Re: Everyone happy with the current NSI trademark domain name policy?

On 10/04/96, Morgan Malino wrote:
>
>> > Scott A Carle wrote:
>> > >
>> > > Well, I am trying to get a business off the ground and onto it's
>> > > own domain. I'd rename the business to match my social security
>> > > number and have that as my domain name but someone probably would
>> > > have it trademarked for some reason.
>
> InterNIC's policies about trademark infringment are merely proceedural,
> not substantive. If an opposer fulfills certain conditions (1. opposer's
> registered trademark is earlier than the domain registration, 2. opposer
> has sent a cease & desist letter, and 3. registrant has not produced
> proof of an earlier registered trademark), then InterNIC will suspend
> the domain until a resolution of the dispute. This has nothing to do
> with substantive rights.

I am sorry to have to tell you that Network Solutions Inc's policy, while proclaiming to anyone who will listen that it is merely procedural, not substantive (as you say), is in the majority of cases substantive. Stating the same point in a different way, NSI's policy is in most cases, outcome-determinative. The preliminary relief granted by NSI, while supposedly a mere procedural step while all the parties wait patiently for a judge to decide who gets the domain name, is in the vast majority of cases in fact permanent relief that is never in fact placed before a competent court.

In the past two weeks alone, I have counseled several domain name owners who, so far as I can tell, (1) are not even remotely infringing anybody's trademarks, (2) have been told by NSI that their domain names will be cut off in 30 days, (3) will see their small businesses ruined by the loss of the domain name, and (4) cannot afford to go to court to fight NSI's stated plans to cut them off.

That is substantive, not procedural.

> If a gun maker decides to name his business "Nike" (after the Greek
> Goddess of Victory) & gets the domaim name "nike.com" you can bet the
> shoe maker will go after him with both barrels. Because the gun maker
> has not registered his name with the Federal Government, InterNIC will
> suspend his domain name. A couple of months later, the Judge will throw
> the case out of court and InterNIC will re-activate the gun maker's
> domain. Since Nike is not a fanciful name and guns have very little to
> do with shoes, the court will decide that the gun maker is not riding
> the coat-tails of the shoe maker's good name.

Yes, your fact pattern is the one that makes NSI not seem so bad, because the gun maker has enough money, presumably, (1) to survive the loss of the domain name for "a couple of months", and (2) to file a lawsuit to recover the domain name, despite NSI and the trademark owner each having millions of dollars to play with in opposition to the lawsuit.

In the majority of cases of which I am aware, however, in which NSI has communicated its plans to cut off somebody's domain name, the domain name owner has very little money and so cannot fight back.

> As others in this group will undoubtedly tell you, the judge might not
> throw the claim out so quickly. There will also be a claim of trademark
> dilution (if the case is brought in an appropriate jurisdiction).
> Dilution is available in a number of states and is the use of a highly
> distinctive mark by another in a manner which tends to blur its
> distinctiveness or tarnish its image even without any likelihood of
> confusion. I am unfamiliar with the specifics of state law (I just
> graduated Law School in May), but my personal view is that, considering
> the power of a domain name (one person monopolizes one name on a global
> level), I think that only fanciful names should have access to a claim
> of dilution. I have no idea whether the majority of state courts are
> in agreement with my gut feelings.

Between now and the day that the federal courts figure out which marks are deserving of federal anti-dilution privileges and which are not, there will be many cases in which innocent domain name owners continue to lose their domain names due to NSI's flawed policy. Hopefully in at least a few of those cases, the innocent domain name owner will have enough money to sue NSI, the company that made the flawed policy.

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Carl Oppedahl, Oppedahl & Larson, patent law firm
http://www.patents.com/ has hundreds of pages of answers to 
frequently asked questions on patent, copyright, and trademark law