Re: [wg-c] Retraction of previous proposal

["Rita M. Odin" <OdinR@arentfox.com>]

While the mere registration of a conflicting domain name does not per se constitute infringement, the use of a conflicting domain name can infringe or dilute a trademark/service mark.  

Whether or not property rights attach to a domain name is strictly dependent upon the manner in which the domain name is used.  If someone uses the domain name in a trademark/service mark sense (i.e., it is used in the advertisement of goods/services by displaying it, e.g., on the website) then it becomes a trademark/service mark.   Clearly, domain names and trademarks/service marks are closely related, especially in light of the method of use employed by many business on the Internet.

>>> J. William Semich <bill@mail.nic.nu> 07/29 4:43 PM >>>
I agree with Milton;

Registration of a domain name *at the moment* does not automatically confer
property protection, nor does registration of a trademark automatically
confer domain name protection. The DNSO process should not change that
practice (although some may believe otherwise).

Bill Semich
 


At 03:51 PM 7/29/99 -0400, Milton Mueller wrote:
>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."
>
>
>
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