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Members may provide limited
exceptions to the rights conferred by a trademark, such as
fair use of descriptive terms, provided that such exceptions
take account of the legitimate interests of the owner of the
trademark and of third parties.
So a domain name CAN include
the name you registered as a TM for the words that are
descriptive. So I could put up a domain name as a site that
talks about or describes your product or service whether I am
a critic or a supporter. Again this would not give the TM
Holder the rights to the domain name.
From the Paris Convention
Article 5
<!--StartFragment-->(2) Use of a
trademark by the proprietor in a form differing in
elements
which do not alter the distinctive character of
the mark in the form in
which it was registered in one of
the countries of the Union shall not
entail invalidation of
the registration and shall not diminish the
protection
granted to the mark.
(3) Concurrent use of the same
mark on identical or similar goods by
industrial or
commercial establishments considered as co-proprietors of
the
mark according to the provisions of the domestic law of
the country where
protection is claimed shall not prevent
registration or diminish in any way
the protection granted
to the said mark in any country of the Union,
provided that
such use does not result in misleading the public and is
not
contrary to the public interest.
Again no rights to all uses of
the words or phrases are not protected but only those
inspecific instances where an infringement occurs.
From Article 6
<!--StartFragment-->(3) A mark duly
registered in a country of the Union shall be regarded
as
independent of marks registered in the other countries
of the Union,
including the country of origin.
Meaning that it is possible
for similar marks to occur in different countries, and since
domain names are not within one country if say it is a dot
com, then local TMs in one country are not accepted in a
broad enough manner to apply to domain names in the
gTLDs.
<!--StartFragment-->Article
6bis
(1) The countries of the Union undertake, ex
officio if their legislation
so permits, or at the request
of an interested party, to refuse or to
cancel the
registration, and to prohibit the use, of a trademark
which
constitutes a reproduction, an imitation, or a
translation, liable to
create confusion, of a mark
considered by the competent authority of the
country of
registration or use to be well known in that country as
being
already the mark of a person entitled to the benefits
of this Convention
and used for identical or similar goods.
These provisions shall also apply
when the essential part
of the mark constitutes a reproduction of any
such
well-known mark or an imitation liable to create
confusion therewith.
Again stating
that the infringement must be "AND used for identical or
similar goods" Not ALL uses of the words. If the domain name
is not being used to promote similar products or services
there is no infringement.
From Article 6ter regarding
abbreviations and symbols
<!--StartFragment-->The countries of
the Union shall not be required to apply the
said
provisions when the use or registration referred to in
subparagraph
(a), above, is not of such a nature as to
suggest to the public that a
connection exists between the
organization concerned and the armorial
bearings, flags,
emblems, abbreviations, and names, or if such use
or
registration is probably not of such a nature as to
mislead the public as
to the existence of a connection
between the user and the organization.
(2) Prohibition
of the use of official signs and hallmarks
indicating
control and warranty shall apply solely in cases
where the marks in which
they are incorporated are intended
to be used on goods of the same or a
similar kind.
Again the spirit of the law
regarding Intellectual propertty intends to protect TM Holders
from the use of the name, phrase, symbol or whatever in
regards to people using them for an identical or similar
purpose and not the broader definition the UDRP and WIPO have
imposed.
From Article
6quinquies
<!--StartFragment-->. Trademarks
covered by this Article may be neither denied
registration
nor invalidated except in the following
cases:
1. when they are of such a nature as to
infringe rights acquired by
third
parties in the country where protection is
claimed;
2. when they are devoid of any
distinctive character, or consist
exclusively of signs or indications which may serve, in trade,
to
designate the kind, quality,
quantity, intended purpose, value,
place
of origin, of the goods, or
the time of production, or have
become
customary in the current
language or in the bona fide and
established
practices of the trade
of the country where protection is claimed;
3.
when they are contrary to morality or public order and,
in
particular, of such a nature as
to deceive the public. It is
understood that a mark may not be considered contrary to
public order
for the sole reason
that it does not conform to a provision of
the
legislation on marks, except
if such provision itself relates
to
public order.
