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RE: [wg-b] Recent US Case Law

What are the deadlines for the group?

I propose an additional question, which perhaps should be numbered question
0 rather than question 8:

Should there be exclusions at all, or are there more effective ways of
protecting famous marks?

Comment:  The details requested in questions 1 through 7 seem to be mooted
until a convincing answer can be made to this question.  

First, the exclusion would appear to be of limited utility.  As I undertand
it (and correct me if I'm wrong) the exclusion would NOT be effective
against variants - so if IBM is deemed to be a famous mark the exclusion
would not work against ibmnetwork.firm, ibmsoftware.firm, ibmsystems.firm,
ibmconsulting.firm, etc.

Second, unless limited to a nextraordinarily small number of marks, the
exclusion would appear to lead to unjust results, as it acts in effect as
an ex parte finding that the registration of [famousmark].[tld] is
actionable without the context in which the registration takes place.
There are some but not a lot of marks that merit such a finding and not all
of them are famous.   There are marks which are so distinctive - there is a
little plausibility to why a third party can register enzoangiolini.firm or
teenagemutantninjaturtles.firm or cocacola.firm or carloppedahl.firm in
good faith.  

However there is a class of marks which, while they could meet many
definitions of fame (TIME, TIDE, DIAL, SUN), context is needed to determine
if there will be a likelihood of confusion.  The registration of time.firm
by a clock company is different from a registration of time.firm by
Newhouse Publications (a competitor to TIME).  ENZO ANGIOLINI deserves such
protection and would not likely get it, other marks may get it and not
deserve it, but that puts the would be DN registrant through two procedures
- first it would have to protest the granting of the exclusion, then it
would likely have to defend an UDRP challenge. The UDRP is a proposed
mechanism for obtaining such context on an expedited basis and making a
preliminary determination.  The owners of clue.com and dennison.net would
have liked such a determination early on.

Third - the exclusion process will likely be useless in protecting the
suddenly famous - new company mergers (citigroup.firm, mobilexxon.firm),
movie titles (blairwitch.arts) and most new Internet companies (yahoo.firm,
ebay.web, slashdot.info).  Again, the UDRP is more flexible tool for these
types of problems.

I would encourage the group to contemplate a strong endorsement of good
registration practices and a fair UDRP in the place of devoting resources
to an exclusion process.

At 07:57 AM 9/13/99 -0400, you wrote:
>-----Original Message-----
>From: Michael D. Palage [mailto:mpalage@infonetworks.com]
>Sent: Saturday, September 11, 1999 11:15 AM
>To: wg-b@dnso.org
>Subject: [wg-b] Recent US Case Law
>The following article written by Dan Goodin, a staff writer for CNET
>News.com, discussed the recent opinions written in the "clue.com",
>"Avery.net", and "Dennison.net" disputes. I found the following excerpt from
>the clue.com opinion rather interesting.
>"While use of a trademark as a domain name to extort money from the
>markholder or to prevent that markholder from using the
>domain name may be per se dilution, a legitimate competing use of the domain
>name is not," Woodlock wrote. "Holders of a famous mark are not
>automatically entitled to use that mark as their domain name; trademark law
>does not support such a monopoly."
>Link to Dan Goodin's full article:
>I know these decisions will do little to sway the strongly held opinions of
>most of the participants on this list.  However, I do believe it reinforces
>the importance of our task: drafting  a policy/procedure that will safeguard
>the collective interests of individuals, small business, and large
>international corporations that are domain name holders.
>Although I have been encouraged by the increased participation in the list
>since the Santiago, Chile that has flushed out some additional important
>issues, we as a group must begin to focus our collective efforts. I am in
>the process of working with the DNSO webmaster to implement a votebot to
>allow us to vote on the various issues confronting us.   In light of some of
>the criticism of Working Group A's efforts, all participants will be able to
>vote on all issues. I believe the availability of the VoteBot for use by
>Jonathan and Amadeu in Working Group A would have made their task much
>easier. However, faced with the circumstances surrounding them, I believe
>they did an excellent job and Jonathan's experience has helped make this
>Working Group run a lot more smoothly.
>In an effort to ensure that this list continues to run smoothly, I encourage
>all participants during the voting process to keep their comments brief and
>on-point and strongly recommend against multi-threaded messages. I have seen
>that some participants in the ICANN process always feel the need to get the
>last word/post in.  As co-chair I have bent over backwards to compose a
>group representative of the broad cross section of the Internet community.
>One of the reasons that I have delayed the substantive voting process is
>that I am still trying to get participation from all of the DNSO
>constituency groups, specifically gTLDs, ccTLDs, ISPs, and small businesses.
>The votebot has a report feature that allows the results to be posted for
>all participants to view. It is my intention to post the results of each
>vote to the list for all to audit - unless there is a strong consensus
>Thanks for everyone's efforts to date and I look forward to everyone
>continued participation.
>Best regards,
>Michael D. Palage
>Co-Chair Working Group B
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