[comments-wipo] Famous marks

["Juan Roberto Gonzalez" <jgonzalez@swlaw.edu>]

The problem with famous marks domain name registration is that
multinational corporations who usually own these marks will request that
the mark and every derivative from that mark must be made available to
them in every top-level domain. Currently there are many disputes over
the same mark in the three more popular top level domains, i.e. ".com",
".net", ".org".  For example, a famous mark like coca cola would request
that cocacola.com, cocacola.org, cocacola.net, cocacola.us, cocacola.it,
coca-cola.com, coca-cola.net, coca-cola.us, etc. and any other top level
domain name would be registered to it.  Thus, no matter how many new top
level domain names are added, those marks will never available to the
public.

The Sheppard/Kleinman position has the right idea as to the use of top
level domain names.  The principal of differentiation rather than how
famous a mark is should provide protection needed against trademark
infringement.  Furthermore, when dealing with country specific top level
domains, although not confined to the country because of the globality
of the internet, such mark should be considered country specific and not
confusing to the user.  The majority of internet users can differentiate
between a ".com" company and a company that is based in a particular
country such as ".us" or ".gr".

If famous marks are allowed to dominate the domain name space because of
their trademarks, domain names will be reduced to only a few names which
are not similar, or confusingly similar to trademarks, and even those
names will be taken once the names are made famous in some commercial
way.

Sincerely,

Juan R. Gonzalez
President
Hispanic National Bar Association Law Student Division
Washington, DC