Re: Trademark classification DOES NOT work. Period.

["Mikki Barry" <ooblick@netpolicy.com>]

> Any plan that desires to map to trademark classification needs to 
> address this issue.  The plan described below fails because it 
> doesn't allow multiple Genesis registrations in the US (genesis.tm.us) 
> nor multiple genesis registrations in a particular class (genesis.tm.9) 
> or multiple genesis registrations in the US (genesis.tm.us.9).  If 
> would sure be fine if those who have no understanding of trademarks 
> or trademark law would quit describing how trademark 
> classification provides a solution.  This has been looked at over 
> the years by the International Trademark Association and IAHC and found 
> to be totally inadequate.  Finally, it does not take into account 
> common law trademark rights (rights that are not registered). 

This is definitely a serious problem.  But I see the .tm proposals as far more 
equitable to this type of situation than allowing only ONE genesis.com, or by 
prohibiting Jane Genesis from using genesis.nom because she can't hold a 
trademark in her name.   The current WIPO dispute policy would allow for the 
genesis with the most countries of registration to hold genesis.'x', granting 
rights only to the largest corporations who can afford to register as many 
trademarks as they can.

The current MOU also does not address whether the genesis with the most 
trademark registrations can prohibit all other genesis trademark holders from 
using "genesis" as a domain name across all the other TLDs.  It seems to say 
that the largest genesis with the most lawyers can take and hold that name, 
prohibiting everyone, including Jane Genesis, from using genesis in any form 
whatsoever.  If someone currently has genesis.com, they can't keep it either.  
Hardly equitable.

Perhaps starting from the assumption that a domain name, standing alone, is 
not trademark infringement at all, would be a good place to start.  It is the 
possible use of the domain name, not the address itself, that is the issue.  
USE of the domain name is something to be addressed by the jurisdictions of 
the individuals or companies who have a dispute, not by an international body 
who starts from the assumption that the use of an address is an infringement 
on its face.  I do believe that most Internet traffic is still of a non 
commercial nature.  Yet this vast majority of users is not even contemplated 
in the MOU with regard to domain name policies.  Even with regard to clearly 
non commercial TLDs like .nom or .arts.  

I firmly believe that using a domain name as an identifier has nothing to do 
with trademark.  The lynchpin of trademark law is still consumer confusion as 
to the source of a product or service, even after the complete legal quagmire 
known as "dilution" reared its ugly head.  Consumer seraching for Continental 
Airlines will not be confused when they find that www.continental.com points 
to Continental Cablevision.  They were merely consult their search engine.  It 
is a far different issue if Continental Cablevision began selling airline 
seats.  Until/unless that happened, there would be no confusion, thus no 
infringement, regardless of how many countries the trademark "Continental" was 
registered in.  




Mikki Barry                                 Attorney
Internet Policy Consultants                 http://www.netpolicy.com