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    Highlights of the ICANNWatch Archive
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    This discussion has been archived. No new comments can be posted.
    Groundbreaking NAF Decision in NEW.NET Domain Case | Log in/Create an Account | Top | 86 comments | Search Discussion
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    USPTO on source-indication of TLDs
    by dtobias (dan@tobias.name) on Friday August 30 2002, @05:24AM (#8789)
    User #2967 Info | http://domains.dan.info/
    I still think the USPTO opinion is sound where most cases are concerned. Properly, the .com (or other TLD) part of a domain address is merely a part of the addressing system, indicating such things as whether the entity is commercial or not, but not properly a part of the name of the entity in the real world outside the Internet. The naming of companies with ".com" at the end is one of the idiocies of the "dot-com boom" era that thankfully seems to have gone out of fashion since. In general, a company shouldn't trademark "BlahBlah.com" as their name, brand, and mark; they should trademark "BlahBlah", with the ".com" version merely being their address. I still shudder whenever I read an arbitration case or court decision that refers to "the famous mark BlahBlah.com", feeling like shouting back, "BlahBlah.com isn't a mark, famous or otherwise... it's a goddamned address!"

    However, I can see that there are special cases where the TLD is an essential part of a mark, where the second-level name by itself is a generic word, but with a particular TLD at the end it uniquely and famously identifies a site. There, trademarking the domain name in its entirety makes some sense, but in such cases the scope of the trademark accordingly should extend only to that particular domain name; a trademark on amazon.com shouldn't prevent the registration of amazon.biz or amazon.info, or give the trademark owner any special rights to those names in a sunrise period, since the other names don't match the specific trademarked name amazon.com -- the trademark owner would have to demonstrate rights to the name Amazon by itself to prevail against non-dot-com names.

    Construed in this narrow way, a trademark to a domain name, TLD and all, is mostly useless; it protects only against infringement of the exact name, but if the trademark owner already owns the corresponding domain name, then nobody else can use it anyway -- the trademark would only help in the rare cases where the owner accidentally lets the registration lapse or be transferred to a different owner and is trying to get it back, or where an alternative root operator sets up a conflicting domain.

    In cases where the trademark owner doesn't already own the corresponding domain, you have the situation as in this decision, where the trademark owner really got told off in strong terms by the panel.
    [ Reply to This | Parent ]
    USPTO on source-indication of TLDs by dtobias
    Re: USPTO on source-indication of TLDs
    by Anonymous on Friday August 30 2002, @10:07AM (#8824)
    This trademark vs. domain controversy is getting a bit ludicrous, especially where common "generic" names are involved. What will stop the insanity?
    [ Reply to This | Parent ]

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