I can't cite cases right now, but I remember someone else doing so on one of
these lists where filing a trademark or copyright or related filing for the
purpose of circumventing an existing procedure in another legal process was
grounds for having the filing disregarded in the existing procedure.
I'll look for the reference, IANAL and all that, so can any of the attorney
members please provide some feedback on this?
On 27-Feb-99 Roeland M.J. Meyer wrote:
> At 02:05 AM 2/27/99 -0800, William X. Walsh wrote:
> >
> >On 27-Feb-99 Roeland M.J. Meyer wrote:
> >> Well, one thing came indirectly out of the trademark/DNS discussions is
> >> that if a TLD name is trademarks, as a TLD name, the root-servers dare
> >> not
> >> assign it to anyone else. If they did, it would be an infringement. If I
> >> registered a trademark of .GOSHALMIGHTY, as a commercial trademark for a
> >> TLD, implement same in my private TLD roots, advertise it with my own
> >> name
> >> servers, and ICANN assigns it to someone else in the root-servers, then I
> >> will go talk to a judge and win. I might even get punitive damages.
> >>
> >> It is arguable that I might even be able to force NTIA to install such a
> >> TLD into the roots by court order. But I could certainly prevent it,
> >> should
> >> I so choose.
> >
> >I don't know that I agree with this. I've CC'd this to the ifwp list to get
> >some feedback there.
> >
> >I think you would still have to make a case that there is likelyhood of
> >confusion, and I think it would depend on the mark. If the mark was very
> >generic in nature, I think it would be much harder to make a case for this
> >position.
>
> As I said, the mark would be registered explicitly as a commercial mark of
> an Internet TLD. Any use of a TLD, carrying such a mark, by someone else,
> for any purpose, would be an infringement. Even were it only used as a
> private TLD, my name servers would resolve hosts in that TLD, from the
> Internet. Entering that TLD into the roots, with anyone else name servers,
> would be an unlawful infringement of that mark (IANAL) and an unlawful
> interference with my TLD operations. It may even be considered a computer
> crime, similar to DNS hi-jacking (redirection) of a dotCOM SLD. Please
> remember that ICANN is a private company, not a regulator. It has no power
> to pass laws or to regulate, whereas the USPTO *is* such a regulator and
> has authority to recognize such a trademark. ICANN would have no choice but
> to honor such a trademark. If they should fail to enter it into the root
> then they risk fragmenting the root. This would be a violation of their
> "stability" charter.
>
> >I doubt punative damanges would come into play unless you could provide it
> >was
> >being done with the intent to cause harm to the trademark holder, but IANAL
> >so
> >I may be incorrect here. I think this also would be hard to prove.
>
> Entering another owner into the root, for such a protected TLD, especially
> once notified of such protection, would be a prime facie case of intent to
> disregard the law. Failing to enter such a TLD into the root, upon request,
> once NTIA blockage of TLD registrations were removed, might also be
> considered harmful, albeit much less clearly so (IANAL). Delaying such
> entry is even less clearly harmful.
> ___________________________________________________
> Roeland M.J. Meyer -
> e-mail: mailto:[EMAIL PROTECTED]
> Internet phone: hawk.lvrmr.mhsc.com
> Personal web pages: http://staff.mhsc.com/~rmeyer
> Company web-site: http://www.mhsc.com
> ___________________________________________________
> KISS ... gotta love it!
----------------------------------
E-Mail: William X. Walsh <[EMAIL PROTECTED]>
Date: 27-Feb-99
Time: 02:54:22
----------------------------------
"We may well be on our way to a society overrun by hordes
of lawyers, hungry as locusts."
- Chief Justice Warren Burger, US Supreme Court, 1977
