Re: [ifwp] Re: new iana draft bylaws

["Martin B. Schwimmer" <martys@interport.net>]

In response to Mr. Williams:

1.  I suppose you mean "accepted fact" and not "excepted fact."  I stand by
my argument that the number of trademark registrants who have "abused" NSI
is a subjective unverifiable number and that the number of trademark
registrants who have been abused by Domain Name squatters is a subjective
unverifiable number, and that to state that that what is one's opinion is
an established fact is not particularly persuasive.



>>
>> 2.  On Whether  Domain Names Function As Trademarks
>>
>> The Trademark Act of the U.S. defines a trademark as "any word, name,
>> symbol or device, or any combination thereof," by which a person uses to
>> identify and distinguish his or her goods or services.
>
>  this is NOT an accurate definition of a Trademark technically.  Read
theLahnam
>Act in its entirety for further reference.
>

I would not want to leave you with the impression that I was being
misleading.  I was quoting from the Lanham Act when typing in that
definition and had abbreviated so that we wouldn't put readers to sleep.
The full definition of a trademark from Sec. 45 of the Lanham Act:

The term trademark incldues any word, name, symbol or device, or any
combination thereof -
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies
to register on the principal register establsihed by this Act, to identify
and distinguish his or her goods, inclduing a unique product, from those
manuifactured or sold by others and to indicate the soruce of the goods,
even if that source is unknown.

The term Service Mark means any word, name, symbol, or device, r any
combination thereof -
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies
to register on the principal register establsihed by this Act to identify
and to distinguish the services of one person, including a unique service,
from the services of others and to indicate the soruce of the services,
even if that source is unknown.  Titles, character names and other
distinctive features of a radion or tv program may be registered as service
marks notwithstanding that they, or the progrmas, may advertise the goods
of the sponsor.


Now what did I omit from the definition that mattered to the analysis?



>> Now you put forth the proposition that:  "A DN is s "String of characters",
>> and has little relationship to a Trademark Name."  I believe that the
>> existence of yahoo.com, source of YAHOO brand services, netscape.com, where
>> you can access NETSCAPE brand services and aol.com, where you can access
>> AOL brand services, are obvious examples of a connection.
>
> A connection yes, but not a trademark per se, unless the Trademark holderhas
>registered these domain names as such.  IF not than they have no claim
>to anyone else using these "Strings of characters" as a DN form a Trademark
>infringement standpoint legally.

A trademark owner is not required to have registered its trademark as a
domain name in order to protect against infringement or dilution.  See the
cases involving CARDSERVICE, PANAVISION, INTERMATIC, TELETECH, LA OPINION
and others.  Are you citing law?  You used the word "legally."




>
>> I also invite
>> you (and the other readers) to look at, for example, page 70 of the August
>> 10 issue of COMPUTERWORLD magazine (accessible at computerworld.com), which
>> identifies 38 companies in the advertiser's index and their domain names.
>> In 37 0f 38 of these, the domain name is IDENTICAL to the house mark or
>> house acronym.  The one exception is InterSystems, which used intersys.com.
>
> So?
>
>>
So  that is example how in the computer field companies to utilize their
housemarks as domain names, thus solidifying in the public mind a
connection between a trademark and a domain name.  Thus people start to
assume that they can find a company on the Web by utilizing its trademark.
It creates an expectation that xyz.com belongs to XYZ company.





>>>
>> Your statement that businesses use clever DNs to "highlight" belies your
>> (and the Mueller/DNRC) argument - using a symbol to highlight a business is
>> using a symbol to distinguish your goods or services - it is using a
>> trademark.  That is the law all over the world.
>
>  Yes bur only if that particular "String of Characters" is registered as a
>trademarksuch as IBM.COM is.  Otherwise no.  Strict observance of
Trademark law
>must be observed here to have an honest conclusion to any argument regarding
>abuse form one party or another with respect to a particular DN.
>

Do I understand your position correctly that if a third party utilized
ibm.com to sell computers on the Web that IBM would have no legal recourse
unless it owned a trademark registration for IBM.COM?  Do you beleive that
this is the law or do you want this to be the law?  Because it is not even
close to being the law.




>>
>>
>> 3.  First Come First Served
>>
>> Domain Name holders did not come first.  We don't have a concept that if I
>> started advertising COCA COLA on television before Coca Cola did, I get the
>> rights to sell Coke on TV because they "didn't wake up to the potential of
>> TV before I did."  your perspective on who is first is a bit
>> internet-centric.
>
>  Yes it is because Trademark law requires that if Coca-Cola wants to protect
>itsmark in the internet DNS it should have registered the possible
variations of
>its
>mark in the form of a DN.  For instance, coca-cola.com, cocacola.com,
>cocacola.org, coca-cola.org, cocacola.net, coca-cola.net, coke.com, coke.net,
>coke.org, and so on.  If they didn't than they have no legal claim to these
>DN's as a legal infringement to their Trademark or brand.


This is not close to being the law and is pretty extreme as a policy
recommendation as well.  How many of the readers out there agree that
coca-cola should have to registera ll of these variations in order to stop
someone from using these domain names?





>