RE: [wg-c] Retraction of previous proposal, re, revisted

["Roeland M.J. Meyer" <rmeyer@mhsc.com>]

Yes and yes, but not the way you stated. I don't think I need to
explain, to an IP attorney, that a trademark can be any qualifying
string and that if that string is also used, intentionally, by the
trademark holder, as a TLD, that they own/operate/license, then that TLD
becomes pretty well protected. I think we have enough case-law that such
a statement would hold an argument, maybe even an actual case?
Especially, if the TM holder runs that TLD, as a chartered TLD,
consistent with the terms of the accompanying trademark.

At that point a TM holder doesn't need ICANN to defend the "mark".
However, while this may allow a TM holder to prevent conflicts in
multiple-root systems (keep someone ELSE from using it), it doesn't get
one into a particular root-zone.In short, it's a defense, albeit, a
rather decent one.

Yes, I have checked this with my attorneys. So have others. The issue is
NOT one of trademarking a domain name, it is one of using a trademark as
a TLD, or domain name. There is a not-so-subtle difference. In
mathematics, this is similar to a trap-door function. It works one way,
but its converse doesn't. Of course, as in all other things legal, this
is simplified and there are a whole slough of other conditions that need
to be satisfied, check with US PTO.

However, I believe that, once a TLD is bound to a "mark", it is not so
simple to unbind it. A contractual requirement, to release the TLD, once
it is so bound, may not, in an of itself, be binding. If it is, it may
place the "mark" at hazard or it may unbind the TLD in the first place.
This needs a bit of exploration. Contract law gets a bit tricky here.
Yes, it could be worded as a license, but what if the new operator
doesn't follow the TM's charter? Would that constitute dilution? Could
the TM holder withdraw their license and sue the new operator? More
importantly, file for injunctive relief and have the TLD placed on hold
until resolved in court ( guaranteed to be a many years-long case).

I believe WEB is trademarked.

[Note: I am NOT a Lawyer (IANAL) my legal opinion has NO STANDING in
court, as I am NOT an officer of the court. No statement made herein
constitutes legal advice under ANY circumstances. The reader is directed
to seek the advice of competent legal council in all matters of law.]

> -----Original Message-----
> From: owner-wg-c@dnso.org [mailto:owner-wg-c@dnso.org]On Behalf Of
> Robert F. Connelly
> Sent: Friday, August 13, 1999 1:24 AM
>
> At 23:50 12-08-99 -0700, Roeland M.J. Meyer wrote:
> >US PTO. Reason: ICANN is based in US and listens to US law first and
> >foremost or California GC gets instructed to yank their
> charter, by the
> >feds.
>
> Dear Roeland:  Do you believe the USPTO has issued a
> Trademark for a domain
> name in the past?
>
> So you expect it in the future?
>
> Regard, BobC
>