The Fame Claim List -was [wg-b] notification as compromise?

["Martin B. Schwimmer" <martys@interport.net>]

In response to the rpevious post regarding notification as a compromise:

How about a fame claim list?

There are about 11 categories of information a tribunal will look at in
determining the fame of a mark(i.e. prior registrations, sales figures,
advertising figures, third-party recognition, and others).  The famous mark
aspirant fills out a template giving information on those topics.  We're
talking summary information, two, three pages max- the claimer can provide
links to sites which can verify or expand on the information.  The fame
claimer then lists the pseudo marks it deems to be infringing (nissan,
neesan, nissancar, nisan). It might also designate, perhaps, that it makes
its claim only in regards to certain TLDs (because it doesn't care about
.anon or .priv or .noncom or .notforprofit or
.obviouslyirrelevantforourpurposes).

So a third party files for nisan.firm.  That triggers the fame claim list
and the registrant gets, by return email along with the confirmation of
receipt of its domain name application, Nissan's two pages as to why NISSAN
is a famous mark, with an understanding of how Nissan uses its mark.  The
registration is NOT excluded.

Also, Nissan gets sent an email advising it of the registration of nisan.firm.

In the real world this level of exchange of information usually takes a
demand letter or two.

From this point on, Nissan is on actual notice of nisan.firm and its
obligation to take prompt action has begun.

Also, nisan.firm is on actual notice of Nissan's claim within seconds of
registering the domain name, so it has not yet sunk money into the site.

If Prince UK gets a fame claim from Prince US, it tells it to take a hike.

If Too Small To Afford A Trademark Search, Inc. (TSTAATS Inc.) gets a fame
claim from a company whose rights it might be infringing, it has just
gotten a trademark search for free, and has information on which to make a
decision.

And cyber-squatters who begin use do so with incontestable actual knowledge.

This practice is not a whole lot different from what is presently being
done in the examnation of trademark applications for the Community
Trademark in the EEC, where applicants and prior registrants are given
information about each other.

At 12:27 PM 9/3/99 -0500, you wrote:
>I believe that granting exceptions is unworkable for the many reasons that
>have already been discussed. Would a notification system be practicable?
>warranted? desireable? In other words, if someone registered
>thenissancar.org, notification would be automatically sent to the Nissan
>car manufacturer. If Nissan felt the site was in contradiciton of the
>representations (paragraph 2 in the model agreement drafted by Skadden,
>Arp, et al) then Nissan could avail itself of dispute resolution. In this
>way the logical  filter could look for the string without the dire
>consequences of barring registration. Is this a possible compromise?
>
>Eileen
>
>

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