Re: [idn] what are the IDN identifiers?

[tedd <tedd@sperling.com>]

Professor Froomkin:

>  > > In the US, we have an anti-cybersquatting law where I can't register
>  > > EXXON.com because of the Trademark owned by EXXON.
>
>This is a slight over-simplification of US law.  You may be able to
>register exxon.com quite legally for certain purposes, including parody,
>and especially non-commercial purposes (e.g. an environmental group that
>wished to complain about something Exxon was doing).

Now, I am not questioning a law professor about a question of law, 
but what I said, while being simplistic, was nonetheless true. The 
following is my understanding and why I used EXXON, a "famous 
trademark" (see ACPA below), as an example. Perhaps others may 
benefit from the point clarification.

Also, as per my understanding, one cannot register the domain name of 
"exxon.com" for it is already registered. -- even for other purposes 
(i.e., non-commercial purposes, environmental, or whatever) because 
ta specific domain name can not be registered twice. Certainly, other 
domain names containing "exxon" have been registered, such as 
"exxonsucks.com" and it has even been made into a "critical of Exxon" 
web site. However, this was done before the ACPA was signed. I do not 
know how this type of "infringement" registration would shake out now.

However, I do strongly believe that if someone registered 
"exxon*.com" (where the * was the registered trademark symbol -- code 
point 00A3), they could be in trouble under the ACPA trying to sell 
it to Exxon or use it for their own purposes. Do you agree?

--- ACPA

On November 29, 1999, President Clinton signed into law the 
"Anticybersquatting Consumer Protection Act" (ACPA). This law adds 
section 43(d) to the U.S. Trademark Act of 1946 and creates a cause 
of action for "cybersquatting" on famous trademarks. The ACPA also 
creates a federal cause of action for cybersquatting on a person's 
name without his or her permission.

Under the ACPA, a person may face civil liability to the owner of a 
trademark (or a personal name) if such person:
(i) has a bad faith intent to profit from a mark; and
(ii) registers, trafficks in, or uses a domain name that:
(a) is identical or confusingly similar to a distinctive trademark;
(b) is identical, confusingly similar to or dilutive of a famous trademark; or
(c) infringes a specially-granted trademark such as "U.S. OLYMPICS" 
or "AMERICAN RED CROSS."

A "distinctive trademark" is any trademark that has been registered 
with the U.S. Patent and Trademark Office or which has been used with 
goods and/or services for sufficient time that it has acquired 
"secondary meaning" among consumers.

A "famous trademark" is one that a court says is famous. There are 
numerous factors that are considered, including the duration and 
extent of use, extent of advertising, degree of public recognition, 
and whether the mark was registered with the U.S. Patent and 
Trademark Office. In practice, a "famous trademark" is one that most 
people have heard of, on a regular basis, for many years (i.e. Kodak, 
Microsoft, Exxon).

Now, I'm back to lurking as well.

tedd

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