RE: [wg-b] Reality checks [the grateful dead(hits)]

["Hartman, Steve" <HartmanS@Nabisco.com>]

The first sentence should read "I believe.... ." Sorry for any confusion.

Steve Hartman
Nabisco, Inc.

> -----Original Message-----
> From:	Hartman, Steve 
> Sent:	Tuesday, December 14, 1999 4:53 PM
> To:	'Greg Phillips'; KathrynKL@aol.com
> Cc:	erony@marin.k12.ca.us; wg-b@dnso.org
> Subject:	RE: [wg-b] Reality checks [the grateful dead(hits)]
> 
> I don't believe that a rule that excludes all use of a famous mark from a
> domain name other than one owned by the famous mark holder is not
> workable.
> Such a rule would exclude too many domain names that raise, I believe,
> legitimate free speech issues; and, in any event, is not a position that
> could command political force, whatever its merits. An ICANN rule that
> allows john doe to register johndoe-porche-repairs.com does not mean that
> such a domain name is not a trademark violation, and it should not
> prejudice
> Porche's right to sue john doe for a trademark violation and prove its
> case.
> 
> Steve Hartman
> Nabisco, Inc.
> 
> > -----Original Message-----
> > From:	Greg Phillips [SMTP:gdp@hpalaw.com]
> > Sent:	Tuesday, December 14, 1999 4:48 PM
> > To:	KathrynKL@aol.com
> > Cc:	Hartman, Steve; erony@marin.k12.ca.us; wg-b@dnso.org
> > Subject:	Re: [wg-b] Reality checks [the grateful dead(hits)]
> > 
> > Independent Porsche repair shops may certainly advertise on their
> website
> > that
> > they repair Porsche automobiles, but they should not be allowed to use
> the
> > trademark "Porsche" in their Internet address as a source of their
> > services.  If
> > one accepts the ruling of the Eastern District of Virginia that "a
> domain
> > name is
> > more than a mere internet address.  It also identifies the internet site
> > to those
> > who reach it, much like . . . a company's name identifies a specific
> > company."
> > Cardservice International, Inc. v. McGee, 960 F.Supp. 737, 741 (E.D.Va.
> > 1997),
> > aff'd, 129 F.3d 1258 (4th Cir. 1997) (enjoining use of trademark
> > "cardservice,"
> > "or any variation thereof, including but not limited to 'csi' or
> > 'csimall'"), one
> > must also accept the proposition that it is not fair use to use a
> > trademark or
> > variation of a trademark in a company name.  Manny's Porshop, 972
> F.Supp.
> > at 1131
> > (N.D.Ill. 1997) (enjoining use of "Manny's Porshop" as a business name).
> > Accord
> > Volkswagenwerk Aktiengesellschaft v. Brewer,  170 U.S.P.Q. 560 (D.
> Ariz.
> > 1971)
> > (use of "VOLKCITY SERVICE CENTER" enjoined); Volkswagenwerk
> > Aktiengesellschaft v.
> > Karadizian,  170 U.S.P.Q.  565  (C.D. Cal. 1971) (use of "VOLKSWAGEN
> > VILLAGE" in
> > name enjoined; usage not vitiated by use  of the phrase "Used cars only;
> > not  a
> > franchised Volkswagen dealer). The FTDA "prohibits even innocuous use"
> of
> > a
> > famous trademark.  Manny's Porshop, 972 F.Supp. at 1132 (citing
> > Intermatic, Inc.
> > v. Toeppen, 947 F.Supp. 1227, 1240 (N.D.Ill. 1996)).  In short, it is
> not
> > "fair
> > use" to use a trademark in a domain name.  Brookfield Communications,
> Inc.
> > v.
> > West Coast Entertainment Corp., 1999 WL 232014, * 26 (9th Cir. 1999).
> > 
> > In the real world we don't allow independent repair shops to use the
> > trademark
> > "Porsche" in their business names or on signs, and we don't allow the
> > independent
> > repair shops to list themselves under Porsche in the telephone
> > directories.  The
> > same rules should apply to the Internet.  Thus, an independent repair
> shop
> > may
> > advertise in an advertisement or on a website that "We repair Porsche
> > automobiles," but shouldn't use one of the world's most famous
> trademarks
> > to
> > indicate the source for its services.
> > 
> > 
> > KathrynKL@aol.com wrote:
> > 
> > > HartmanS@Nabisco.com writes:
> > > >  For the sake of completeness, I would add that I can find nothing
> > improper
> > > >  on the face of it with Porsche objecting to porschebank.com or
> > > >  porschelynn.com, or the Academy objecting to theoscars.com. Nothing
> > in
> > > these
> > > >  domain name is a clear message.
> > >
> > > Based on your message, I fear you are setting an new standard for
> > protection
> > > of marks.  Rather than requiring the trademark owner to show
> > infringement
> > > (with the shorthand version being proof of "likelihood of confusion")
> or
> > > rather than having the famous mark owner show dilution under by the
> > Paris
> > > Convention (shorthand version:  that the diluter is using the mark on
> > > "identical or similar goods"), you would like the trademark owner to
> > show
> > > only that someone is using "their word" and leave the burden of proof
> to
> > the
> > > domain name holder to prove their innocence e.g,  not infringing or
> > diluting.
> > >
> > > Such an approach is clean and easy, but it will create tremendous
> > problems
> > > with all the independent Porsche Repair Garages and with independent
> > Oreo
> > > distributors.  Under law, they have rights to use even famous marks
> and
> > even
> > > in commercial settings.   Needless to say, it creates tremendous
> > problems for
> > > free speech by making someone the monitor upfront for what is a
> > legitimate
> > > communicative message using the word "oreo" or "porsche" in it.
> > >
> > > Also, the approach is not consistent with the equities built into
> > current
> > > law. The burden of proof, and the showings, under both sovereign laws
> > and
> > > treaties, rests with the trademark owner.
> > >
> > > Kathy Kleiman
> > >
> > > >
> > 
> >