RE: [wg-review] [DNDEF]

["Eric" <eric@springbreaktravel.com>]

In the US criminal justice system, an important part of determining
someone's guilt is determining the INTENT of the offender.  In regards to
the TM issue perhaps this should be considered.  For example, let's look at
a HYPOTHETICAL case.  Suppose that someone registers the trademark "Nikon".
Nikon then registers a domain name nikon.tld.  Meanwhile, John Nikon, who
owns the Nikon Consulting Group, registers the domain name
Nikonconsulting.tld.  Should Nikon cameras make a claim against Mr. Nikon
and his consulting firm, is it reasonable to expect that the Nikon Camera
company should have to prove the Mr. Nikon's INTENT was to use their
trademark to further his business interests?  They would have a strong case
should someone register nikoncameras.tld.  Parties could protect themselves
by showing that they have been in business for x number of years, show that
they were not selling camera equipment etc...

Also, and I think this is important, as more domain names become available
it is likely that the domain itself can show that their was no intent to
infringe on trademark issues.  For example, in the case of the nissan
automotive company, if the they had registered nissan.auto and someone else
registered Nissan.computer there would be a clear separation and little
basis for any trademark infringement claims.  (Notice that I said "little
basis" and not "no basis")

Ultimately there needs to be a group of intelligent, unbiased individuals
that can examine the merits of any case brought before them.  Is this what
the UDRP is for?  Perhaps each constituency could nominate a representative
to sit on a dispute resolution board.  Nominees would be confirmed by the
@large.  It is possible that 12 @large members could serve as a jury when
such issues arise.  All of these are just ideas.  I don't know enough about
the system to know what is already in place but thought I might hit on
something new.  As to whether any of this will work, I will defer to those
who know more about the system.

-----Original Message-----
From: owner-wg-review@dnso.org [mailto:owner-wg-review@dnso.org]On
Behalf Of igoldste@mum.neric.org
Sent: Friday, January 19, 2001 9:00 AM
To: Philip Sheppard
Cc: wg-review@dnso.org
Subject: Re: [wg-review] [DNDEF]


I believe that by substrings "United Computers" would not be entitled to
"unitedcomp.tld" or even "nite.tld" (from uNITEd).

The issue you raise might better be described as superstrings (This is
an example of where we need translations into other languages for full
participation).

Philip, you ask "If coke.com and cokelite.com would get protection, why
not drinkcoke.com and litecoke.com...?" If we allow the holder of a Mark
(Registered, Trade or Service) to have control over superstrings of
their Mark we are going down a dangerous path. One that may be
restraining both commerce and speech.

Regarding commerce, "Red Dog" is registered in Canada by Molson
(TMA437884).  If they are given control over any string containing "Red
Dog", then would "Red Dog Bar and Grill" be allowed to register a domain
using their name?

Regarding speech, would the Mark holder be allowed to block
"dont-drink-red-dog-and-drive.tld"?

While the Mark holder should have a right to protect it's mark from
confusion, I do not feel that it should be given greater rights than
anyone else for non-confusing superstrings.

--Ira Goldstein

On Fri, 19 Jan 2001, Philip Sheppard wrote:

> Constructing rules for IP protection is fraught with difficulty. The =
> objective I would suggest is to create a DNS with low consumer confusion =
> without allowing unfair capture of domain names by trademark owners.
>
> Members of this group have proposed identical name protection only =
> 'unitedcomputers.com' but not parts or sub-strings. I agree that a name =
> that splits into generics 'united" and 'computers' and losses contact =
> with is original form should not have protection.
>
> But to then say no substrings is a little too purist and this will be =
> subverted by those who wish to be fraudulent or confusing.=20
>
> If coke.com and cokelite.com would get protection, why not drinkcoke.com =
> and  litecoke.com,
> If pampers.com why not babypampers.com?
> If sony.com why not musicatsony.com?
>
> Surely what is important is the intent of the domain name holder. Are =
> they in good faith or bad faith? Do they seek fair DNS presence (that =
> may be coincidental to the names of others) or do they seek to pretend =
> to be what they are not?
>
> Philip.
>
>
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