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RE: [wg-b] Preliminary Questions

I think we thought that starting out with famous marks would be easier; for
instance, it is probable that those entities might pay to be registered,
thus helping to offset the cost of developing such a database... 

Happy to talk more. Marilyn

-----Original Message-----
From: d3nnis [mailto:d3nnis@mciworld.com]
Sent: Monday, September 06, 1999 7:52 AM
To: Cade,Marilyn S - LGA; 'd3nnis'; Harald Tveit Alvestrand; Martin B.
Schwimmer; wg-b@dnso.org
Subject: Re: [wg-b] Preliminary Questions

Hi Marilyn --

Thanks for replying.  Yes, if this idea was yours, you deserve a prize,

(For some reason, my posts haven't gotten thru in the past, so my apologies
for the delay in

I really do believe that trademark holders would receive more protection
from a simple warning
mechanism than they would from a registration-blocking mechanism.  It would
allow non-exact matches to trigger a warning.

In addition, non-commercial domain name registrants like myself would
receive a modicum of protection and fair warning in the form of an alert
that said "if you're going to use this domain name, you'd better educate
yourself as to the legal restrictions imposed on you by applicable trademark
legislation and
case law."

One concern I have, also, is restricting this warning method to "Famous
Marks" only.  The Famous Marks concept was a necessary attempt to protect
foreign trademark holders who might need trademark protection in another
country.  Since cyberspace is by definition transborder space, all
trademarks are in jeopardy of encroachment.  So why not permit all of them
to participate in this mechanism?


> Dennis,
> One of the suggestions that I made some time ago was the creation of a
> which the registrars could check to see if it was a famous trademark name
> 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
> in no way change trademark statutes or case law.)
> If a domain name alone were capable of infringement, then a lot of
> 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
> 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
> would allow an infinite variey of non-exact matches on their name, whereas
> 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
> > >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
> > >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
> > >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
> >