Re: [wg-b] "Oops" domains

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

See the Interstellar Starship case (epix.com) at the Ninth Circuit's site at 

http://www.ce9.uscourts.gov/web/newopinions.nsf/f606ac175e010d64882566eb0065
8118/88e8b2a45ece6f4b882567b300658b4f?OpenDocument

for its discussion of initial interest confusion.  Also see the
wwwpainewebber case (I do not have a URL).


At 07:41 AM 9/7/99 -0700, you wrote:
>Hi Jonathan and Martin --
>
>A US federal court (sorry, I can't recall the cite, but will look it up if
you're interested) ...
>stated that web searching is a multi-step process by which the average
user knows that
>they have to verify the site they have landed at. Simply landing at the
wrong site doesn't
>prove confusion or dilution or other forms of infringement.
>
>The trademark holder wants, rightly,  to prevent infringement -- including
dilution.  If a name alone
>constitutes a form of dilution in the mind of the trademark holder --
independent of any activity occuring on the site -- then the trademark
holder should anticipate this and register the name.
>
>>Dennis
>
>
>
>----------
>> "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
>>
>>
>
>
>
>

@ @ @ @ @ @ @ @ @