When they are devoid of
distinctive characteristics. Beverages & More!
exactly as written here was allowed a TM as written with the
ampersand and the exclamation point. The Domain Name
BeveragesAndMore.com was stripped from the holder and given to
the beverages & More! TM holder as too similar even though
the TM Holder could not have even received a TM if they had
written it the way the domain name has it. This is wrong. If
you don't see that, explain why you are right. The argument
that they could not use the ampersand and exclamation point is
invalid as they could not have gotten the TM without it and
due to Verisigns Internationalized Domains it is invalid
because they could now get the name the way the TM office
approved it.
From BitLaw. a
definition
Trademark Law
| Executive
Summary: Trademark law governs the use of a device
(including a word, phrase, symbol, product shape, or
logo) by a manufacturer or merchant to identify its
goods and to distinguish those goods from those made or
sold by another. Service marks, which are used on
services rather than goods, are also governed by
'Trademark law.' In the United States, certain common
law trademark rights stem merely from the use of a mark.
However, to obtain the greatest protection for a mark,
it is almost always advisable to register the mark,
either with the federal government, if possible, or with
a state government. A mark which is registered with
federal government should be marked with the ® symbol.
Unregistered trademarks should be marked with a "tm",
while unregistered service marks should be marked with a
"sm".
A mark is infringed under
U.S. trademark law when another person uses a device (a
mark) so as to cause confusion as to the source or
sponsorship of the goods or services involved. Multiple
parties may use the same mark only where the goods of
the parties are not so similar as to cause confusion
among consumers. Where a mark is protected only under
common law trademark rights, the same marks can be used
where there is no geographic overlap in the use of the
marks. Federally registered marks have a nation-wide
geographic scope, and hence are protected throughout the
United States. |
Again unless the Domain Name
is being used to conflict directly with the TM, the TM has no
bearing on the domain name. The TM only identifies the mark in
regards to the actual goods or services it was intended
for on application and not for ALL uses of the word and the TM
must include the symbol for Registered or the TM. Make a
Dot Reg or Dot Tm and companies can protect their marks there
and it will include the required designation they are supposed
to include by law. TM Law does not state that adding .com is
the way to display a registered mark but that it display the
circled R or the initials TM.
If the intent as described
by the TM Lobbyists, the Intellectual Property Constituency,
and the PACs that contribute to the campaigns for elected
officials who will support their position, is to protect
consumers so they know they are going to the trusted and TM'ed
product's Website, then a TLD designed just for this purpose
would satisfy that need. Go to .TM and you know you are
getting the holder of the TM's website vs someone else's and
all those requirements wished for the existing tlds can
be applied in that namespace such as restrictions on who can
register a name.
The proponents of the TM
protection on the new miss a very valid point. The Internet
was not created to serve them in particular. It was intended
to serve EVERYONE whether they are a commercial entity or not.
The first priority is NOT the protection of commercial
interests but the protection of the freedom of individuals to
use the Internet. Their self-centered approach to matters on
the Internet show they believe that commercial interests come
first and individual's rights come second.
Inappropriate
allegations of Internet trademark infringement:
In addition to the increased discovery of actual trademark
infringers, the expansion of the Internet is also leading to
an expansion of inappropriate trademark infringement
allegations. Typically, a company will assert trademark
infringement every time it views one of its trademarks on a
web page of a third party. However, the determination of
whether trademark infringement has occurred involves an
analysis of the factors described in BitLaw's page on Trademark
Infringement. For instance, a person who develops a web
site that discusses her experience with Microsoft software may
use Microsoft's trademarks to refer to specific products
without fear of infringement. However, she probably would not
be able to use the trademarks in such a way as to cause
viewers of her web page to believe that she is affiliated with
Microsoft or that Microsoft is in some way sponsoring her web
page. The distinction could only be analyzed upon seeing how
the marks are actually used on the page.
