Re: [idn] what are the IDN identifiers?

[Rick H Wesson <wessorh@ar.com>]

all:

This realy isn't the list to discuss policy, and especially US TradeMark
law.

please take this thread to a more appropiate forum.

thanks,

-rick

On Thu, 6 Dec 2001, tedd wrote:

> 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
>
> --
> http://sperling.com
>