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4/18/06

Intellectual Property Owners after more Domain Names

It never ceases to amaze me at how far intellectual property owners will go to obtain more domain names. The arrogance of the IP community is absolutely ridiculous. I'm going to quote from a story here and comment on it.

THE number of "bad faith" domain-name registrations raises concerns that trademarks are increasingly being infringed online, the Advisory Council on Intellectual Property has found. Bad-faith registrations are where a party deliberately and unlawfully sets out to benefit by registering a domain containing another party's business name and associated trademarks.
Exactly. The domain name must have been registered with the INTENT of infringing on someone's trademarked name. Simply registering the name is NOT an infringement. It must be used in the same type of commerce as the holder of the trademark is engaged in.

The present process of domain-name registration does not require the registrar to check whether the same or similar domain names are already listed. The same situation applies to the registration of company names and business names. "There is a public misconception that registrars check for existing prior rights, such as registered trademarks, when registering a domain name," ACIP says in a report.
Registrars have no reason to check the domain names against registered trademarks because nowhere in your trademark application does it guarantee you will also get the domain name that corresponds to your trademark.

IP interests constantly make the mistake of equating domain names with trademarks and feel that trademark holders should not only get the domain name that EXACTLY matches their trademark, but that they should also get all domain names that sound a even a little bit similar to their trademark.

What the IP interests like to ignore is that owning a trademark does not mean you own the word or phrase you applied for. It means you are allowed to use that word or phrase to do commerce in a specific class, such as publications, the sale of clothing goods, etc. Trademarks are specific in this regard, so if someone else wants to use the same name or phrase to sell something else, they can also get a mark and do so.

Therefore, no trademark holder owns the name or phrase exclusively and domain names are not in any specific class, so trademark holders have no reasonable assumption to ownership of any domain name. When ICANN gets a clue and starts allowing new TLDs that reflect specific classes, trademark holders will have protection on the Internet.

They deserve no protection in current generic TLDs like dot com, which stands for commerce, which is not a class you can register a mark for. If they had dot publications or dot pub, then someone who owned a trademarked word or phrase to do business as a publication would have reasonable rights to the domain name in that TLD that exactly matches the srting of letters they registered as their trademark.

ACIP recommends mandatory searching of trademarks to ensure there is no conflict prior to registration; amending the Trade Marks Act to give registered business and company name owners protection against identical and confusingly similar registrations; and a single business name system to replace the state-based one used at present.
Of course, they are the advisory council that represents the interests of trademark holders who wish to have more rights with domain names in relationship to their trademarks than they would ever have offline.

* Clothing maker and retailer Supre operates more than 100 stores across Australia and New Zealand.

It first registered the name Supre as a trademark in 1990; it also owns the domain name supre.au.com.

In 2000, another party registered a business name that was very similar to Supre's trademark in Western Australia; and further registered a confusingly similar domain name in 2001. The business name was cancelled in 2003.

In 2004, Supre's lawyers lodged a complaint with the domain authority, claiming the other name should be transferred to them because it was "confusingly similar" to their brand. The other party did not respond, and the panel transferred the domain to Supre.
There is one of the rubs. They don't want just domains that match their trademarks, they want all similar domain names as well. Trademarks are specific to the string of letters you are granted a mark for. They do not guarantee you no one will ever start any kind of business anywhere with a name that is similar to yours. This is simply large companies with IP lawyers who believe it is their inherent right to have anything they want and to have it their own way.

A domain name is akin to a phone number. You do not own a domain name anymore than you own your phone number. They are both services you must pay for periodically. A doimain name was created to represent the string of numbers, which is your real internet address. It was created because it would be easier to remember than the numbers to your website.

Can supre sue me if my phone number, using the letters associated with each number, spelled supre? what about phone numbers thta spelled a word that was similar to supre? See how ridiculous their assumption is? But through cybersquatting laws and the ability to slant the news through advertising dollars, big corporations and their lawyers have many people convinced that they have rights they do not have.

If one of these corporations goes after your domain name and you feel they are wrong, fight them. If you do not have the money or the time to fight them, transfer the name to me. I'll fight them.

The author, Chris McElroy AKA NameCritic has been involved in domain names since 1995. He has bought and sold more than 500 domain names, has helped to fight off corporations who tried to reverse hijack domain names from people, and has helped to represent individual users and owners of domain names through participation in the DNSO, the General Assembly, and currently on the GNSO mailing list.

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