RE: [wg-c] trademark law & new gTLDs

["Neuman, Jeffrey" <jjneuman@steptoe.com>]

I agree that screening famous marks may give trademark owners greater rights
than what they currently enjoy under existing law, but not for the reasons
you have indicated.

No confusion is needed (in the US anyway) for famous marks to be
protected....that is the whole reason behind the Dilution statute.  Ford is
a bad example because both of those were around well before the state
dilution laws and eventually the Federal Dilution Statute.  A better example
would be....

Kodak.  Kodak, under current dilution could prevent the use of the mark
Kodak in association with the sale of  ....Tuna Fish, for example.  Even
though there would be no confusion between the two, if another person used
the Kodak mark, courts may hold that the use of the mark in association with
the Tuna Fish dilutes the goodwill of the completely arbitrary mark usually
associated with film.  (I realize this is an overly simplistic analysis).

However, proactively screening out famous domain names would prevent the
registration of noncommercial domain names.  This would give TM owners
greater rights, because even under dilution law, a commercial use of the
mark is still required.

Some (and WIPO) have argued that registrants can appeal the screening of a
name through the ADR process and be successful in registering such a name if
it can show a noncommercial use.  The fault in this (besides the
inconvenience and delay) is what if the name is screened out and the domain
name registrant (who was denied a registration) brings an action against the
famous mark to be able to register the name.  Then the TM owner (now
realizing he or she is going to be taken into the ADR process) registers the
domain name (because he or she is not screened out from registering the
mark).  Would there be some measure to prevent this from happening?
Can the ADR board now take the name away from the TM owner and give it to
the person who wanted to register the name in the first place?

Just some thoughts.

Jeffrey J. Neuman
Steptoe & Johnson LLP
1330 Connecticut Avenue, NW
Washington, D.C. 20036
v: 202.429.6206
f: 202.429.3902
jjneuman@steptoe.com


-----Original Message-----
From: Jonathan Weinberg [mailto:weinberg@mail.msen.com]
Sent: Tuesday, August 03, 1999 5:09 PM
To: wg-c@dnso.org
Subject: [wg-c] trademark law & new gTLDs


	I've been off-list for a few days, so I'm going to play catch-up
just a
little.  There's been some discussion of the breadth of trademark law in
cyberspace and elsewhere.  As folks have pointed out before (and as the
WIPO report recognized), a rule that would allow a trademark owner to get
rid of a domain name including a string similar or identical to its
trademark would give the TM owner rights substantially *greater* than those
granted by meatspace trademark law.  That's because meatspace trademark law
gives registrants protection limited to particular goods and services, and
limited to particular locations.  "Ford" is a trademark for automobiles,
and the Ford Motor Company can stop anybody else from using that mark to
sell automobiles.  The Ford Motor Company can also stop other people from
using the mark to sell motor oil - even though that's a different product -
because consumers seeing "Ford Motor Oil" would likely be confused and
think that it came from the automobile manufacturer.  But the Ford Motor
Company can't stop somebody from using the mark "Ford" to identify a
fashion modeling agency (and indeed, there is a fashion modeling agency by
that name).  Trademarks are also limited geographically - Anheuser-Busch
has the exclusive right to use the "Budweiser" mark in the US, but a
different, and unrelated company, has the exclusive right to use the mark
in Hungary.  So a claim that a trademark owner has the right to control
every instance of www.trademarkname.sometld (even though, indeed, there may
be other folks using the same mark in other product lines or other parts of
the world), is a claim for substantially more expansive rights than that TM
owner has in meatspace.

	OTOH, this isn't the trademark owners' fault.  It's valuable that
consumers not be confused when it comes to the origin of products, and the
fact is that consumers may be confused by a www.ford.com not in the hands
of the Ford Motor Company (although, come to think of it, other consumers
might be confused by a www.ford.com not in the hands of the modeling
company, and other (Hungarian) consumers might be confused by a
www.budweiser.com that *is* in the hands of Anheuser-Busch . . . ) The
problem is that consumers today tend to assume that www.foobar.com is
operated by whatever company named "foobar" they happen to be thinking
about at the moment.

	What's the answer?  You got it - MORE gTLDs.  In meatspace,
consumers cope
just fine with the fact that there are a lot of businesses named Acme.
They know about the various businesses; they don't expect any particular
Acme to be the particular one they have in mind; and they don't get
confused.  If consumers learned that there were a lot of different domains
on the web named www.acme.sometld, they wouldn't expect any particular one
to belong to Warner Brothers (which has a variety of U.S. registrations for
"acme") or to Jef Poskaner (who in fact owns the acme.com domain), or the
Acme Glass Company, or anybody else.  The mere existence of the domain name
would no longer be confusing.  Further, we can achieve this result without
regard to whether the new TLDs we add are "chartered," as Kent suggests, or
general-purpose.  (Now, if I have a domain named ford.biz, *and* I use
www.ford.biz to sell cars, then plainly people will be confused no matter
how many gTLDs there are.  That's trademark infringement.  But that's a
different case.)

Jon 


Jonathan Weinberg
weinberg@msen.com