Re: [wg-c] Retraction of previous proposal

["Kevin J. Connolly" <CONNOLLK@rspab.com>]

Professor Mueller:

I am well familiar with the Lockheed Martin decision.  It is inapposite to 
the proposition that a registrar's scrutiny of a domain name is in any way 
"extralegal."  There is nothing in the Skunkworks decision which says 
that a registry MAY NOT refuse registration to a domain name on trademark 
grounds.

Your bald assertion that domain names and trademarks are so very different 
is symptomatic of the technical community's insistence that a domain name 
is just an address, devoid per se of intellectual property content.  I can assure 
the readers of this list that the NTIA does not subscribe to this proposition.  On 
the contrary, Becky Burr has concurred in my observation that whatever a domain 
name is, it has _some_ measure of intellectual property content, and any system 
of domain names which tries to ignore that reality deserves to wither on the vine.

If we don't find a path through this morass, then the TM community will police 
their marks by seeing to it that no new gTLDs are added to the roots.  They have 
taken this approach in the past and unless their fears are assuaged, they will do 
it in the future.

Hence I return to my old point for Mr. Langston:  how do we get from the well-known 
rules requiring TM holders to police their marks to the conclusion that a registry may 
not filter proposed registrations against an exclusion list?  Really, this is new learning 
to me, and I am truly anxious to learn more about it as well as to discover the 
provenance of this position.

KJC

<usual yada about the trailer>

>>> Milton Mueller <mueller@syr.edu> 07/29/99 03:51PM >>>
Kevin:

Kevin J. Connolly wrote:

> The naked proposition that TM holders have
> to pay to protect their marks would suggest,

TM owners are responsible for the costs of *policing* their marks. That is,
registries and other parties have no affirmative duty to look out for TM
violations. It is up to the owner to identify them.

> the PTO should never reject an application to register a mark on the
> ground that a prior registration conflicts with the proposed registration;
> i.e., the PTO publishes everything in the Gazette and if you snooze,
> you lose.  Yet I seem to recall having heard that the PTO does in fact
> peruse marks offered for registration to see whether they conflict with
> existing marks.

Registering a domain name is not the same as registration of a trademark. A
trademark registration confers property protection; a domain name registration
simply secures a unique address. Whether a domain name conflicts with a
trademark depends upon how it is used. This cannot be determined at the time
of registration. If you want the highest level legal ruling on it, refer to
the Lockheed Martin decision: "contributory infringement doctrine does not
impose upon NSI an affirmative duty to seek out potentially infringing uses of
domain names by registrants."



**********************************************************************
The information contained in this electronic message is confidential
and is or may be protected by the attorney-client privilege, the work
product doctrine, joint defense privileges, trade secret protections,
and/or other applicable protections from disclosure.  If the reader of
this message is not the intended recipient, you are hereby notified
that any use, dissemination, distribution or reproduction of this com-
munication is strictly prohibited.  If you have received this communi-
cation in error, please immediately notify us by calling our Help Desk
at 212-541-2000 ext.3314, or by e-mail to helpdesk@rspab.com
**********************************************************************