At 10:26 PM 2/14/99 -0800, you wrote:
>At 11:13 AM 2/13/99 -0800, Bill Lovell wrote:
>>At 01:35 AM 2/13/99 -0800, you wrote:
>>
>>>
>>>Martin makes a really good case for enforcing TLD charters. NSI has allowed
>>>them to erode simply because the TLD space has been frozen. Do you think
>>>enforced TLD charters would help in reducing this trademark pressure?
>>>
>>Not being perfectly certain of the jargon being used here, if you mean by the
>>TLD charter being enforced that a .com has to be commercial, a .org has to
>>be a nonprofit, etc., then enforcing them would be a small step in the right
>>direction. The courts have now learned to distinguish what comes after the
>>/ from what comes before the . , and trademark infringement cases are
>>always decided by going through a laundry list of relevant factors (which
>>unfortunately vary from one circuit to the next), so giving the court one
more
>>factor upon which to base a distinction certainly wouldn't hurt. This is no
>>panacea, since we've seen xyz.com go after xyz.org, but it would be a
>>step in the right direction.
>
>If I may re-phrase, to make sure I understand your position, an enforced
>TLD charter may actually help the trademark defense of an SLD, provided
>that it is truly non-infringing in the first place.
Yes. No help in a dilution case involving a famous mark, however. And
perhaps should not be. Famous marks really ought to be "famous," and
that is one area, at least, in which US and at least EU practice seems
to run parallel anyway.
The way I read your
>reply, you are essentially in agreement with Martin.
Yes.
The first question I
>would ask is what it would take to get the courts to recognize this
>distinctive mark (TLD) as a valid distinctive mark?
Very little. In court (actually, more likely in a brief), the attorney for
party x
explains that "the old system of Top Level Domains has now been expanded
in order to better serve the interests of small domain name owners, as well
as owners of registered trademarks. These "TLDs" were set up at least to
begin to define the field of art in which the registrant of the domain name
functions. For example, if there were a top level domain for some particular
classification under the international system of trademark designations,
such as printed matter, and a publisher of greeting cards with the name
"Shell" had put up a domain "http://www.shell.print," then an additional
factor would be available to help the consuming public to avoid confusion."
The Judge: "Mr. Lovell, that was an absolutely brilliant presentation, and
I will adopt your recommendations entirely."
HAHAHAHAHAHAHA!
Moreover, after wide acceptance of such a system, the Shell Oil Co.,
which may have the domain name "http://www.shell.com" right now,
would think twice before filing suit against Shell Publishing. The bottom
line in all of this is the LIKELIHOOD OF CONFUSION. You set it up so
that even precious little Veronica, when she's big enough to go online,
would not be confused in the slightest, then the courts will utilize the
system as so provided, no matter what it is.
What you have to realize, if you think this through, is that NSI discovered
the Philosopher's Stone. While it is true that 3-digit extensions go back
at least as far as RT-11 (operating system) for DEC mini-computers, it
was pure genius not only to use them for domain names, but to designate
only a few of them. Remember the law of supply and demand? If the
supply goes down, demand goes up -- sometimes WAY up. What NSI
was thus able to do, by restricting supply, was to change a routine bit
of administrative buzz into pure gold, in which registrars all over the world
are now filling warehouses with domain names -- names that in the ordinary
course of business, under free trade and without the imposition of the NSI
monopoly, might not have been generated for many years. The trigger that
set off the Oklahoma Gold Rush was sneaking in the trademark issue, so
as to put into the beady little minds of all the marketeers of the world that
"now if we only had that hot little domain name, why . . . we'd be RICH!"
And you know the "rest of the story."
>Now lets hypothesize further that we have such a charter system and it is
>being enforced. What becomes of the vulnerability of the TLD registry?
>Would a failure to enforce such a charter be a source of legal complaint
>against them? I am considering a few scenarios here (all permutations
>listed here for completeness);
> 1) An infringing for-profit domain in a non-profit TLD (ORG)?
> 2) An NON-infringing for-profit domain in a non-profit TLD (ORG)?
> 3) An infringing for-profit domain in a for-profit TLD (COM)?
> 4) An NON-infringing for-profit domain in a for-profit TLD (COM)?
>What I am really trying to find out is the level of "due-diligence" that
>would be required of the TLD registry.
>
Um, that's too much, partly because it gets into the area of ISP and
Registry contracting with end users, which I've examined in my own
case and for a few in the existing setup, but I'm not really equipped
to talk about the whole registry system. But those are certainly the
right questions, I would say!
Cheers,
Bill Lovell
