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The International Treaty in question is the Madrid Agreement and Protocol of which the US is not a signer, even though WIPO created it. My previous post should have said the US is not a signer, not TM Holders as they have no say in the matter evidently. But the fact remains that if the US is not part of the International Treaty and domain names are international how can US TM Holders claim rights to them?
 

Members of the Madrid Union

Albania (A)

Algeria (A)

Antigua and Barbuda (P)

Armenia (A&P)

Australia (P)1

Austria (A&P)

Azerbaijan (A)

Belarus (A)

Belgium * (A&P)

Bhutan (A&P)

Bosnia and Herzegovina (A)

Bulgaria (A)

China (A&P)

Croatia (A)

Cuba (A&P)

Czech Republic (A&P)

Democratic People’s

Republic of Korea (A&P)

Denmark (P)

Egypt (A)

Estonia (P)

Finland (P)

France (A&P)

Georgia (P)

Germany (A&P)

Greece (P)

Hungary (A&P)

Iceland (P)

Italy (A&P)

Japan (P)

Kazakhstan (A)

Kenya (A&P)

Kyrgyzstan (A)

Latvia (A&P)

Lesotho (A&P)

Liberia (A)

Liechtenstein (A&P)

Lithuania (P)

Luxembourg * (A&P)

Monaco (A&P)

Mongolia (A&P)2

Morocco (A&P)

Mozambique (A&P)

Netherlands * (A&P)

Norway (P)

Poland (A&P)

Portugal (A&P)

Republic of Moldova (A&P)

Romania (A&P)

Russian Federation (A&P)

San Marino (A)

Sierra Leone (A&P)

Singapore (P)

Slovakia (A&P)

Slovenia (A&P)

Spain (A&P)

Sudan (A)

Swaziland (A&P)

Sweden (P)

Switzerland (A&P)

Tajikistan (A)

The former Yugoslav

Republic of Macedonia (A)

Turkey (P)

Turkmenistan (P)

Ukraine (A&P)

United Kingdom (P)

Uzbekistan (A)

Viet Nam (A)

Yugoslavia (A&P)

 

It would seem these countries offer more protection to TM Holders than the US does.

Now from the World trade agreement. A definition on Trademarks.

 

Article 16 - Rights Conferred

 
 { 2997 }
 

1. The owner of a registered trademark shall have the exclusive right to prevent all third parties not having his consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. The rights described above shall not prejudice any existing prior rights, nor shall they affect the possibility of Members making rights available on the basis of use.

See the part where it says to prevent all third parties not having his consent from using IN THE COURSE OF TRADE IDENTICAL? it does not give the TM Holder the rights to ANY use of the word or words. Unless a domain name that is the same as a TM is competing in the same field as the holder of the TM or is using the domain name to profity from the TM Holder in order to confuse users then it is NOT a violation or infringement upon the TM. If someone has the domain and has NO website up how can they be compaeting with the TM Holder? If the domain name is being used even for profit but not in the same catagory as the TM Holder's business, how can there be a violation or infringement? It has been misapplied on the Internet. Plain and simple. Without proper representation for Domain Name Holders within the DNSO it will continue to go unapposed. Whether you agree with my interpretation or not doesn't matter. What is wrong here is that TM Holders wish to be part of the policy making process unapposed by Domain Name Holders. What are they afraid of? If their position is correct they should feel confident in allowing an opposing point of view. Silencing Domain Name Holders through not including them in the process is not democratic or fair by any definition and shows that they understand their position is too weak to allow an opposing point of view. Due to the current situation with the Constituencuies that do exist vs none for Individual Users or for Individual Domain Name Holders makes the DNSO, the Names Council, and ICANN a Cartel not a body representing users and consumers nor one that represents international interests.

 

 { 2998 }
 

2. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services. In determining whether a trademark is well-known, account shall be taken of the knowledge of the trademark in the relevant sector of the public, including knowledge in that Member obtained as a result of the promotion of the trademark.

 { 2999 }
 

3. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use.

