Re: protecting a domain name

On Fri, Mar 19, 1999, Michael Juhre <michael.juhre[_at_]aig.com> wrote:
>
> I'm a trademark paralegal and I am wondering if anyone can advise
> on the following: Is there any advantage to obtaining a trademark
> registration for a second level internet domain name? I get such
> requests frequently, but cannot really determine whether it is worth
> the time or money.
>
> The variables of the International Class system and that of top-level
> domain names (i.e. ".net" ".com" ".co.uk" etc.), coupled with the fact
> that a domain name is used globally, leave me confused. It seems more
> appropriate to register a domain name, and similar ones, with NSI and
> leave it at that.
>
> Scenario: You register a mark in Japan for *something.com* in
> International Class 36 for the following services: "providing
> information in the field investment services by means of a global
> computer network". Such a registration could not prevent someone
> others around the world from using *something.co.uk* *something.it*
> or what have you, would it?
>
> Assume that *something* is well-known in industry circles but not famous.
> *************************************************************************
> Also, on a similar note. Has anyone ever attempted to argue that using a
> trademark on an Internet site constitutes use in a foreign country, since
> consumers in that country have access?

There is absolutely value in obtaining trademark registration for any second level domain, at least in the .com, .net and .org TLD's handled by NSI. Under NSI's name dispute resolution policy, essentially the *only* thing they will look at is whether the complaining party and the domain name owner have trademark registrations for the SLD in dispute.

Here's the scenario. You have "domain.com" Complainer files complaint with NSI, showing that it has a Tunisian trademark registration for "domain." NSI will shut down your SLD unless you can prove to it that you have a registration for "domain" that precedes the complaint. If you do have registration, you get use of SLD unless and until a court says otherwise. I don't believe NSI cares what class the trademarks are registered in, and I know it doesn't care what country they are registered in. I don't know what the other registrars of domains are doing.

You can see NSI's policy at:

   http://www.internic.net/domain-info/internic-domain-6.html

Patrick W. Begos
Begos & Horgan, LLP
NY and CT
begos[_at_]ibm.net Received on Fri Mar 19 1999 - 14:26:48 GMT