As an example, the home page of the
BitLaw web site used to contain an Apple logo, along with the
phrase "This web site was constructed using Apple technology."
Some might argue that the use of the Apple logo on the BitLaw
home page constitutes trademark infringement. This particular
use was not infringement, however, since Apple had
specifically authorized this type of use pursuant to a
trademark license with web site developers. In contrast, the
trademarks and logos shown on the page containing BitLaw's
discussion of trademark
devices were not authorized in any way by the trademark
owners. However, it is unlikely that the trademark owners
could successfully institute a trademark suit for this page,
since the context of the page makes it clear that the marks
are being used as examples of trademarks. It would be
difficult to show the likelihood-of-confusion necessary for
trademark infringement to occur as a result of this page.
The
elements for a successful trademark infringement claim
have been well established under both federal and state
case law. In a nutshell, a plaintiff in a trademark case has
the burden of proving that the defendant's use of a mark has
created a likelihood-of-confusion about the origin of the
defendant's goods or services. To do this, the plaintiff
should first show that it has developed a protectable
trademark right in a trademark. The plaintiff then must show
that the defendant is using a confusingly similar mark in such
a way that it creates a likelihood of confusion, mistake
and/or deception with the consuming public. The confusion
created can be that the defendant's products are the same as
that of the plaintiff, or that the defendant is somehow
associated, affiliated, connected, approved, authorized or
sponsored by plaintiff.
But in many cases this has
not been how it was applied.
Eight
factors for likelihood of confusion: To analyze
whether a particular situation has developed the requisite
"likelihood of confusion," courts have generally looked at the
following eight factors:
- the similarity in the overall impression created by the
two marks (including the marks' look, phonetic similarities,
and underlying meanings);
- the similarities of the goods and services involved
(including an examination of the marketing channels for the
goods);
- the strength of the plaintiff's mark;
- any evidence of actual confusion by consumers;
- the intent of the defendant in adopting its mark;
- the physical proximity of the goods in the retail
marketplace;
- the degree of care likely to be exercised by the
consumer; and
- the likelihood of expansion of the product lines.
The first five of these factors are examined in every
trademark infringement action. The last three factors are the
most common additional factors that are considered by a court.
Of these eight factors, the first two are arguable the most
important. The similarity of the marks is clearly an important
part in establishing likelihood of confusion, but it is far
from determinative. It is possible for the same, identical
mark to be used in the same geographic area without any
trademark infringement occurring, as long as the goods or
services of the parties are sufficiently dissimilar. As an
example, a quick review of the Minneapolis phone book lists
numerous companies operating under the name SPEEDY. The
services offered by these companies are as follows:
- Car washing services;
- Locksmith services;
- Grocery retail services;
- Printing services;
- Plumbing services;
- Sign creation services; and
- Video rental services.
In one way, these companies are a good example that the
same mark can exist on multiple goods and services as long as
the goods and services are sufficiently difference. However,
this may be a poor example since the SPEEDY mark may be too
descriptive to function as a trademark without proof of
secondary meaning (see BitLaw's discussion of the strength
of marks for further information).
Some of the criteria that
has been used
- Does the domain name holder have trademark rights in the
domain name?
This shouldn't matter. It's not required to have a TM
to register a domain name nor should it be required. Therefore
should not be a consideration when resolving a dispute. It
does not show bad faith to not have TM'ed a domain
name.
- Is the domain name the legal name of the domain name
holder, or some other name that is otherwise commonly used
to identify that person?
Again not required when registering a domain
name.
- Has the domain name holder made use (prior to the
dispute) of the domain name in connection with a bona fide
sale of goods or services?
Whether or not someone has built their website yet is
not registering in bad faith. What if they don't have the
money to have it hosted yet? What if it will create a
situation that would reveal proprietary information you are
not ready to make public yet, but got the domain name in
anticipation of building the website? What if the technology
the domain name refers to is not marketable on the Internet
yet? What if I just haven't gooten around to it or had the
time to put the site up yet? None of these are bad faith
registration examples but are currently considered during
disputes.
