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Username: LegalEagle
Date/Time: Sat, January 5, 2002 at 10:53 PM GMT
Browser: Microsoft Internet Explorer V5.5 using Windows NT 5.0
Subject: Garry ...

Message:
 

 
> So books can only be written by the famous and people / small
> business cannot use what words they wish.

Of course not and commonsense should always previal. Trademark violation ultimately comes down to issues such as passing off or riding on the coattails of a trademark that I don't own for my betterment. If I were to write a book called Apple about Apples, then no problem. If I were to write a book called Apple and have a picture of an Apple Macintosh on the cover, then problem.

> People do make unauthorized books about places, people
> and businesses you know.

Yes because they are probably non-famous generic words or common law trademarks.

> What about all these other JT trademarks in the USA and
> the rest of world?

If they were as famous as Japan Tobacco, especially if that mark was well known in Japan, then they would have won the case if they were the first to bring it to the WIPO. Other factors would have come into play if the mark was not so well known.

It's important to note that probably one of the reasons why a name like JT.com was registered by the respondent in the first place is because the term JT (whether through a style or a wordmark) had been brought to notoriety at a great deal of expense by the complainant. One of the criteria for a URDP challenge to fail is the justified right of the respondent to a domain name. Such a right can be proven by just describing a simple business idea or usage for the name. In this case, this was not even asserted by the respondent through their failure to respond.

Let's say that JT was a well known abbreviation for say, Japanese Turtles and the respondent was a marine biologist, then this assertion would have made the case a lot more complicated, if not completely foiled it, for the challenger.

> The use of the phrase "unjustifiable profit" is prejudiced term
> is it not?

You'd have to ask them about that one.

> What is the difference, say, to buying and selling baseball cards,
> currently at prices up to $1.265 million? (grade 8 Honus Wagner).

The difference is that registrants often don't have the rights to the names that they register; many are trying to get as much traffic as possible by registering names that other companies spent a great deal of money establishing. If registrants have no bad faith and are honestly trying to set up a site for a coincidetally similar textual string, then they probably won't be successfully challenged. Accordingly, if it's a non-famous generic, then it's also a lot more difficult, if not impossible for the Challenger. The high premium prices asked by respondents are often used as evidence by the Challenger that the respondent had bad faith in regards to exploiting the name that they have registered, and point towards the fact that they had no intention to develop the domain into an actual site whatsoever. By itself it's not a determining factor of bad faith because getting a profit for the least amount of expense possible is at the cornerstone of capitalist economy - but that viewed with other immediate material facts (such as lack to develop a site and intial reasons for registering that particular domain) are viewed and placed into context.

> They are not 'so-called' common words - they ARE common words.

What I meant was most of your examples were not single words but mostly two words placed together which formed distinctive trademarks that the complainants had rights to and the respondent could not prove they had rights to.

> Nobody can 'pass-off' as coke.drink.us.reg
> so why is it a 'problem'?

Well, if all the other TLDs are still being registered then a new TDL (.reg) doesn't solve the 'problem' of businesses still registering domain names that individuals want.

I'm not sure what you believe the reason trademarks were 'invented' to be, but essentially it revolves around business protecting brands and names that their business rely on to generate sales and ensuring that competitors or opportunists don't erode these marks or use them to their own benefit, without having spent anywhere near the resources that the rightful owners have. Without these protections, many businesses would fail (I could manufacture my own version of Coca-Cola and put it into an identical looking can and sell it at half the price, thus destroying The CC Company's sales) and major economies would be ruined.

Domain caselaw has just extended this protection online - it's not a perfect system in its execution - but it is a fundamentally necessary one. I'm sure you could extrapolate what would happen if anyone was given free reign to register whatever domain name they wanted.

Finally I'd just like to say that I recommend you read each individual case carefully before using it as an example of big business trampling over the little guy - most cases are carefully considered and facts are analysed as a whole. It seems that you (like a lot of people) are essentially opposed to trademarks having the rights that they currently do. That's fine, and you're entitled to your opinion and a lot of what you say has merit in legal equality.

However, I have responded a lot to your questions, comments and conjecture and I feel now like I can't respond to your questions without either going around in circles, or trying to justify the reasons why we have trademark laws in the first place; such common law exists because it is in the best interest of everyone - even the small guy - and without it our economy as a whole would suffer.

I'm back at work on Monday and don't have the time nor the inclination to justify every trademark policy here, so please understand if I don't specifically respond to your posts in the future.

Of course, voices such as yours are still important, as without them capitalism and democracy do not work, so I trust that you will continue to let your opinions be heard.

Best Regards,
Alex

 


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