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Re: The Fame Claim List -was [wg-b] notification as compromise?
My firm does represent the Muppets (CTW and Henson) but my views are my own
(I have not discussed this with them) and don't represent theirs.
In any event, there is no exclusion mechanism on the table which would
prevent variants, i.e. muppetporn, muppetsporn, themuppetsporn, etc. across
all TLDs. THE UDRP provides a tool for enforcement to the tm owner but the
burden remains on the TM owner to utilize it. The notification system aids
the UDRP process.
The primary advantage of immediate notification to the DN owner of the TM
owner's claim, is that it can make a more informed decision (and resolve a
dispute) before it has sunk money into the name. The notification to the
TM owner is a secondary aspect to this - the cost of a cc on the email to
the DN registrant is minimal and there is a benefit but to me, putting the
DN registrant on notice is the primary rationale - and much more useful
than a passive whois (see Roeland Meyers' post), as it is evidence of
actual notice.
At 10:46 AM 9/7/99 -0500, you wrote:
> ( There are 27 registrations with muppet in the name)
>
>At 10:49 AM 9/7/99 -0400, Martin B. Schwimmer wrote:
>
>>They can put people on notice that names which include MUPPETS or
>>>MUPETS might infringe their rights.
>
>I think that's exactly right. Let's say someone manages to register
>themuppetpornshow.net. And let's say it gets by whatever means Jim Henson
>Productions uses to prevent this from happening. Grade school kids find the
>site and the experience leads them forever more to associate Miss Piggy
>with something obscene. That diminishes the brand. That does them harm.
>
>One school of thought is that Jim Henson Productions would have to register
>themuppetpornshow.net in order to prevent someone else from doing so. I
>don't think that's fair. The Internet shouldn't have to protect that
>famous brand for Henson Productions, but it shouldn't make it exceedingly
>difficult for the mark holder to protect it.
>
>In one scenario the registrar would automatically notify Henson Productions
>that the name had been registered. Henson would look at the site and
>determine that it was in default of the representations (model dispute
>resolution agreement). Henson would start dispute resolutions and the site
>would be inaccessible until resolution.
>
>In the other scenario, Henson Production would have to discover the website
>on its own. And eventually, no doubt, they would find it, whether by
>employing automated software, hiring research firms such as Net Names or by
>having an empoyee do random searches for infringing names. However,
>opportunists who take advantage of someone else's intellectual property can
>take advantage of brief windows of time to make quick money and/or gain
>notoriety. What if counterfeiters and others realized that mark holders
>would be noftied of the registration and that it would then undoubtedly go
>into dispute registration. It seems logical to me that it would diminish
>the number of abusive registrations without diminishing anyone's rights.
>
>Of course, the database of the famous names (which have still to be
>defined) is another story.
>
>eileen
>
>disclaimer: I have no association with or knowledge of Henson Productions
>or the Muppets. All of my statements are "what if" and used to illustrate
>possible outcomes if certain rules are applied.
>>
>1. assmuppet.com
>2. emuppet.com
>3. muppet.com
> muppet.net
> muppet.org
>4. muppet-island.org
>5. muppet-labs.com
>6. muppetcentral.com
>7. muppethauntedhotel.com
>8. muppetisland.org
>9. muppetlabs.com
>10. muppetlinks.com
>11. muppetmovie.com
> muppetmovie.net
>12. muppetmp3.com
>13. muppetquest.com
> muppetquest.net
>14. muppets.com
> muppets.net
>15. muppetschannel.com
>16. muppetsfromspace.com
>17. muppetshow.com
> muppetshow.net
> muppetshow.org
>18. muppetsinspace.com
>19. muppetstuff.com
>20. muppettlabs.com
>. muppettreasure.com
>22. muppetworld.com
>23. sadmuppet.com
>24. spacemuppets.com
>25. themuppets.com
>26. themuppetsfromspace.com
>27. thenextmuppetmovie.com
>
>At 10:49 AM 9/7/99 -0400, Martin B. Schwimmer wrote:
>>They can't. They can identify names which include terms which may lead to
>>infringement. The Muppets cannot register muppet.firm, muppets.firm,
>>mupets.firm, mymuppets.firm, themuppets.firm, themupets.firm,
>>the-muppets.firm, the-mupets.firm, muppet1.firm, muppetshow.firm,
>>muppetmovie.firm, muppetsmovie.firm, muppetshop.firm, wwwmuppets.firm,
>>wwwthemuppets.firm, muppet.biz, muppets.biz, mupets.biz, mymuppets.biz,
>>themuppets.biz, themupets.biz, the-muppets.biz, the-mupets.biz,
>>muppet1.biz, muppetshow.biz, muppetmovie.biz, muppetsmovie.biz,
>>muppetshop.biz, wwwmuppets.biz, wwwthemuppets.biz, muppet.web, muppets.web,
>>mupets.web, mymuppets.web, themuppets.web, themupets.web, the-muppets.web,
>>the-mupets.web, muppet1.web, muppetshow.web, muppetmovie.web,
>>muppetsmovie.web, muppetshop.web, wwwmuppets.web, wwwthemuppets.web,
>>muppet.shop, muppets.shop, mupets.shop, mymuppets.shop, themuppets.shop,
>>themupets.shop, the-muppets.shop, the-mupets.shop, muppet1.shop,
>>muppetshow.shop, muppetmovie.shop, muppetsmovie.shop, muppetshop.shop,
>>wwwmuppets.shop, wwwthemuppets.shop, on the first day that all these TLDs
>>open. They can put people on notice that names which include MUPPETS or
>>MUPETS might infringe their rights.
