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Username: LegalEagle
Date/Time: Mon, December 31, 2001 at 4:25 PM GMT
Browser: Microsoft Internet Explorer V5.5 using Windows NT 5.0
Subject: very long response!

Message:
 

 
Phew! OK - I’ve tried to address your points, one by one. My sincerest apologies in advance for the sheer length of it all !


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Can any lawyer explain why trademarks should have priority over people for these words? Please explain why this does not abridge peoples right to use these words.
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First of all, my response is based on my opinion of case law and common law - i.e. this is what courts and arbitrators have generally ruled in the past. Secondly, my answers don't reflect what I believe to be morally or ethically right or wrong. Thirdly, I am simplifying some very complicated principles, so bear with me if/when I make sweeping statements, as there are invariably exceptions to every rule.

Specifically in regards to your question: Ordinarily Trademarks do NOT have priority over generic words ... *if* (and this is a rather significant caveat), a 'reasonable person' (and in some courts: a significant number of them too) would not ordinarily mistake that word as intellectual property that belongs to a particular company. If someone was to type in Ford.com for instance, Ford Motor Company may well argue in court that the public would expect that the name 'Ford' is owned by them and that they would go to their site, not a site dedicated to (water) Fords, and especially not someone else passing themselves off as Ford Motor Company. However, it may be much more difficult for the challenger to convince a court or arbitrator that 'sex' would be mistaken for that challenger's mark or brand.

So why have trademark owners been given priority during Sunrise?
As a policy, Afilias has decided to give first priority of ownership to trademark owners, and as we have seen, many trademark owners have jumped at this opportunity (many have not, also). I agree that there's a lot of companies out there that own trademarks that cover almost every conceivable word (from Aardvark to Zulu) but (rightly or wrongly) Afilias made a blanket rule for first-chance rights to a name, that would cover all trademarks and design marks. Perhaps it occurred to them to exclude common words, but then perhaps the likes of Apple et al. were overly influential on this decision. Whatever the reason, it is now policy and to overturn this would involve impeaching ICANN itself (improbable if not impossible - but that's not my area of expertise!). Certainly, a lot of companies have exploited this particular TM rule to obtain premium names.

However, given the fact that Afilias (with ICANN's permission) could make whatever rules it wanted as to who actually ends up owning that name (during the Sunrise and Sunrise Challenge periods only), that ultimate Sunrise registrant is still not and never will be impervious to common and statutory law ... let me explain.

Now that the Challenge process is over, those lucky enough to get generic (inter alia, non-famous) names after Sunrise are reasonably safe in terms of no one being able to successfully challenge them in the UDRP (my opinion). Now that trademark owners don't have the protection of the Sunrise Challenge process, a later challenger would have a rather onerous task proving that the domain name is rightfully theirs. As for squatters that received names based on fake trademark information, time will tell whethey they can still be challenged in the UDRP (or similar process), but my guess is that they will probably onsell the names to other parties before action can be taken (I've seen this happen a lot).

Now, armed with this knowledge, I can give you some advice for free :) (I believe) Neulevel's STOP system allows people who applied for a more generic word to have a pretty good chance of holding onto it, despite there being a legitimate trademark holder who might enforce STOP arbitration. This is because, based on Neulevel's policy and less black-and-white criteria than Afilias, (I belive) you could put in a pretty good argument that you are using radio.biz for a site about radio even if another company somewhere out there has the trademark for the name radio. This is because it's not particularly famous (at least where I'm from, another issue that I won't touch at this time).

'Radio' may very well be owned by someone somewhere in the world, but if that reasonable person/recognition test fails, then (I believe) you could defend your registration quite successfully.

Another question I've been asked : After the Sunrise Process, could a non-trademark owner take a trademark owner to court/UDRP over a generic name, claiming that common law affords the respondent no more rights to a name than the challenger. The answer is no, I don't believe this would be successful. If you don't subscribe to the theory that trademark owners have more prima facie rights to a non-famous generic name than non-trademark holders, then certainly one could successfully argue that they both have *at least* equal rights to the name. And by Afilias' policy, the trademark owner simply 'got there first'.

So, given that purported common law rights to a generic, non-famous name do not necessarily favour trademark holders, what gave Afilias the right to give trademark holders first priority? Simply the right of a company to make its own contractual terms; certainly, many netizens would argue that this was not 'fair', but as long as Afilias were not breaking the law, and applying their policy fairly once it was made, (I believe) they were well within their rights and subsequent challengers would have very little recourse against them, when the challengers have no more rights than the final successful sunrise registrants.


