Re: [ICANN-EU] Re: WIPO

[Jeff Williams <jwkckid1@ix.netcom.com>]

Andreas and all,

Andreas Fügner wrote:

> Dear Christoph:
>
> I'll play devil's advocate. ;-)
> And provide you with some information.
>
> >As long as we don't get the courts recognizing the differences
> >between domains and trademarks, there will be no solution to that.
>
> There is no difference here. Just a conflict!
> If somebody uses a famous trademark to register it as
> or within (!) a domain, than this person in many jurisdictions
> breaks trademark law. Like using Mercedes in mercedes.org,
> mymercedes.com or mercedesfun.xxx

  Yes but first a "Famous TM" must be recognized as such...
Mercedes, in your example is not a Famous Mark, hence
this situation does not always apply.  See Dennison case
for more information.

>
>
> The conflict arises from the following.
>
> A trademark is registered to clearly and unmistakably
> identify the producer of certain goods or provider of certain
> services.

  That would be difficult to determine in most cases as some
TM's in one country do not necessarily apply in another.
Jurisdictional and international treaty problem here.  Hence
WIPO has no authority to properly act, nor does the host
country of the complainant if the registrant is not also
a legal resident or citizen of the same country that the
Complainant is...

> A trademark can be registered for one or more
> categories, called classes of products and services.
> BTW, that can include services like publishing including
> on the www or services including electronic mail, etc.

  Correct.

>
>
> If an entity other than the trademark owner uses this
> trademark within or as a domain, than the entity or
> person is misleading readers/visitores/consumers about
> the publisher/sender/producer/provider.

  Not necessarily.  It would depend on the class in which the
TM(s) is/are registered.

>
>
> For example, the consumer will believe, that the email service
> offered under mercedes.net will be provided by the same company,
> that is offering cars, financial and repair services, a magazin,
> watches, clothing etc. under the trademark Mercedes.

  Not at all!  At least know one I know would.  Mercedes the auto
company cannot claim all uses of the term Mercedes unless they have
prior rights in all of the classes of goods and services in which a the
Term Mercedes is registered.

>
>
> Just put yourselve into the shoes of the trademark owner of
> Mercedes for a while. Maybe you own some shares? :-)
> You invested decades of work and tons of money to
> establish the trademark. You took care to built an image and
> a reputation for whatever under this trademark. You made extra
> investments to insure quality and consumer satisfaction.
> People now trust in the consistent quality of product offered and
> services randered under your trademark.

  Depends on the TYPE of goods or services offered by this entity...

>
>
> Now somebody else takes advantage of your trademark,
> your reputation or prestige by publishing something on the
> internet or offering electronic services under your trademark.
> Maybe the person even attempts to damage the image of it.

  If they are attempting ot damage the image of another company
using Mercedes (your example) than this is another matter entirely.
If not however, than the Auto company Mercedes has no legal
recourse.

>
> How would you personally react?

  See above.

>
>
> Some people argue that domains like mercedessucks.com
> shouldn't be protected by trademark law.
> Mostly they refer to the freedom of speach.
>
> Devil's advocate argues that they could freely speak/publish
> under thiscarsucks.com or companies-that-suck.com or alikes.

  Not the same Andreas and you know it...  Please try to be
reasonable!

>
>
> Lastly, to make this information more complete,
> most trademark laws prohibit the registration
> of what is defined as a common word like house,
> bus, business, etc.
>
> Court cases are f.e. "mitwohnzentrale.de".
> The court argument is, that you cannot register
> mitwohnzentrale as a trademark for it is a common
> word and it cannot be blocked for others to use.
> If that is the case, then you cannot register the domain
> mitwohnzentrale.de. Because through domain registration
> you are blocking other people from using mitwohnzentrale.de.
> A suggested solution is to register something like
> mitwohnzentrale-weber-fahr.de or christophs-mitwohnzentrale.de.
> Nice, isn't it? ;-)
>
> >Which gets us to: to start solving a number of the problems
> >of DNS we have to get WIPO out of ICANN.
>
> And who should consult ICANN on trademark laws,
> if not WIPO

  There are many. The SBA for instance...

>
>
> >Sorry. WIPO is as big as earth is. WIPO influence is worldwide.
>
> Not really. WIPO is trying to be.
> A lot of countries did not sign international treaties
> on intellectual property. Ever wonder where those cheap
> Lacoste or Polo shirts come from? Or those inexpensive
> CDs, cameras, VCRs, TVs,? Or the cheap software?
> Say hello to China, Korea, Argentina and all the other
> countries, where copyright and patents aren't honered.
> Or take Syria, that does not accept anything registered
> in Israel, and vice versa.
>
> A nice weekend to everybody,
>
> Andreas Fuegner

You have a nice Weekend to Andreas,
Regards,

--
Jeffrey A. Williams
Spokesman INEGroup (Over 112k members strong!)
CEO/DIR. Internet Network Eng/SR. Java/CORBA Development Eng.
Information Network Eng. Group. INEG. INC.
E-Mail jwkckid1@ix.netcom.com
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