[ga] RE: [wg-c] Branded TLDs

["Roeland M.J. Meyer" <rmeyer@mhsc.com>]

Please correct me if I am wrong. We now have a massive inequity codified
as administrative law. A registry must be vulnerable to trademark
holders yet can not hold a trademark itself. Do you realize the scenario
here?

NSI operates .COM for 10 years, Joe Scumbag attorney calls up one day
and says that they registered a trademark, called .COM, and NSI has to
cough up 30% of their revenue as a trademark license payment, or JS will
file, and get, an injunction telling NSI to cease and desist use of the
.COM TLD because it violates JS's trademark. NSI could not file TM on
COM because of this silly ruling.

This smells like some very old fish. It is not good news. Whomever wrote
this was not thinking clearly. Lots of judges seem tobe saying the
oposite, every time they put a domain name on hold for trademark
violation. Becasue, if a TLD cannot be a trademark, then a domain name
can not be one either. There is no functional difference between a TLD
and any other domain name.

What do they say about a TM holder running a TLD using the same name? Of
course, the TM was qualified before the registry was ever invented. Does
the TM protection then pass on to the TLD? IMHO, this is a critical
issue.

> -----Original Message-----
> From: owner-wg-c@dnso.org [mailto:owner-wg-c@dnso.org]On Behalf Of
> Martin B. Schwimmer
> Sent: Tuesday, October 05, 1999 11:45 AM
> To: ga@dnso.org
> Cc: domain-policy@lists.internic.net; wg-c@dnso.org
> Subject: [wg-c] Branded TLDs
>
>
> The US PTO has released Examination Guide No. 2-99, dated
> September 29,
> 1999 (I could not find it today at www.uspto.gov but I would
> expect it to
> be up shortly).
>
> Entitled "Marks Composed, In Whole Or In Part, Of Domain
> Names," the entire
> document is of interest to these lists.  I note in particular:
>
> "Marks Comprised Solely of TLDs for Domain Name Registry Services
>
> If a mark is composed of a TLD for "domain name registry
> services" (e.g.
> the services currently provided by NSI of registering .com
> domain names),
> registration should be refused under Trademark Act Sections
> 1, 2, 3 and 45,
> on the ground that the TLD would not be perceived as a mark.
> . . . If the
> TLD merely describes the subject or user of the domain space,
> registration
> should be refused under Trademark Act Section 2(e)(1) on the
> ground that
> the TLD is merely descriptive of registry services."
>
> This would imply that .com could function as a trademark for
> pretzels or
> t-shirts, but not domain name registry services.
>
> I add that this is a PTO policy guide.  The Federal Courts would have
> ultimate authority to interpret the Lanham Act on this and
> other issues.
>
>
>
>
>
>
> @ @ @ @ @ @ @ @ @
>
>