 

SECTION 2: TRADEMARKS

 
 { 2990 }
 


Article 15 - Protectable Subject Matter

 
 { 2991 }
 

1. Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks. Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use. Members may require, as a condition of registration, that signs be visually perceptible.

 { 2992 }
 

2. Paragraph 1 above shall not be understood to prevent a Member from denying registration of a trademark on other grounds, provided that they do not derogate from the provisions of the Paris Convention (1967).

 { 2993 }
 

3. Members may make registrability depend on use. However, actual use of a trademark shall not be a condition for filing an application for registration. An application shall not be refused solely on the ground that intended use has not taken place before the expiry of a period of three years from the date of application.

 { 2994 }
 

4. The nature of the goods or services to which a trademark is to be applied shall in no case form an obstacle to registration of the trademark.

 { 2995 }
 

5. Members shall publish each trademark either before it is registered or promptly after it is registered and shall afford a reasonable opportunity for petitions to cancel the registration. In addition, Members may afford an opportunity for the registration of a trademark to be opposed.

Amazing how nowhere in the definition of what is to be protected do they mention domain names in particular. They say the products and services may be protected though and if someone uses the same domain as the TM and sells the same product and/or services then they are infringing on the TM.

Article 17 - Exceptions

 
 { 3001 }
 

Members may provide limited exceptions to the rights conferred by a trademark, such as fair use of descriptive terms, provided that such exceptions take account of the legitimate interests of the owner of the trademark and of third parties.

 

So a domain name CAN include the name you registered as a TM for the words that are descriptive. So I could put up a domain name as a site that talks about or describes your product or service whether I am a critic or a supporter. Again this would not give the TM Holder the rights to the domain name.

 

From the Paris Convention Article 5

<!--StartFragment-->(2) Use of a trademark by the proprietor in a form differing in elements
which do not alter the distinctive character of the mark in the form in
which it was registered in one of the countries of the Union shall not
entail invalidation of the registration and shall not diminish the
protection granted to the mark.

(3) Concurrent use of the same mark on identical or similar goods by
industrial or commercial establishments considered as co-proprietors of the
mark according to the provisions of the domestic law of the country where
protection is claimed shall not prevent registration or diminish in any way
the protection granted to the said mark in any country of the Union,
provided that such use does not result in misleading the public and is not
contrary to the public interest.

 

Again no rights to all uses of the words or phrases are not protected but only those inspecific instances where an infringement occurs.

From Article 6

<!--StartFragment-->(3) A mark duly registered in a country of the Union shall be regarded as
independent of marks registered in the other countries of the Union,
including the country of origin.

Meaning that it is possible for similar marks to occur in different countries, and since domain names are not within one country if say it is a dot com, then local TMs in one country are not accepted in a broad enough manner to apply to domain names in the gTLDs.

<!--StartFragment-->Article 6bis

(1) The countries of the Union undertake, ex officio if their legislation
so permits, or at the request of an interested party, to refuse or to
cancel the registration, and to prohibit the use, of a trademark which
constitutes a reproduction, an imitation, or a translation, liable to
create confusion, of a mark considered by the competent authority of the
country of registration or use to be well known in that country as being
already the mark of a person entitled to the benefits of this Convention
and used for identical or similar goods. These provisions shall also apply
when the essential part of the mark constitutes a reproduction of any such
well-known mark or an imitation liable to create confusion therewith.

Again stating that the infringement must be "AND used for identical or similar goods" Not ALL uses of the words. If the domain name is not being used to promote similar products or services there is no infringement.

From Article 6ter regarding abbreviations and symbols

<!--StartFragment-->The countries of the Union shall not be required to apply the
said provisions when the use or registration referred to in subparagraph
(a), above, is not of such a nature as to suggest to the public that a
connection exists between the organization concerned and the armorial
bearings, flags, emblems, abbreviations, and names, or if such use or
registration is probably not of such a nature as to mislead the public as
to the existence of a connection between the user and the organization.

