Re: Panavision, domain names and trademarks

[Carl Oppedahl <carl@oppedahl.com>]

At 10:57 AM 01/15/97 -0500, Vince Wolodkin wrote:

>Conclusion:

[regarding the Panavision v. Toeppen case]

>But seriously...  Since this was in a Federal Court, does this mean
>precedent is set that makes it illegal to knowingly register a mark as a
>domain name for the purpose of selling the domain to the mark holder?

Whether it was a federal court or state court is irrelevant.  It is, at
most, law in the particular jurisdiction where the court sits.

What is important not to forget is that Panavision v. Toeppen is a very
special case -- a case in which the trademark asserted is a *unique*
trademark.  Unlike "clue" or "perfection" or "avon" or "juno", the word
"panavision" is a coined word.  Only one company in the world uses that
word "panavision".  Dozens of companies have "clue" as a trademark, and the
same can be said of "perfection" or "avon" or "juno".

Only a vanishingly small fraction, probably less than a tenth of a percent,
of all trademarks are unique coined words of this type.  The Panavision
case is limited to such facts.

What is also important not to forget is that the Panavision court was
dealing with Mr. Toeppen, who had already been in the public eye for
"americanstandard.com" and "intermatic.com", and who had registered dozens
of unique and coined trademarks as domain names.

The cases that mean something, the cases that deserve the efforts of the
Internet community to figure out, are the cases where the domain name being
grabbed is a regular dictionary word, used by dozens of companies as a
trademark.  Why in the world should Hasbro be entitled to take away
"clue.com" from a computer consultant, just to add it to Hasbro's existing
list of dozens of domain names, one for each children's game in its product
line?  Or Juno, or Perfection, or any of dozens of other examples.