RE: [wg-b] Preliminary Questions

["Cade,Marilyn S - LGA" <mcade@att.com>]

Dennis,

One of the suggestions that I made some time ago was the creation of a list
which the registrars could check to see if it was a famous trademark name so
that companies could move on to other names.  That wouldn't stop those who
seek to infringe, but it might save some time in other settings for those
who are merely seeking to develop a new web site and are looking for
possible "names". Is this something like you are describing? 

-----Original Message-----
From: d3nnis [mailto:d3nnis@mciworld.com]
Sent: Monday, September 06, 1999 7:12 AM
To: Harald Tveit Alvestrand; d3nnis; Martin B. Schwimmer; wg-b@dnso.org
Subject: Re: [wg-b] Preliminary Questions


Hi Harald,

Sorry, your statement isn't accurate.

Domain names alone are not trademarks in US statutes or in  case law.
Infringement cases have required that the site itself contain infringing
content.  In other words, it is the way the name is used, not the name
itself, that determines whether infringement is occurring.  Numerous court
decisions (including the recent Avery Decision) have clearly drawn this
distinction.  (I know there are cases where foreign registrants have had
default judgments because they failed to appear in court --  but those cases
in no way change trademark statutes or case law.)

If a domain name alone were capable of infringement, then a lot of currently
private speech referring to a trademark would also be infringement. 

But apart from our disagreement, may I ask about something where we may
agree?  I do agree with Eileen and
others that I as a consumer receive a measure of protection and quality
control via the legal protection of trademarks.

Why shouldn't we consider a "warning" method in which we give registrants
warning that they may be encroaching on a name that has trademark
protection.  This would allow trademark holders to survey registrations and
monitor sites, but not per se bar a registration prior to an actual use of
the name in an infringing context.

I think this would give greater protection to trademark holders, because it
would allow an infinite variey of non-exact matches on their name, whereas a
registration-blocking mechanism has to meet more carefully defined legal
standards.


>Dennis










----------
> At 02:32 06.09.99 -0700, d3nnis wrote:
> >Re:
> >
> >
> > > >Famous marks are protected by the Paris convention and the TRIPS
> agrement;
> > > >international law recognizes them, so it's a question of setting up
> > > >mechanisms to protect the rights they already have.
> >
> >Domain names are not trademarks.  They have no trademark status, and they
> >are not protected by the existing Famous Marks treaties.
>
> Domain names have been considered to constitute infringement upon both 
> Famous Marks and Trademarks. See court cases referred to earlier on the
list.
>
>
> >The only way this group can "extend protection" to them is by proposing
> >new law to the proper sources of international law -- which offhand seems
> >highly improper to me.
> >
> >We would be on far more solid ground by asking all signatories to PARIS
> >and TRIPS to
> >submit their famous marks lists to us, and asking registries to do a name
> >check and issue a
> >trademark "encroachment" warning.
>
> :-)
> One of the more amusing documents presented at the WIPO Experts' meeting
> was the book "Famous marks in Japan". There are around 10.000 of them, I
> think, counting both logomarks and textmarks. (I still have it, but not
here)
>
> Most of them were totally unknown in Norway.
> There is no current, acknowledged list of famous marks to check against.
> (Yes, I know, I have a twisted sense of humor :-)
>
>                               Harald
>
> --
> Harald Tveit Alvestrand, Maxware, Norway
> Harald.Alvestrand@maxware.no
>