".  The owner of the "clue" trademark will only monitor to see who, on
their web site, is offering confusingly similar goods or services.  That
will have little or nothing to do with the 60-day period.

>> >D) in my 
>> >experience there are very few indeed who won't find the 60 day period 
>> >a burden.
>> 
>> Did you also ask these people whether they would mind losing their domain
>> name after, say, two or three years of investment in it?
>
>Presumably if they were worried about that they would have done a
>trademark search beforehand.  

Sorry, but here is yet another area where it is clear that you do not
understand the law.  If you pick a word, any word, and do a trademark
search, you will almost always find one or more trademarks identical to
that word.  Then (NSI misses this part) you look to see what their goods
and services are, and what your own goods and services are.  If there is no
overlap (e.g. fish and bicycles) then you proceed.  The owner of clue.com
could have done that (indeed, for all I know he did do that) and would have
found no legal basis to refrain from registering clue.com.

Perhaps you are under the mistaken impression that the prudent thing is not
to proceed with a proposed business name (or domain name) if there is *any*
trademark registration identical to it.  (Anywhere in the world, I guess.)
In that case, good luck to you.  You could screen thousands of names and
not be able to proceed, on this approach.

>Absent NSI's policy they would have
>almost nothing to worry about if a trademark search comes up clear.  A
>trademark search takes a few days and costs a couple of hundred
>dollars -- that is a far more reasonable and understandable "insurance
>policy" than a 60 day wait. 

Keep in mind that the Internet goes everywhere.  Do you feel that "a couple
of hundred dollars" will cover a search of all the trademark offices in all
the places where the Internet goes?  What you propose as "prudent" is in
fact impossible.


---
Carl Oppedahl, Oppedahl & Larson, patent law firm
http://www.patents.com/ has hundreds of pages of answers to 
frequently asked questions on patent, copyright, and trademark law