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

On Nov 18, 1998, Daniel J. Schaeffer <daniel_schaeffer[_at_]kirkland.com> wrote:
>
> 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.)

Actually, it's not in the policy, it's in the FAQ at

   http://rs.internic.net/faq/dispute.html

Here's the relevant excerpt:

10.What's the effective date of a trademark?

     The Policy refers to a trademark's "effective date" because of 
     the varied nature of effective dates for trademark registrations. 
     When Network Solutions receives a trademark in support of a 
     complaint, we research to determine the effective date of a 
     trademark based on the accepted practices of the trademark's 
     country of origin. For example, the effective date of United 
     States trademark registrations is the earlier of the filing 
     date or the first use date.

Bob Cumbow
cumbr[_at_]perkinscoie.com
206-583-8566 Received on Fri Nov 20 1998 - 01:46:24 GMT