Re: [ifwp] Re: new iana draft bylaws

[Jeff Williams <jwkckid1@ix.netcom.com>]

Martin and all,

Martin B. Schwimmer wrote:

> 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.

  Again you did not read or misconstrued my comment.  An Accepted factis just what
the term Accepted means.  That is broadly "Accepted".

>
>
> >>
> >> 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.

  Right!  and coca-cola.com is not a word, name symbol or device.  It is a"String
of characters", unless you register the entire string as a Trademark
NAME.

>
>
> 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?

  Yes, see above my response.

>
>
> >> 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."

  Yes I am.  ANd these cases are exceptions.  And they represent a
specificdilution based on made type product concerns.  Another example in the
contrary
is Macdonalds vs Macdonalds Pub in London, for instance.  If you want to get into
a case siting battle I can easily produce many contrary cases to your assertion.

>
>
> >
> >> 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.

  Not necessarily.

>
>
> >>>
> >> 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?

  No you don't.  IBM.COM is registered as a trademark name currently so thiswould
not be a good example.  For instance, if IBM (International Buisness
Machines) had not registered IBM.COM as a trademark and I had registered
as a DN, IBM.COM and sold "Itty bitty bikini's" for instance under that
DN registration, than IBM would have not Trademark dilution or infringement
case against me.  That is what I am saying.

> 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.

  Well I would beg to differ with you.  And case law proves this out already.

>
>
> >>
> >>
> >> 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.

  Respectfully you are mistaken.  Case law again does not completely agree with
you.

> 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?
>
> >

 regards,

--
Jeffrey A. Williams
DIR. Internet Network Eng/SR. Java/CORBA Development Eng.
Information Network Eng. Group. INEG. INC.
E-Mail jwkckid1@ix.netcom.com