Re: Trademark classification DOES NOT work. Period.

[Antony Van Couvering <avc@interport.net>]

At 12:48 PM 7/25/97 -0400, Mikki Barry wrote:
>> 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.

This is a misstatement of the problem.  Registering trademarks is such a
long and expensive process that not even big companies do it unless they
*are* actually using the name.   Companies who have registered trademarks
in many countries have done so because they are actually marketing products
in those countries.  Also, under the gTLD-MoU plan, it's not the case that
the company with the "most" trademark registrations gets the domain name.
If Company A has 10 registrations, and Company B has 5, that doesn't mean
that Company A gets the domain.  This is decided in arbitration.  It makes
perfect sense to me that with all the complications of trademarks, this
should be decided on a case-by-case basis.

Also, there is absolutely nothing that says that the ACPs administered by
WIPO can't come up solutions other than all-or-nothing-at-all.  Examples
would be: Company A gets the name in one TLD, Company B gets it in another.
 Or, that they referring links on both their sites.  Etc.  This is another
reason why a case-by-case arbitrated settlement can be a very good thing.

>
>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.

Indeed, nothing is perfectly equitable with this issue, and I dare say
never will be.  That's a very good reason to have things done case-by-case.
 The exclusion rule is only for companies with trademark registrations in
35 or more countries, as I understand it.

>
>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.  

Domain Registration *is* a use.  By default, email can be sent to
"hostmaster@domain.xx".  Otherwise no-one would care.

>
>I firmly believe that using a domain name as an identifier has nothing to do 
>with trademark.  

That's a belief.  Other people believe differently, especially trademark
holders.

>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.  

Companies can and have made the argument that there is consumer confusion.
The fact that it is possible to distinguish the two by even a slightly
savvy user doesn't mean that there isn't confusion.

Antony Van Couvering
NetNames USA, speaking personally
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Antony Van Couvering | avc@netnamesusa.com
NETNAMES USA - International Domain Name Registry
430 West 14th St., Suite 401 New York, NY 10014 USA
Phone Toll-free 888-NETNAMES | Intl: +1 212 627-4599 
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