(2) Prohibition of the use of official signs and hallmarks indicating
control and warranty shall apply solely in cases where the marks in which
they are incorporated are intended to be used on goods of the same or a
similar kind.

Again the spirit of the law regarding Intellectual propertty intends to protect TM Holders from the use of the name, phrase, symbol or whatever in regards to people using them for an identical or similar purpose and not the broader definition the UDRP and WIPO have imposed.

 

From Article 6quinquies

<!--StartFragment-->. Trademarks covered by this Article may be neither denied registration
nor invalidated except in the following cases:

  1. when they are of such a nature as to infringe rights acquired by
     third parties in the country where protection is claimed;

  2. when they are devoid of any distinctive character, or consist
     exclusively of signs or indications which may serve, in trade, to
     designate the kind, quality, quantity, intended purpose, value, place
     of origin, of the goods, or the time of production, or have become
     customary in the current language or in the bona fide and established
     practices of the trade of the country where protection is claimed;

  3. when they are contrary to morality or public order and, in
     particular, of such a nature as to deceive the public. It is
     understood that a mark may not be considered contrary to public order
     for the sole reason that it does not conform to a provision of the
     legislation on marks, except if such provision itself relates to
     public order.

When they are devoid of distinctive characteristics. Beverages & More! exactly as written here was allowed a TM as written with the ampersand and the exclamation point. The Domain Name BeveragesAndMore.com was stripped from the holder and given to the beverages & More! TM holder as too similar even though the TM Holder could not have even received a TM if they had written it the way the domain name has it. This is wrong. If you don't see that, explain why you are right. The argument that they could not use the ampersand and exclamation point is invalid as they could not have gotten the TM without it and due to Verisigns Internationalized Domains it is invalid because they could now get the name the way the TM office approved it.

 

From BitLaw. a definition

Trademark Law

Executive Summary: Trademark law governs the use of a device (including a word, phrase, symbol, product shape, or logo) by a manufacturer or merchant to identify its goods and to distinguish those goods from those made or sold by another. Service marks, which are used on services rather than goods, are also governed by 'Trademark law.' In the United States, certain common law trademark rights stem merely from the use of a mark. However, to obtain the greatest protection for a mark, it is almost always advisable to register the mark, either with the federal government, if possible, or with a state government. A mark which is registered with federal government should be marked with the symbol. Unregistered trademarks should be marked with a "tm", while unregistered service marks should be marked with a "sm".

A mark is infringed under U.S. trademark law when another person uses a device (a mark) so as to cause confusion as to the source or sponsorship of the goods or services involved. Multiple parties may use the same mark only where the goods of the parties are not so similar as to cause confusion among consumers. Where a mark is protected only under common law trademark rights, the same marks can be used where there is no geographic overlap in the use of the marks. Federally registered marks have a nation-wide geographic scope, and hence are protected throughout the United States.

Again unless the Domain Name is being used to conflict directly with the TM, the TM has no bearing on the domain name. The TM only identifies the mark in regards to the actual goods or services it was intended for on application and not for ALL uses of the word and the TM must include the symbol for Registered or the TM. Make a Dot Reg or Dot Tm and companies can protect their marks there and it will include the required designation they are supposed to include by law. TM Law does not state that adding .com is the way to display a registered mark but that it display the circled R or the initials TM.

If the intent as described by the TM Lobbyists, the Intellectual Property Constituency, and the PACs that contribute to the campaigns for elected officials who will support their position, is to protect consumers so they know they are going to the trusted and TM'ed product's Website, then a TLD designed just for this purpose would satisfy that need. Go to .TM and you know you are getting the holder of the TM's website vs someone else's and all those requirements wished for the existing tlds can be applied in that namespace such as restrictions on who can register a name.

The proponents of the TM protection on the new miss a very valid point. The Internet was not created to serve them in particular. It was intended to serve EVERYONE whether they are a commercial entity or not. The first priority is NOT the protection of commercial interests but the protection of the freedom of individuals to use the Internet. Their self-centered approach to matters on the Internet show they believe that commercial interests come first and individual's rights come second.

