Re: [wg-c] trademark law & new gTLDs

[KathrynKL@aol.com]

CONNOLLK@rspab.com wrote:
> 
>  There is a significant and growing body of federal case law which treats
>  domain name registration as sufficiently similar to trademark registration
>  that a domain name is treated by analogy to trademark.

Sorry to be a little out of phase with the pace of this discussion, but the 
comment above by Kevin Connolly took me by surprise.  

To the contrary -- the general direction of case law is the opposite and 
judges are: 
+   throwing off the proposal of NSI that a domain name was sufficiently 
similar to a trademark to warrant suspension without any likelihood of 
confusion
+    and replacing it with a requirement that domain name use IN COMMERCE, 
for goods and services must be shown -- traditional trademark infringement.

For proof, look no further that the registration policy issued by the US 
Patent and Trademark Office (which no one can claim is not savvy to these 
issues):
"In order to register an Internet domain name, an applicant must show that it 
offers services via the Internet. Further, specimens submitted in support of 
the application to show use of the mark must show use of the Internet domain 
name as a source identifier. ** The use of an Internet domain name as a mere 
directional reference, similar to use of a telephone number or business 
address on stationery, business cards, or advertisements, is not use of the 
name as a source identifier. ** " (** added).  

Source: Trademark examination of domain name policy, USPTO, 
http://www.uspto.gov/web/offices/tac/domain/tmdomain.htm

Kathryn Kleiman
ACM's Internet Governance Committee