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Username: LegalEagle
Date/Time: Fri, January 4, 2002 at 11:37 PM GMT
Browser: Microsoft Internet Explorer V5.5 using Windows NT 5.0
Subject: not quite ...


Hello Antipathy

I've detailed my opinion on this previously, but briefly again ... will probably be used to point to a website that sells computers, even though the class of products/services of the TM used to register the domain name with Afilias, does not include computer products.

In my opinion, Litigation against the owners of would not succeed for the following reasons:

Afilias made its own contractual terms for Sunrise - and that was that TM holders have first priority for all names. This transaction was a private one between Afilias and trademark holders and those TM holders that registered domain names still did not use their trademark to sell (to any class) - they used it to buy something (not something that trademarks are used for at all, really). At any rate, the registrants did not misuse their trademark in commerce.

As soon as the company starts to use the domain for a website, the domain will be utilised in one of two main ways:

1. If the domain is a non-generic word, the domain will still be used as a trademark and the classes that apply to it, will still be valid.

2. If the domain is a generic word, the owners will probably use it as a generic word, not as a trademark; They can do this because in domain name caselaw, trademark holders do not have special rights to generic words unless they're are particularly famous ones (in which case the name will probably be used as 1, above). For these generic words, the TM owners just 'got there first' under Afilias' Sunrise policy.

The successful registrants may even try to register computers under a different class, but they may have a much harder time doing so under most trademark registries' rules (because they prohibit generic words for the class in which they apply).

This however can be quite simply circumvented by registering the name plus the extension ( for almost any class you wish - because the extension ends up making the text unique. Incidentally, many companies go to great lengths to trademark and register their URL, but in actual fact, with domain name address trademarks - registered or not - past use of the actual domain has greater priority than the date of trademark registration of the same name, evidenced by the effective date of domain registration. This is why I can't go out and register the trademark '' and when it has been registered, claim that I own that domain - despite the fact that the current owners of that domain haven't ever registered the trademark ''.

By the way, a trademark can be used by anyone at any stage in business but exclusive and more comprehensive legal protection is granted to registered trademark holders Afilias of course only allowed nationally registered TM holders to apply during Sunrise.

Hope this helps.


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