At 12:36 PM 5/7/99 , Martin B. Schwimmer wrote:
>>And the usual remedy for infringement or dilution, worldwide, is at most
>>cease-and-desist relief, not a transfer-of-property relief.
>
>Well, seizures provide transfer-of-property relief.
Under the Lanham Act, the only permitted seizure that is associated with
*destruction* of the infringing goods. The prevailing trademark plaintiff
is not, for example, allowed to seize the infringing automobile and then
drive it around.
>Cease-and-desist relief against a domain name would prevent the DN from
>using the DN. Permanent cease and desist relief would prevent the DN owner
>from using the DN ever. So permanent cease-and-desist releif agaisnt hte
>use of a DN would have the same effect as transfer-of-property relief.
No, it would not have the same effect. Your mistake is in failing to
consider the parties other than the challenger and the domain name owner.
(You are not alone in this mistake; WIPO made this mistake also.)
Consider the domain name "avery.net". The challenger is the Avery Dennison
company. The judge rules (1) that the domain name owner is an infringer,
and (2) that ownership of the domain name should be transferred to the
Avery Dennison company.
The problems with this include: (A) there are many other companies with
trademarks for "avery"; (B) there are many other companies called "avery";
(C) there are hundreds of thousands of persons named "avery". How can the
judge select one particular recipient for the domain name among all those
parties, probably no less deserving than the Avery Dennison company.
So no, your statement that cease-and-desist relief "would have the same
effect" as transfer-of-property relief is *flatly false*, except perhaps in
the special case of unique coined marks.
You can find this point discussed in a law review article Remedies in
Domain Name Lawsuits, 15 John Marshall Journal of Computer
& Information Law 437 (1997), draft available at
http://www.patents.com/pubs/jmls.sht .
You can also find this point raised in an amicus brief at
http://www.patents.com/avery/avery1.htm .
>>The WIPO report recommends yet another intellectual property right, that of
>>placement on the exclusionary List. There are two ways to get on the List,
>>one is to be "famous" and the other is to be "well-known". In either case
>>one is placed on the List, and the results are that (1) no other like-named
>>company or trademark can ever be placed on the List (think about it), (2)
>>the lucky company whose mark gets on the List gets to block anybody else,
>>even a like-named company or a company with a like-named product or
>>service, from obtaining a matching domain name,
> and (3) the lucky company >gets to use the challenge procedure to harass
>the similarly-named company
>>or a company with a similarly-named product or service with extremely
>>strong evidentiary and substantive presumptions in favor of the lucky company
>These are arguments against a list-based approach - not an argument for
>making a sleight of hand argument about the standard for trademark
>protection. People on these lists have the erroneous notion that use of a
>dictionary word is a defense against infringement, because practioners on
>these lists misstate the law (and only when challenged do they admit that
>it is their "personal" suggestion. I do not want them to get the erronoeus
>notion that "coined and unique" is a legal standard for anything, it's just
>a coined phrase unique to you (and the Old British statute of 1938, which
>was rejected ultimately because it was out of touch with reality).
The WIPO exclusionary List gives its sweeping remedy (blocking would-be
newly registered domain names) regardless of any trademark infringement
analysis such as whether confusion would result. For such a sweeping
remedy, the standard for inclusion on the list should be a very carefully
considered one. I cannot think of a standard that would work *other than*
unique-and-coined. The problem, if someone with a dictionary word gets
their mark on the List, is that the dictionary word is now unavailable as a
domain name for other like-named companies. United Airlines will clamor to
get "united" put on the list, and this denies the ability of United Van
Lines to get "united.foo".
Can you answer this point, please?