- Is the domain name holder using the mark in a bona fide
noncommercial or fair use way at a web site accessible at
the domain name?
Again not required for registering a domain
name.
- Is the domain name holder attempting to divert consumers
from the trademark owner's web site in a confusing way,
either for commercial gain or in an attempt to tarnish or
disparage the trademark mark?
This IS a valid consideration in regards to bad faith
registration.
- Has the domain name holder offered to sell the domain
name to the trademark owner (or anyone else) for financial
gain without having any intent to use the mark with the sale
of goods or services?
This IS sometimes, most times, evidence of bad faith
registration.
- Has the domain name holder behaved in a pattern of
registering and selling domain names without intending to
use them in connection with the sale of goods or services?
Even WIPO has finally said the sale of a domain name
or the intent to sell one that is generic in nature is not Bad
Faith evidence although cases are still determined using this
as one of the examples. A company that uses domain names to
direct traffic to client websites is a legitimate enterprise
and as long as they use generic domain names to do so, they
are registering names in good faith in regards to their
business. Even one that aquires names that are generic to sell
to businesses to increase their traffic have registered the
names in good faith.
- Did the domain name holder provide false information
when applying for the registration of the domain name (or do
so in connection with other domain names)?
A good point to bring up during a dispute but the
reasons they did this should be discovered as well when
possible. Some people have a problem with disclosing too much
info to the Registrars. I've personally been inundated with
marketing email due to the use of the whois information. This
alone therefore is not evidence of bad faith IMO.
- Has the domain name holder registered domain names of
other parties trademarks?; and
Unless those other domain names have been disputed
and resolved to where infringement had occurred with the other
names not admissible as evidence IMO.
- How distinctive and famous is the trademark owner's
trademark?
According to who. US Companies have a US Centric
attitude to which they all think their marks are the most
famous in the world. Again domain names are international in
scope and not supposed to be central to any one country unless
it is a ccTLD. Until the US signs a treaty where all countries
participate in a real Uniform Dispute Resolution Policy that
is international in scope, TM's have no inherant right to the
domain name that contains the same wording as their TM unless
the domain names are used to infringe upon the TM in an
identical or too similar manner.
Due to successful lobbying efforts the TM Lobbyists
have gained ground.
Cyberpiracy prevention.
(1)
(A)
A person shall be liable in a civil action by the owner
of a mark, including a personal name which is protected as
a mark under this section, if, without regard to the goods
or services of the parties, that person--
(i)
has a bad faith intent to profit from that mark,
including a personal name which is protected as a mark
under this section; and
(ii)
registers, traffics in, or uses a domain name that--
(I)
in the case of a mark that is distinctive at the
time of registration of the domain name, is identical
or confusingly similar to that mark;
(II)
in the case of a famous mark that is famous at the
time of registration of the domain name, is identical
or confusingly similar to or dilutive of that mark; or
(III)
is a trademark, word, or name protected by reason
of section 706 of title 18, United States Code, or
section 220506 of title 36, United States Code.
(B)
(i)
In determining whether a person has a bad faith
intent described under subparagraph (A), a court may
consider factors such as, but not limited to--
(I)
the trademark or other intellectual property rights
of the
person, if any, in the domain name;
(II)
the extent to which the domain name consists of the
legal name of the person or a name that is otherwise
commonly used to identify that person;
(III)
the person's prior use, if any, of the domain name
in connection with the bona fide offering of any goods
or services;
(IV)
the person's bona fide noncommercial or fair use of
the mark in a site accessible under the domain
But since this is again US Law
regarding something the US says it does not control or
own it is invalid. Domain names are not subject to US
Law in this fashion. There has to be International Law
agreed upon before enforcing such rights as
this.
Sorry for the long post, but not
really since it puts my opinion forward. This at least
shows that domain name owners need representation
within the DNSO as do Individual Users of the
Internet. TM proponents resist this due to them having
a weak argument and not wishing to give any opposing
opinion the right to speak or to vote.
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