Sun's Lawyers Threaten Registrars -- Say .biz IP rules not good enough
Date: Wednesday August 29 2001, @04:51PM
Topic: New gTLDs

dtobias writes "According to a New York Times article (registration required), Sun Microsystems has sent a threatening lawyer letter to registrars demanding that they not allow anybody else to even attempt to register .biz names that match any of a list of trademarks. The text of the letter is online at LexText. Sun charges that the IP protection procedures of .biz, which allow the filing of IP claims and challenging of registrations, but don't give an absolute right to trademark owners to get corresponding names, don't go far enough to protect Sun's rights, and hints at legal action against the registrars if they allow any allegedly infringing registrations."

The list of trademarks Sun is demanding protection of include some fairly generic words that are used by many other companies -- such as enterprise (which is a car rental company as well as the Star Trek starship), and, for that matter, Sun itself (which is the star which the Earth revolves around, and is the name of many businesses in many fields).

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The sun doesn't revolve around Sun?
by dtobias (dan@tobias.name) on Thursday August 30 2001, @01:18AM (#2060)
User #2967 Info | http://domains.dan.info/
Interestingly, the Neulevel chairman recently wrote a Chicago Tribune editorial touting .biz, and its headline was "The sun doesn't revolve around '.com'". Does this infringe on the "highly valuable trademark, trade name, common law and domain name rights" of Sun Microsystems?

Incidentally, these phrases "The sun doesn't revolve around..." are senseless. The sun doesn't revolve around anything, except that over a period of many millions of years it makes a slow revolution around the center of the Milky Way Galaxy. What the headline author was probably thinking about is the Earth revolving around the Sun, as Copernicus and Galileo found to be the case instead of the other way around.
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Re: Sun's Lawyers Threaten Registrars -- Say .biz
by hofjes on Thursday August 30 2001, @04:52AM (#2062)
User #60 Info
It appears that neither Sun nor its prestigious law firm understand trademark law.

Trademarks identify the source or quality of goods or services. The owner of a trademark does not have exclusive right to the word comprising the mark. Rather, it has the exclusive right to use the mark to identify the source or quality of its very certain goods or services. The rest of us can use the words comprising mark in other ways, and we can even use the same words to comprise a different mark identifying a different good or service.

Sun may be able to protect COBALT for software or hardware, but Cobalt boats owns COBALT for boats. Likewise, anybody has the right to register cobalt.biz to market cobalt sales (i.e., the brittle metallic element used for magnetic alloys).

If the lawyers who wrote that letter understand trademark law, then they are committing an ethical violation. Federal rule of civil procedure 11, and analogous state civil procedure rules, prohibit attorneys from make claims which are frivolous, vexatious and without legal merit. This demand letter qualifies as a violation of those rules.

This matter is ripe for a declaratory relief action. The registrars should get together and sue Sun for a declaration that Sun cannot prohibit the registration of domain names similar to their trademarks. Perhaps Enterprise-Rent-A-Car should sue for declaratory relief, considering Sun claims to have the exclusive right to register a domain name similar to Enterprise’s arguable famous mark.
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Re: Trademark laws is fundamentally flawed
by JohnR (yes@fakemail.com) on Thursday August 30 2001, @07:32AM (#2067)
User #2937 Info
The trademark law is fundamentally flawed. It is made to encourage the selfishness. As you see, most of marks are common words which should be public property. The businesses use those common words because of their inherent value: people would easily recognize the product and or the service associated with mark. The trademark holders just want to provent others from using the same mark for the same purpose. It is utterly unfair.

JohnR
http://DomainManual.com
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Re: Sun's Lawyers Threaten Registrars -- Say .biz
by ldg on Thursday August 30 2001, @08:53PM (#2074)
User #2935 Info | http://example.com/
The working groups determined that sunrise was a bad idea and that it would not work. Hasn't this been proven well enough yet? The DNS was meant to be first come, first served. It should remain so. Sunrise only serves to exclude individuals from obtaining and fairly using domain names and soundly defeats the purpose of introducing additional tld's.

Between sunrise and UDRP, ICANN is ruining the internet for the public. I hope the alt.tld's remain open for the public. We intend to continue to operate ours as FCFS. It is the responsibility of the registrant to use domain names legally and not infringe on others' rights. There are ample laws to protect trademark holders.

It is my sincere hope that the courts will throw SUN Microsystem's claim out the door with the admonition that it is frivolous and fine them accordingly.
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  • This article comes from ICANNWatch
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