Re: [ga] More UDRP Proceedings

[Ellen Rony <erony@marin.k12.ca.us>]

Bret, since you are an attorney, perhaps you can explain the purpose of the
"use" provision of a trademark and why the same notion is appropriate for
domain names.  IANAL, but as I see it, a trademark registration basically
blocks out any other party from using the name in a specific commercial
context and geographical area.  With only 42 classes of goods and services,
I suppose the rationale for this proviso is that sitting on a trademark
registration without using it might be detrimental to commerce in that
class of goods or services.

But domain names can be acquired for all manner of uses--one time events,
bully pulpits, sales of goods and services, self-promotion, advocacy,
student projects, graphic design.... I'd just like to get a better
understanding of the use it or lose it rationale here.  Would "hello" or
"under construction or a photograph (see Toeppen v. Panavision) constitute
use?   Who would police this?  "Continuous" use is another concern.
Servers go down; people move and re-establish their lives in new locations
with different ISPs. S--- happens.  And websites change.  One that was not
infringing five years ago may have new material that clearly crosses the
trademark infringement line.  So, I don't domain registrants merit
protection because of x years of unchallenged, continuous use, but someone
who invokes the UDRP five years down the line better have very good reason
for doing so.


Bret Fausett wrote:

>Since I was making an analogy to trademark law, I'll carry it out a little
>further. Generally, under U.S. law, you use trademarks or you lose your
>rights in them. If one were to make domain name registrations incontestable
>after five years of continued, unchallenged use, I wouldn't think it would
>make a difference whether that five years had been spent using the domain
>name for web-based services, e-mail services, or any other use of the DNS.
>
>What doesn't strike me as a "use" though -- for these purposes -- is simply
>registering a domain name and thinking about what you're going to do with
>it. Of course, there's no reason that you can't register a domain name and
>sit on it. But I wonder whether just sitting unnoticed for five years should
>convert your registration to an incontestable one. I wouldn't think so
>(though I haven't thought it through very much).
>
>This is an interesting idea. I wonder if there's something worthwhile here,
>and I'm very glad you raised it.
>
>        -- Bret
>
>Ellen Rony wrote:
>> Ok, let's explore this notion of unchallenged use.  If I get a driver's
>> license, am I required to drive?  If I buy a book, can it sit on my
>> bookshelf for years unread?  If I register for a fictitious business name
>> in my state, must I actually employ the use of the name?  Must an attorney
>> who passes the bar actually go out and get clients within a prescribed
>> period?
>>
>> What presumptions would support rights in long, continuous, unchallenged
>> use over simply holding on to the name registration?  If someone has the
>> concept for a new business, the domain name may be registered well before
>> the business is implemented online.  I am certain your notion is presented
>> with regard to cyberhoarders who stockpile domain names for future sale,
>> but it would hurt those who have purposeful, but unfullfilled business
>> plans.
>>
>> And this gets to the notion of the domain name as property.  If I register
>> the name, set up the servers and pay my renewal fees in a timely matter,
>> what legal justification obligates me to activate the name in a website or
>> email account within a set period of time?
>>
>> I hope the public record will show us exactly why a UDRP proceeding have
>> been launched against a five-year-old domain name registration.
>>
>
>> "Bret A. Fausett wrote:
>>>
>>> You raise an interesting point. As you probably know, under U.S. law, some
>>> trademark registrations become incontestable after a period of time. Given
>>> the amount of money now going to build an online presence (according to one
>>> recent study the *average* cost for a new e-commerce site exceeds U.S.
>>> $1,000,000), protecting a domain name after a similar period of continuous
>>> and unchallenged use might make sense.
>>
>>> While Harald is probably right that, as a practical matter, a long
>>>period of
>>> use makes the challenger's task in a UDRP proceeding daunting, shouldn't a
>>> domain name owner have some certainty after a long period of use that their
>>> name will not be taken away?
>>>
>>> We talk a lot about stability of the Internet. I would think this goal
>>>would
>>> be furthered by giving domain name owners an incontestable right in their
>>> name after a period of long, continuous, unchallenged use.
>>>
>>> -- Bret
>>
>>
>>
>>.............................................................................
>>Ellen Rony                         ____             The Domain Name
>>Handbook
>> Co-author               ^..^     )6     http://www.domainhandbook.com
>> +1 (415) 435-5010               (oo) -^--
>> erony@marin.k12.ca.us
>> W   W
>> DOT COM is the Pig Latin of the Information Age
>> 1999 Cyberserk Awards: http://www.domainhandbook.com/awards99.html
>>
>>.............................................................................

............................................................................
Ellen Rony                         ____             The Domain Name Handbook
Co-author		       ^..^     )6     http://www.domainhandbook.com
+1 (415) 435-5010    	       (oo) -^--
erony@marin.k12.ca.us
                                   W   W
	   DOT COM is the Pig Latin of the Information Age
    1999 Cyberserk Awards: http://www.domainhandbook.com/awards99.html
............................................................................