Re: Open letter to Kelsey Grammer: the Internet is not a trademark-free zone

On Sat, 14 Nov 1998, Carl Oppedahl <carl[_at_]oppedahl.com> wrote:
>
> On 11/13/98, Greg Ikonen <gikonen[_at_]venlaw.com> wrote:
> >
> [discussing NSI's challenge procedure]
> >
> > Not only does Kelsey need a registered trademark, but he must
> > satisfy Internic that he acquired that registration prior to the
> > date his friendly cybersquatters registered the domain name.
>
> No, that's not correct; please reread the NSI procedure. It is enough,
> to "win" the NSI challenge procedure, that the challenger's trademark
> registration recite a "date of first use" that precedes the domain name.

The NSI domain name dispute procedure reads, in relevant part, as follows:

(b) If the registrant's domain name creation date precedes the effective

    date of the valid and subsisting certified registration owned by the     complainant, Network Solutions will take no action on the     complainant's request.

(c) If the domain name creation date is after the effective date of

    the valid and subsisting certified registration owned by the     complainant, then Network Solutions shall request from the     registrant proof of ownership of registrant's own registered     trademark or service mark. ... The certified registration must     be owned by the registrant and the effective date must be prior     to the date of any third party's notice of a dispute to the     registrant.

(d) If the domain name creation date is after the effective date of

    the valid and subsisting certified registration owned by the     complainant, and the registrant fails to provide a certified     registration ... within thirty (30) calendar days of receipt of     Network Solutions' dispute notification letter, Network Solutions     will assist the registrant with registration of a new domain name,     and will allow the registrant to maintain both names simultaneously     for up to ninety (90) calendar days to allow an orderly transition     to the new domain name. ... At the end of the ninety (90) calendar     day period of simultaneous use, Network Solutions will place the     disputed domain name on "Hold" status, pending resolution of the     dispute. As long as a domain name is on "Hold" status, that domain     name registered to the registrant shall not be available for use     by any party.

[NSI Dispute Policy: Rev 03 effective 2/25/98, accessed 11/18/98 at http://www.internic.net/domain-info/internic-domain-6.html, Para. 9]

So the relevant date of the registration is the "effective date" of the valid and subsisting trademark registration owned by the complainant. There is no discussion of "first use" anywhere in the policy. (I suppose you could argue that "effective date" of a registration is the date of firsts use, but I see nothing in NSI's policy to suggest that interpretation.)

Daniel J. Schaeffer
<daniel_schaeffer[_at_]kirkland.com> Received on Wed Nov 18 1998 - 16:58:24 GMT