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Also please explain why small business, without trademark, cannot use these words - because a trademark took it before them?
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They can use non-famous generic words that other companies might have, without a trademark. If they were lucky to get a name after the Sunrise period, or they were to purchase the domain name at any stage from a successful Sunrise registrant, they would have full ownership rights to it.


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Why is both these facts not a violation of First Amendment?
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Once again, it was a policy decision to allow trademark users first access to names. ICANN might very well say that, as a private sector corporation, it made its decision based on a consensus of its constituency which is comprised of the "Internet's business, technical, academic, and user communities" and that all parties had the right to voice an objection over this policy when it was first formulated (whether this would be true or not, I'm sure you know the answer!) Even then, as a non-public and non-government agency, it does not have to answer to public policy obligations, and therefore once again, has the rights to make decisions as it sees fit. Whether ICANN should be more government regulated is another issue I won't address here.


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Small businesses cannot now use their name - it is bound to conflict with a trademark.
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Once again, not necessarily. If it's a generic name, they are afforded the rights of using that name as long as it does not obviously conflict with a famous mark. They just have to get their hands on the name of course!


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How can a business - in the business of making 'Business Forms', get the trademark of 'business'?
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Once again, without knowing the specifics of this mark, I'd say that it is a design mark, and therefore quite possible, if not very difficult in most countries.


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Afilias, Neulevel and ICANNs UDRP is fatally flawed. If a trademark was awarded for graphics - is it not an abuse, overreaching trademark to use it as a word? It was NOT awarded for the word, probably not allowed - else they would likely have got it as word also.
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In sunrise, valid trademarks after October 2 2000, were accepted carte blanche. In UDRP, my experience is that marks (including design marks) are all assessed on criteria that include inter alia, common meaning, prior use, celebrity etc. etc.


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As trademarks (in all countries I looked at) have to be distinctive from others or declared invalid - I cannot see how the word  business  was allowed.
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I do not know the Indian trademark's office criteria. Perhaps you had better ask them? One theory is that because the word was in English, which is an 'associate' language of the country, not a primary one, then the criteria was not as strict. I know if I was desperate to register the design mark 'busines', with my very limited design skills I'd certainly design a mark the likes of which no trademark office has ever seen before!


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This is why Sunrise (trademark) domains taken cannot show the obvious descriptive use e.g. computer.info cannot show computers - but can show socks, as  computer  is trademark of a socks business. Am I right?
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Actually, this is probably your most interesting point. We all know that it is more than likely that computers.info will be a site about computers. Yet trademarks are only supposed to be used by their registrants for the class of product or service in which it is registered. So how will the party that registered computers.info get around that one ... ?

Most probably registrants of common words would be the ones that would want to draw a very strong demarcation between the use of the trademark during the Sunrise period (which doesn't really amount to public use of the mark anyway as it is private transaction that doesn't involve any of the trademark holder's customers) and the use of a common word as just that - a common word - after Sunrise.

The sunrise criteria was very cut and dry: TM owners had first access to names, and there was no prohibition on what the trademarked word could be, what class(es), expiry date, etc. Nor did it address what registrants could do with the domain names - in practice, even if the trademarks themselves are prohibited to be used for a specific class, no doubt for generic names that's *exactly* what they will be used for.

I'd agree with you if you think that trademark owners are having their cake and eating it too by using this line of argument. But they may only use it of course, if they are actually challenged on their use of the trademark for this purpose, in a court. Traditionally, litigation is only really instigated by existing trademark holders against defendants who are alleged to infringe on the plaintiff's trademark rights. I've not heard of a case of an individual bringing civil action against a company for 'overstretching' their trademark in this manner. And even if you were to win, the most is you could receive is an injunction to stop the registrant from using the trademark in this way, in which case they might revert to 'common name mode'; you certainly wouldn't receive the domain name yourself. Possibly registrants would protect themselves by registering the whole domain string (i.e. www.computers.info) subsequent to winning the name, or just transferring the name to a subsidiary company.

This is an interesting issue, but in practice I think you wouldn't be able to stop a company from using their sunrise-gotten trademark because they're using that site for another class. It'd be interesting though to see if someone tries to do this.


