Re: [wg-b] "Oops" domains

[Jonathan Cohen <jcohen@shapirocohen.com>]

"Martin B. Schwimmer" wrote:

> The protection is not against the clumsiness of typists but against those
> who would seek to profit from the clumsiness of typists.  A key motivation
> of the counterfeiter and infringer is to prey on the "imperfect
> recollection" (and in this case, imperfect typing) of the consumer.  You
> could look up that term.  A great deal of bad faith usage of a mark relies
> on small deviations from the mark in question in the hope that the consumer
> will not notice (confusion).
>
> Again, we are not talking about an expansion of the law - recently a
> district court ruled that the domain name wwwpainewebber.com (sic - the dot
> was missing after the www) infringed the mark PAINE WEBBER.
>
> Hoeever, as to the larger point, whether mis-typings should be covered by
> an exclusion, if one were to list all the possible mis-typings of a makr
> (or more importantly all the "pseudo-marks" for a mark (those marks which
> are not identical to a mark but may be visually, phoneticaly or
> connotatively similar, as N-R-G, energee, N-ergee and N-R-Gee are for the
> word ENERGY) we see the limitations of the exclusion process.  Clearly the
> exclusion cannot cover all pseudo-marks (for the reasons stated belwo and
> for others) - only an IDENTITY-exclusion is feasible - but an identity
> exclusion is of limited utility.
>
> In other words, trademark owners are still going to need the UDRP.
>
> So is the exclusion process worth the effort?
>
> At 10:52 AM 9/3/99 -0400, you wrote:
> >
> >
> >Harald Tveit Alvestrand wrote:
> >
> >> Next question: do we also want to rule out of scope the question of whether
> >> nisan, niisan and nisssan should be reserved/blocked/actionable if "nissan"
> >> is found to be a famous mark?
> >
> >I think we do want to rule that out of scope. That is a can of worms that
> could
> >create more disputes than it resolves.
> >
> >One problem is that in a *global* context these "misspellings" may in fact be
> >different words or hold entirely unrelated meanings. They might even be
> trademarked
> >in another context.
> >
> >Another problem is that the likelihood of confusion or damage in such
> cases seems
> >to be extremely word and culture-specific--so how would a rule be
> established to
> >determine objectively which "similar" strings are "similar enough" to deserve
> >protection? I can only see this being resolved on a fact-finding basis;
> i.e. in a
> >court.
> >
> >Generally, I am uncomfortable with the principle that TM owners deserve
> global
> >legal protection against the clumsiness of typists. It is one thing, as
> several US
> >courts have ruled, to become frustrated when one cannot find <company> at
> ><company.com>. It is entirely a different matter to be unable to find it at
> ><compayn.com>
> >
> >The only serious issue is when typos lead children or other unwilling
> users to porn
> >sites. I think this is a regulatory/civil issue that can be handled best via
> >litigation.
> >
> >I undertand the potential for abuse here and have little respect for the
> people who
> >attempt to base a business upon typo domains, but I do not think the
> "damage" to
> >either consumers or trademark owners is sufficient to warrant the massive
> expansion
> >of rights and potential for abuse and conflict that would be created.
> >
> >
> >
> >
> >
>
> @ @ @ @ @ @ @ @ @

Excellent question!---any comment out there?
Jonathan