File for a TM, get a domain name free!

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

>If they claim that my suggestion isn't enough, that the trademark office
>should in fact have _complete_ control in all domain naming, I'll
>pleasantly suggest otherwise, and that one thing that they're attempting to
>achieve is covered in appropriately minimalist form by this plan: domain
>names that only legit trademark holders can get. 

When discussing registration requirements and dispute resolution mechanisms
for a class of domain names apart from non-commercial uses, an alternative
way of looking at it would be: domain names that bundle with trademark
rights - in other words, the act of applying for a specific type of domain
name is also a claim of trademark rights in that term.

When someone files for a trademark today in the U.S., they make one of
three claims - I own this mark because I have already used it- I will own
this mark because I intend to use it - or I own this mark because I own (or
have applied to own) a registration for this mark in another country.
Those statements are subject ot verification by the trademark office, but
in the end, the owner, upon verifiyng thsoe claims (and after examination
for prior rights), then is the presumptive owner for that mark for the
goods and services specified.

Outside the U.S. there are different standards but there is still a claim,
specifiction and examination of some type, leading toward a registation,
which in the end creates a legal presumption of ownership.

Put aside pre-internet trademark interests for a second - think about the
Internet businesses of the future - most countries of the world do not
recognize use as a basis for acquiring trademark rights.  Businesses will
not be able to rely solely on their use of a domain name to protect the
goodwill in their domain name.


If the domain name owner wants rights to arise from its use in a domain
name, because it wants the certainty that it will be free to use its domain
name in a certain jurisdiction (i.e. a third party watching amazon.com's
success and rushes to file a trademark application for amazon.com in
Germany (before amazon.com does) - which, while undoubtedly an act of
unfair competition, may not be a winnable case for amazon.com, and could
have the effect of amazon.com being unable to expand to Germany under that
domain name .  Also, the domain name owner wants to protect its rights
against others (i.e. a pirate sells amazon.com merchandise on the Net or
off in Germany) - then presently, amazon.com has to file for a trademark in
Germany (or it only be left with an expensive and hard to win unfair
competition action in Germany).

I think that a harmonization of DNs and TMs in the form not of a .tmk
domain but a trademark-claim domain (the act of filing for a DN is the act
of filing for a trademark), could make life easier for the amazon.coms of
the world.  It is true that registrars are not equipped to act as legal
right allocators and adjudicators so that suggests two broad approaches -
(1) the registrar works with an appropriate administrative/tribunal body
(and I do not have a specific one in mind) or (2) registrars stick to
non-trademark claim domains.








I guarantee that
>cybersquatters will not be able to obtain a .tm domain name. They'll be
>able to get anything else, but not .tm.
>
>I note that if the trademark office really wanted to, they could walk right
>up to the registrars and say, "ok, we'll take responsibility for providing
>you with legit .tm registrations," I'll bet you five cents government
>wheels would turn and, if it made sense to them, it would happen.
>
>(So far as I know, nobody said that either party _can't_ do that...)
>
>>Would its impartiality not be open to some doubt?
>
>Uh-huh. I'm not sure how it would work legally.
>
>>Domain name ownership should not presupppose or require a prior TM
>>registration. What about State TM's or unregistered TM's or ....
>
>I disavow any evidence that I know what I'm talking about when it comes to
>trademarks. I'm just trying to set up a process.
>
>-m
>
>>
>>Regards
>>
>>David Flint
>>MacRoberts Solicitors
>>Glasgow Scotland
>
>Michael Brian Bentley   bentley@crenelle.com
>Crenelle Inc.   Mac OS Network Applications Developer   Chicago IL USA
>Voice (773)-508-9009   Fax (773)-465-2399   Web www.crenelle.com
>
>
>
>