I wrote:
I've often wondered why TMOs with
>identical marks aren't battling amongst each other for priority rights to
>specific, desirable domain names.
Martin Schwimmer wrote:
>they do. Juno.com,
dispute between registered TMO and common law TMO
>prince.com,
dispute between registered TMO and common law TMO
>epix.com.
I'll let Bill Lovell comment on this...
Obviously, I am not making myself clear, so I'll try again:
Take the example of Juno. The word "Juno is registered as a trademark to
* Avant-Garde Optics (for eyeglasses)
* Shoecraft (women's shoes_
* Varcia S.A. (toilet bar soap)
* Hunter Doublas, Inc. (vertical blind slats)
* Juno Lighting, Inc. (lighting fixtures)
and others.
When Juno Lighting asked NSO to invoke its domain dispute policy against
Juno Online, operator of an email service, the lighting manufacturer was,
in essence, saying that it had priority and exclusive rights to the
JUNO.COM name in cyberspace.
If a TMO has priority rights over a common law mark owner, then why should
the domain name be granted to Juno Lighting and not to another one of the
TMOs above who, perhaps, possesses a trademark that issued earlier? I
don't agree with the initial premise, and I'm suggesting here an
inconsistency that doesn't parallel trademark law.
According to NSI's policy, the first-come, first served concept applies to
the first registered trademark owner to raise a challenge, not necessarily
to the senior TMO. NSI's dispute policy thus precludes any other
registered trademark owner with the identical mark from trying the same
maneuver, even if they possess a mark that issued before Juno Lighting's.
>Priority, aka, first come, first
>served, remains one of the two essential principles of TM dispute
>resolution - the other being confusing similarity. The problem comes in
>conflicting interpretations of the universe where someone has "come first."
The date the trademark issues (or ITU date) is usually germaine when two
TMOs are involved in a dispute.
>The TM owner's position is: there's no such thing as TV priority, radio
>priority, why should there be internet priority - so Panavision sez it came
>before Toeppen, and Juno Lighting came before juno online, MTV Networks
>came before Adam Curry, etc.
These three cases you cite are not on point because they weren't disputes
between two REGISTERED trademark owners. I'm asking if trademark owners
feel they have priority rights to domain names in cyberspace over common
law marks and other legitimate users, why they don't apply the seniority
rights dictum in cyberspace, too? And why two owners of identical marks
(say "Juno") don't have a slugfest over which rights should prevail, say,
between the earliest one to challenge a domain name registrant (thus
claiming rights to the domain name) and the one who possesses the earliest
trademark issue date.
I'm just pointing out the inconsistencies in this botched approach to
conflicts over names. This is just another reason that I believe NSI's
trademark registration bias is fundamentally flawed and should be scrapped.
(BTW, Juno happens to be the actual name of the street on which I live,
thus adding another amusing context to this discussion).
Ellen Rony Co-author
The Domain Name Handbook http://www.domainhandbook.com
============================ // ================================
ISBN 0879305150 *=" ____ / +1 (415) 435-5010
[EMAIL PROTECTED] \ ) Tiburon, CA
On the Internet, // \\ no one knows you're a dog
