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RE: [wg-b] Reality checks [the grateful dead(hits)]
I don't believe that a rule that excludes all use of a famous mark from a
domain name other than one owned by the famous mark holder is not workable.
Such a rule would exclude too many domain names that raise, I believe,
legitimate free speech issues; and, in any event, is not a position that
could command political force, whatever its merits. An ICANN rule that
allows john doe to register johndoe-porche-repairs.com does not mean that
such a domain name is not a trademark violation, and it should not prejudice
Porche's right to sue john doe for a trademark violation and prove its case.
> -----Original Message-----
> From: Greg Phillips [SMTP:email@example.com]
> Sent: Tuesday, December 14, 1999 4:48 PM
> To: KathrynKL@aol.com
> Cc: Hartman, Steve; firstname.lastname@example.org; email@example.com
> Subject: Re: [wg-b] Reality checks [the grateful dead(hits)]
> Independent Porsche repair shops may certainly advertise on their website
> they repair Porsche automobiles, but they should not be allowed to use the
> trademark "Porsche" in their Internet address as a source of their
> services. If
> one accepts the ruling of the Eastern District of Virginia that "a domain
> name is
> more than a mere internet address. It also identifies the internet site
> to those
> who reach it, much like . . . a company's name identifies a specific
> Cardservice International, Inc. v. McGee, 960 F.Supp. 737, 741 (E.D.Va.
> aff'd, 129 F.3d 1258 (4th Cir. 1997) (enjoining use of trademark
> "or any variation thereof, including but not limited to 'csi' or
> 'csimall'"), one
> must also accept the proposition that it is not fair use to use a
> trademark or
> variation of a trademark in a company name. Manny's Porshop, 972 F.Supp.
> at 1131
> (N.D.Ill. 1997) (enjoining use of "Manny's Porshop" as a business name).
> Volkswagenwerk Aktiengesellschaft v. Brewer, 170 U.S.P.Q. 560 (D. Ariz.
> (use of "VOLKCITY SERVICE CENTER" enjoined); Volkswagenwerk
> Aktiengesellschaft v.
> Karadizian, 170 U.S.P.Q. 565 (C.D. Cal. 1971) (use of "VOLKSWAGEN
> VILLAGE" in
> name enjoined; usage not vitiated by use of the phrase "Used cars only;
> not a
> franchised Volkswagen dealer). The FTDA "prohibits even innocuous use" of
> famous trademark. Manny's Porshop, 972 F.Supp. at 1132 (citing
> Intermatic, Inc.
> v. Toeppen, 947 F.Supp. 1227, 1240 (N.D.Ill. 1996)). In short, it is not
> use" to use a trademark in a domain name. Brookfield Communications, Inc.
> West Coast Entertainment Corp., 1999 WL 232014, * 26 (9th Cir. 1999).
> In the real world we don't allow independent repair shops to use the
> "Porsche" in their business names or on signs, and we don't allow the
> repair shops to list themselves under Porsche in the telephone
> directories. The
> same rules should apply to the Internet. Thus, an independent repair shop
> advertise in an advertisement or on a website that "We repair Porsche
> automobiles," but shouldn't use one of the world's most famous trademarks
> indicate the source for its services.
> KathrynKL@aol.com wrote:
> > HartmanS@Nabisco.com writes:
> > > For the sake of completeness, I would add that I can find nothing
> > > on the face of it with Porsche objecting to porschebank.com or
> > > porschelynn.com, or the Academy objecting to theoscars.com. Nothing
> > these
> > > domain name is a clear message.
> > Based on your message, I fear you are setting an new standard for
> > of marks. Rather than requiring the trademark owner to show
> > (with the shorthand version being proof of "likelihood of confusion") or
> > rather than having the famous mark owner show dilution under by the
> > Convention (shorthand version: that the diluter is using the mark on
> > "identical or similar goods"), you would like the trademark owner to
> > only that someone is using "their word" and leave the burden of proof to
> > domain name holder to prove their innocence e.g, not infringing or
> > Such an approach is clean and easy, but it will create tremendous
> > with all the independent Porsche Repair Garages and with independent
> > distributors. Under law, they have rights to use even famous marks and
> > in commercial settings. Needless to say, it creates tremendous
> problems for
> > free speech by making someone the monitor upfront for what is a
> > communicative message using the word "oreo" or "porsche" in it.
> > Also, the approach is not consistent with the equities built into
> > law. The burden of proof, and the showings, under both sovereign laws
> > treaties, rests with the trademark owner.
> > Kathy Kleiman
> > >