Inappropriate allegations of Internet trademark infringement:

In addition to the increased discovery of actual trademark infringers, the expansion of the Internet is also leading to an expansion of inappropriate trademark infringement allegations. Typically, a company will assert trademark infringement every time it views one of its trademarks on a web page of a third party. However, the determination of whether trademark infringement has occurred involves an analysis of the factors described in BitLaw's page on Trademark Infringement. For instance, a person who develops a web site that discusses her experience with Microsoft software may use Microsoft's trademarks to refer to specific products without fear of infringement. However, she probably would not be able to use the trademarks in such a way as to cause viewers of her web page to believe that she is affiliated with Microsoft or that Microsoft is in some way sponsoring her web page. The distinction could only be analyzed upon seeing how the marks are actually used on the page.

As an example, the home page of the BitLaw web site used to contain an Apple logo, along with the phrase "This web site was constructed using Apple technology." Some might argue that the use of the Apple logo on the BitLaw home page constitutes trademark infringement. This particular use was not infringement, however, since Apple had specifically authorized this type of use pursuant to a trademark license with web site developers. In contrast, the trademarks and logos shown on the page containing BitLaw's discussion of trademark devices were not authorized in any way by the trademark owners. However, it is unlikely that the trademark owners could successfully institute a trademark suit for this page, since the context of the page makes it clear that the marks are being used as examples of trademarks. It would be difficult to show the likelihood-of-confusion necessary for trademark infringement to occur as a result of this page.

The elements for a successful trademark infringement claim have been well established under both federal and state case law. In a nutshell, a plaintiff in a trademark case has the burden of proving that the defendant's use of a mark has created a likelihood-of-confusion about the origin of the defendant's goods or services. To do this, the plaintiff should first show that it has developed a protectable trademark right in a trademark. The plaintiff then must show that the defendant is using a confusingly similar mark in such a way that it creates a likelihood of confusion, mistake and/or deception with the consuming public. The confusion created can be that the defendant's products are the same as that of the plaintiff, or that the defendant is somehow associated, affiliated, connected, approved, authorized or sponsored by plaintiff.

But in many cases this has not been how it was applied.

Eight factors for likelihood of confusion: To analyze whether a particular situation has developed the requisite "likelihood of confusion," courts have generally looked at the following eight factors:

  1. the similarity in the overall impression created by the two marks (including the marks' look, phonetic similarities, and underlying meanings);
  2. the similarities of the goods and services involved (including an examination of the marketing channels for the goods);
  3. the strength of the plaintiff's mark;
  4. any evidence of actual confusion by consumers;
  5. the intent of the defendant in adopting its mark;
  6. the physical proximity of the goods in the retail marketplace;
  7. the degree of care likely to be exercised by the consumer; and
  8. the likelihood of expansion of the product lines.

The first five of these factors are examined in every trademark infringement action. The last three factors are the most common additional factors that are considered by a court.

Of these eight factors, the first two are arguable the most important. The similarity of the marks is clearly an important part in establishing likelihood of confusion, but it is far from determinative. It is possible for the same, identical mark to be used in the same geographic area without any trademark infringement occurring, as long as the goods or services of the parties are sufficiently dissimilar. As an example, a quick review of the Minneapolis phone book lists numerous companies operating under the name SPEEDY. The services offered by these companies are as follows:

  • Car washing services;
  • Locksmith services;
  • Grocery retail services;
  • Printing services;
  • Plumbing services;
  • Sign creation services; and
  • Video rental services.

In one way, these companies are a good example that the same mark can exist on multiple goods and services as long as the goods and services are sufficiently difference. However, this may be a poor example since the SPEEDY mark may be too descriptive to function as a trademark without proof of secondary meaning (see BitLaw's discussion of the strength of marks for further information).