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Another thing - How can they have a hope in hell of stopping other businesses, making business forms, from using their mark?
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If another company is passing themselves off as 'M/s. Business Forms', by using the 'BUSINESS' logo which is very similar or an exact replica of the original design mark, then the latter company could have legal recourse against the former company.
There are usually strong trademark theft laws covered by statute in most countries, and they have very hefty penalties, and are often enforced quite strictly (depending on where you are; some Asian countries are notorious in the enforcement department, which is why you have a lot of software pirating going on there, etc.).


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You cannot use registered mark without getting approval for service or goods can you? It is an abuse of the mark.
It is easy to use  first use  principle, using date of mark - is it not?
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Sorry, not exactly sure what you mean by these questions.


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Sorry, believe you are wrong. If that is the truth, the intention was fatally flawed. I believe it was bull* propaganda - please see end of this page why (*).
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You reasons for such "bull propaganda" as you call it, have merit in equality, but - rightly or wrongly - most legal systems viz. domain name IP would favor the intellectual property owners in those particular examples you highlighted for various reasons that I won't go into here.


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(Of course, "Everyone hates cybersquatters", so this is probably how Afilias and Neulevel managed to get ICANN to side with the trademark owners so readily).
Sorry, believe you are wrong. Was ICANN not already on the side of trademark owners first, UDRP, and it was the reason for waiting years for new TLDs.
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I have no idea about that one.


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Are you seriously telling me, that if you were asked what problems you could see coming, that you would not have spotted most of them?
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Personally, I would have excluded common words from the Sunrise period. But once again, Afilias in not doing this, was not acting illegally.


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It appears a requirement of ICANN accreditation that UDRP of some description is essential. It is a fact - trademarks have been given priority over people and small business without trademarks. A violation of First Amendment.
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Once again, it is my experience that this is not true for all non-famous generic words. Most of the cases my office deals with are obviously squatted, trademarked words, and in fact just looking over all the WIPO decisions in the last few weeks, the vast majority are some derivative of famous marks. However, where non-famous generics are involved, the complaint was almost always denied (except where there were other mitigating factors). Over the past few weeks at the WIPO, these names included:

scorpions.com
lava.com
peepers.com
grow.com
powerstation.com
Donna.com
matress.com
cream.com

Challenges for these names were all denied. Without going over each one, I'll highlight the last (cream.com) which the original owner kept despite the challenger, the band 'Cream' owning a trademark (albeit after registration). Also, from memory, 'Donna' was a trademark (dating back to 1980) for a magazine which was not successful in its challenge; the responded successfully argued that the word Donna meant lady in Italian and was therefore a common word.


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If people rights are being abused - I call it corrupt - what would you call it?
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No comment there :)


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Morality is only half my argument - the Law is the other half.
Sorry, with respect - you have not answered the question. It is illegal - is it not - for trademarks to use mark to dominate over others?
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It's not illegal, when the law permits it in certain circumstances :) It may not be statutory law, but caselaw precedent dictates that trademark holders have rights over certain names in certain circumstances.

Overreaching trademark rights is usually something that is dealt with in civil court where the plaintiff is a trademark holder whose rights have been infringed.

re: 'Domination': when a private company (Afilias) has made up its mind as to who gets first choice at names, they're perfectly within their rights to. But (once again) that does not preclude nor indemnify that new owner's rights to that name. If another company has a 'better' claim to that name then that company is entitled to challenge the current owner. However, (it is my opinion) that this is unlikely to win if it is a generic name and *not* a reasonably famous mark.

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e.g. How can Apple Computers be the only one to be allowed to use their mark - out of thousands of others using word 'apple'?
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It's an good question. Apple would probably argue that its mark has greater celebrity, but they'd still be pushing it if someone else with the trademark (particular if it pre-dated Apple's) was the owner first. If the respondent did not have any trademark whatsoever, then it'd be difficult for them to prove that they have rights to that name (the average observer might say 'well it's obvious that this person was a cybersquatter' and it would take some considerable explaining to avoid this 'reasonable' judgement). However, if the first registrant was say, an orchard owner, then I'd say that they had a pretty good case. Certainly, this would be a rather controversial case, and I know I'd probably just advise Apple to buy the original registrant out, to avoid negative publicity.

I hope all this helps to clarify my own qualified opinion re: the legality of the whole thing. To put in summary my main point, Afilias had the legal right to give trademark owners first rights to names (rightly or wrongly), but this does not diminish any legal rights that the registrant or other parties may have to the name subsequent to Sunrise and the Sunrise Challenge. After Sunrise, trademark holders may very well have no more rights to non-famous generic names than other people with legitimate interest in the same name, other than possession which was legitimately gained in a private contract with Afilias.

 


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