Re: Panavision, domain names and trademarks

[Michael Dillon <michael@memra.com>]

On Tue, 14 Jan 1997, Robert Frank wrote:

> "Trademark dilution laws, however, changed the traditional trademark
> analysis.  Trademark dilution laws protect "distinctive"  or "famous"
> trademarks from certain unauthorized uses of the marks regardless of a
> showing of competition or likelihood of confusion.  Indeed, the very
> purpose of dilution statutes is to protect trademarks from damage caused
> by the use of the marks in non-competing endeavors.

Note that the above statement assumes United States jurisdiction and
refers to US laws and the US marketplace. IAHC, on the other hand, is
operating in an international venue where these statutes do not apply and
even the concepts may not be wholly relevant.

  Whereas traditional
> trademark law sought primarily to protect consumers, dilution laws place
> more emphasis on protecting the investment of the trademark owners.
> Still, dilution laws do promote consumer welfare: if trademarks are
> valuable to consumers, protecting businesses' investments in trademarks
> will benefit consumers by increasing the willingness of businesses to
> invest in the creation of recognized marks." 

> In addition, the Dilution Act
> itself excepts certain uses and thereby protects parties who
> "innocently" register a famous trademark as a domain name (e.g., a
> citizen of Pana, Illinois who registers "panavision.com" in order to
> provide a community political forum would come under the exemption for
> non-commercial use.)" 

Please note that Internet domain names are inherently non-commercial. If
an entity registers a domain name that does not show intent to engage in
commerce with that name. 

In addition, the concept of "trademark dilution" fails when presented with
the international venue in which it is entirely possible for one or more
companies to have famous marks within a limited jurisdiction. For instance
in Italy we have Brio the clothing manufacturer
http://www.moda.iol.it/pitti/dati/brio/default.htm
and in Sweden we have Brio the maker of children's wooden trains
http://www.magazine.se/scala/195/articles/article3.htm

No matter how famous the toymaker Brio's mark becomes, it doesn't change
the fact that the mark is already registered in Italy and is, in fact, a
common italian word. Note that BRIO.COM belongs to yet a third company.

Who will get BRIO.INET?

Michael Dillon                   -               Internet & ISP Consulting
Memra Software Inc.              -                  Fax: +1-604-546-3049
http://www.memra.com             -               E-mail: michael@memra.com