 Some of the criteria that has been used

  • Does the domain name holder have trademark rights in the domain name?
This shouldn't matter. It's not required to have a TM to register a domain name nor should it be required. Therefore should not be a consideration when resolving a dispute. It does not show bad faith to not have TM'ed a domain name.
  • Is the domain name the legal name of the domain name holder, or some other name that is otherwise commonly used to identify that person?
Again not required when registering a domain name.
  • Has the domain name holder made use (prior to the dispute) of the domain name in connection with a bona fide sale of goods or services?
Whether or not someone has built their website yet is not registering in bad faith. What if they don't have the money to have it hosted yet? What if it will create a situation that would reveal proprietary information you are not ready to make public yet, but got the domain name in anticipation of building the website? What if the technology the domain name refers to is not marketable on the Internet yet? What if I just haven't gooten around to it or had the time to put the site up yet? None of these are bad faith registration examples but are currently considered during disputes.
  • Is the domain name holder using the mark in a bona fide noncommercial or fair use way at a web site accessible at the domain name?
Again not required for registering a domain name.
  • Is the domain name holder attempting to divert consumers from the trademark owner's web site in a confusing way, either for commercial gain or in an attempt to tarnish or disparage the trademark mark?
This IS a valid consideration in regards to bad faith registration.
  • Has the domain name holder offered to sell the domain name to the trademark owner (or anyone else) for financial gain without having any intent to use the mark with the sale of goods or services?
This IS sometimes, most times, evidence of bad faith registration.
  • Has the domain name holder behaved in a pattern of registering and selling domain names without intending to use them in connection with the sale of goods or services?
Even WIPO has finally said the sale of a domain name or the intent to sell one that is generic in nature is not Bad Faith evidence although cases are still determined using this as one of the examples. A company that uses domain names to direct traffic to client websites is a legitimate enterprise and as long as they use generic domain names to do so, they are registering names in good faith in regards to their business. Even one that aquires names that are generic to sell to businesses to increase their traffic have registered the names in good faith.
  • Did the domain name holder provide false information when applying for the registration of the domain name (or do so in connection with other domain names)?
A good point to bring up during a dispute but the reasons they did this should be discovered as well when possible. Some people have a problem with disclosing too much info to the Registrars. I've personally been inundated with marketing email due to the use of the whois information. This alone therefore is not evidence of bad faith IMO.
  • Has the domain name holder registered domain names of other parties trademarks?; and
Unless those other domain names have been disputed and resolved to where infringement had occurred with the other names not admissible as evidence IMO.
  • How distinctive and famous is the trademark owner's trademark?
According to who. US Companies have a US Centric attitude to which they all think their marks are the most famous in the world. Again domain names are international in scope and not supposed to be central to any one country unless it is a ccTLD. Until the US signs a treaty where all countries participate in a real Uniform Dispute Resolution Policy that is international in scope, TM's have no inherant right to the domain name that contains the same wording as their TM unless the domain names are used to infringe upon the TM in an identical or too similar manner.
 
Due to successful lobbying efforts the TM Lobbyists have gained ground.
 

Cyberpiracy prevention.

(1)

(A)

A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person--

(i)

has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and

(ii)

registers, traffics in, or uses a domain name that--

(I)

in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;

(II)

in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or

(III)

is a trademark, word, or name protected by reason of section 706 of title 18, United States Code, or section 220506 of title 36, United States Code.

(B)

(i)

In determining whether a person has a bad faith intent described under subparagraph (A), a court may consider factors such as, but not limited to--

(I)

the trademark or other intellectual property rights of the

person, if any, in the domain name;

(II)

the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;

(III)

the person's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;

(IV)

the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain

 

But since this is again US Law regarding something the US says it does not control or own it is invalid. Domain names are not subject to US Law in this fashion. There has to be International Law agreed upon before enforcing such rights as this.

 

 

Sorry for the long post, but not really since it puts my opinion forward. This at least shows that domain name owners need representation within the DNSO as do Individual Users of the Internet. TM proponents resist this due to them having a weak argument and not wishing to give any opposing opinion the right to speak or to vote.

 

 

 

 

 

 

Chris McElroy aka NameCritic


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