[wg-c] Avery-Dennison decision and new gTLDs

[Milton Mueller <mueller@syr.edu>]

The US Circuit court has reversed the Avery decision,
and the opinion has some relevance to this committee,
in that it touches on the legal status (withiin the US)
of gTLDs.

The Court thought it was significant that
the registrations were in .net rather than .com.
Quoting the court:

"In the instant case, Appellants registered the TLD
<.net>, rather than <.com>, with the SLDs <avery> and
<dennison>. As we recognized in Panavision, <.net> applies
to networks and <.com> applies to commercial entities. 141
F.3d at 1318. Evidence on the record supports this distinction,
and courts applying the dilution cause of action to domain-
name registrations have universally considered
<trademark.com> registrations. See Brown, Note, supra, at
251-54 (discussing cases); id. at 262-63 (addressing the
<.com> versus <.net> distinction). Although evidence on the
record also demonstrates that the <.com> and <.net> distinc-
tion is illusory, a factfinder could infer that dilution does not

occur with a <trademark.net> registration. This genuine issue
of fact on the question of cybersquatting dilution should have
prevented summary judgment for Avery Dennison."

Unfortunately most judges do not seem to understand the
arbitrariness of the special status of dot com registrations
and how easily that could be changed by the addition of new
gTLDs.

The court also clarified the nature of commercial use in a
way that is beneficial to ordinary domain name holders:

"Appellants do not use trademarks qua trade-
marks as required by the caselaw to establish commercial use.
Rather, Appellants use words that happen to be trademarks for
their non-trademark value."

The most important aspect of the opinion however seems to be
Avery-Dennison's failure to prove "famousness."

http://www.ce9.uscourts.gov/web/newopinions.nsf/f606ac175e010d64882566eb00658118/04a35134bff267ca882567d60065ee63?OpenDocument