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[ga] Re: Candidate positions


Perhaps we need to be clear first what a bad decision is re 'identical or
confusingly similar', before we start counting. If trademarks are being used
as the basis of this whole thing (identical or confusingly similar to an
existing trademark), then perhaps we can look at what trademark law says
about 'distinctive'. If an expression is sufficiently different from
pre-exisiting trademarks to be acceptable for registration as a word mark,
then its use as a domain name surely cannot be confusingly similar to an
exisiting trademark. It cannot simultaneously be acceptable as a new
trademark and unacceptable as a domain name. To take a very hypothetical
example, if 'don' is registered as a trademark, then 'snowdon' could still
be registered as a distinctive mark, so the domain name 'snowdon' would not
be confusingly similar to the mark 'don'. An argument to the contrary would
result n a bad decision. Tata would have lost using such a
principle. (Of course, under the national law of many countries, certain
terms can never be trademarked, regardless of distinctiveness and
pre-exisiting registered marks, a major problem for doman owners who wish to
protect their position...)

Where there are multiple trademark registrations for exactly the same word
(eg there are dozens of trademarks for London as a 'word and device' mark
around the world), there can be no claim of exclusivity (and in fact in the
UK and the US I believe such registered marks are obliged to include such a
rider, though in many other countries they are not). Here the trademarks
holders (any of them) cannot argue that they have any rights to prevent
anyone (including domain registrants) from using the term, as it stands or
within a longer expression. Their registration protects the exclusive use of
a device (design) which includes the non-exclusive use of the word within
the device, as far as I'm aware. I would call any decision that argued
otherwise
a bad decision.

Louise

----- Original Message -----
From: Dave Crocker <dhc2@dcrocker.net>
To: James Love <love@cptech.org>
Cc: <ga@dnso.org>
Sent: Friday, September 01, 2000 7:53 AM
Subject: Re: [ga] Candidate positions on UDRP


> At 02:02 AM 9/1/00 -0400, James Love wrote:
> >the WIPO panels are making bad decisions on the issues of what is
> >"identical or confusingly similar," or if they are as concerned as I am
> >that WIPO panels are taking away generic names from domain holders.
>
>
> Please provide the statistical basis for claiming that there is a pattern
> of bad decisions.  Is it one percent out of all the
> decisions?  Two?  Ten?  fifty?
>
> d/
>
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