>>
>>Otherwise, TLDs will start to resemble protection rackets under this
>scenario.
>>
>>
>>
>>
>>At 03:13 AM 9/6/99 -0700, you wrote:
>>>Martin ---
>>>
>>>If the fame claimant can identify the names that it considers to be
>>infringing, then why
>>>not simply register all those names?
>>>
>>>>Dennis
>>>
>>>----------
>>>> In response to the rpevious post regarding notification as a compromise:
>>>>
>>>> How about a fame claim list?
>>>>
>>>> There are about 11 categories of information a tribunal will look at in
>>>> determining the fame of a mark(i.e. prior registrations, sales figures,
>>>> advertising figures, third-party recognition, and others). The famous
>mark
>>>> aspirant fills out a template giving information on those topics. We're
>>>> talking summary information, two, three pages max- the claimer can
provide
>>>> links to sites which can verify or expand on the information. The fame
>>>> claimer then lists the pseudo marks it deems to be infringing (nissan,
>>>> neesan, nissancar, nisan). It might also designate, perhaps, that it
makes
>>>> its claim only in regards to certain TLDs (because it doesn't care about
>>>> .anon or .priv or .noncom or .notforprofit or
>>>> .obviouslyirrelevantforourpurposes).
>>>>
>>>> So a third party files for nisan.firm. That triggers the fame claim list
>>>> and the registrant gets, by return email along with the confirmation of
>>>> receipt of its domain name application, Nissan's two pages as to why
>NISSAN
>>>> is a famous mark, with an understanding of how Nissan uses its mark. The
>>>> registration is NOT excluded.
>>>>
>>>> Also, Nissan gets sent an email advising it of the registration of
>>nisan.firm.
>>>>
>>>> In the real world this level of exchange of information usually takes a
>>>> demand letter or two.
>>>>
>>>> From this point on, Nissan is on actual notice of nisan.firm and its
>>>> obligation to take prompt action has begun.
>>>>
>>>> Also, nisan.firm is on actual notice of Nissan's claim within seconds of
>>>> registering the domain name, so it has not yet sunk money into the site.
>>>>
>>>> If Prince UK gets a fame claim from Prince US, it tells it to take a
hike.
>>>>
>>>> If Too Small To Afford A Trademark Search, Inc. (TSTAATS Inc.) gets a
fame
>>>> claim from a company whose rights it might be infringing, it has just
>>>> gotten a trademark search for free, and has information on which to
make a
>>>> decision.
>>>>
>>>> And cyber-squatters who begin use do so with incontestable actual
>>knowledge.
>>>>
>>>> This practice is not a whole lot different from what is presently being
>>>> done in the examnation of trademark applications for the Community
>>>> Trademark in the EEC, where applicants and prior registrants are given
>>>> information about each other.
>>>>
>>>> At 12:27 PM 9/3/99 -0500, you wrote:
>>>> >I believe that granting exceptions is unworkable for the many reasons
>that
>>>> >have already been discussed. Would a notification system be practicable?
>>>> >warranted? desireable? In other words, if someone registered
>>>> >thenissancar.org, notification would be automatically sent to the Nissan
>>>> >car manufacturer. If Nissan felt the site was in contradiciton of the
>>>> >representations (paragraph 2 in the model agreement drafted by Skadden,
>>>> >Arp, et al) then Nissan could avail itself of dispute resolution. In
this
>>>> >way the logical filter could look for the string without the dire
>>>> >consequences of barring registration. Is this a possible compromise?
>>>> >
>>>> >Eileen
>>>> >
>>>> >
>>>>
>>>> @ @ @ @ @ @ @ @ @
>>>>
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