>>
RM:
>>>Trademarks can not be usurped, in law, even if they are not registered.
>
MBS:
>>This brings me to a point that is a little off topic from this thread, and
>>off topic from even the debate regarding dispute resolution in dn/tm
>>conflicts.
>
RM:
>On the contrary, I believe it to be quite germane.
MBS:
Well germane to the larger topic of harmonizing DN and TMs, which is why I
brought it up. The problem I intended to illustrate is longer-term than
the immeidate issue of NSI policy.
>
>>So, for example, lots of Europeans can be buying and selling on ebay.com.
>>If ebay has not filed for TM protection in Germany, I can go to Germany,
>>file for ebay.com covering electronic auction services, get a registration,
>>and, theoretically, enjoin ebay.com from doing business in Germany under
>>that mark.
>
RM:
>There are a number of issues here, some of them technical. It is a fact
>that ebay.com, is in the SF Bay Area. Whether trade marked or not, it is
>registered in COM. Because of the Internet, it is visible world-wide. Such
>an injunction, from Germany, has no standing in California or US courts.
>Especially true if ebay.com is registered with USG PTO. Were I ebay.com, I
>would simply ignore such an injunction (make them go through the expense of
>bringing it into my jurisdiction, where they'd lose). But IANAL so don't
>take my advice.
>
>What's Germany going to do, filter at the borders? I don't think so.
Ok, as to the enforceability of a German injunction in a US federal court,
you are probably right in most cases. As for NSI honoring a court order,
its FAQs state that it would honor an order from a court of competent
jurisdiction anywhere in the world. Whether they have done so already we
would have to ask NSI. And ebay.com would have options in the US.
However, suppose ebay was interested in the german market and the
second-comer did get an injunction against ebay in Germany. First, ebay
would likely to be enjoined from advertising in Germany - that's
enforceable. Ebay could be enjoined from shipping goods into Germany (i
know, ebay doesn't ship - it's clients do - so suppose we are talking about
amazon.com or some other e-commerce company). So the German injunction
could stop shipments with German customs.
And as for actually blocking the transmission of ebay.com into Germany - a
server-based filter would not be completely effective but what if it
reduced hits from Germany by 50% - that would hurt.
The point is that the theoretical TM pirate from Germany would have
leverage over ebay and that the US web-oriented company may be in for rude
surprises abroad (Yahoo has already experienced unpleasantness in Israel
and China).
RM:
Note that NSI's dispute resolution policy acknowledges prior use
>because NSI is a US jurisdiction company and has to abide by US law.
>
MBS:
Actually that's part of the problem - NSI policy does not acknowledge prior
use - the DN owner may have been co-existing with the TM complainant for a
100 years but if it doesn't have a federal registration, the TM owner wins.
The failure to consider common law rights is one of the aspects of NSI
policy which results in unjust results. I also note that the ability to
recognize what is and is not common law use has been much hashed out in US
law and is complex - I do not believe someone in the registry/registrar
should be forced into having to make what is in essence a finding of fact
and law.
MBS:
>The problem, as Vint Cerf has recently highlighted, is that DNS and
>trademark law are fundamentally incompatible. One simply can not have
>multiple references for the same name, unlike in trademark law, because
>geo-political proximity issues, a compromise which much trademark law is
>based on, are eliminated by the Internet itself. The only solution possible
>is that trademark law can not apply to DNS entries a priori. They must be
>adjudicated ad hoc.
there was a headline in today's New York Times - "TheGlobe.com buys
azzazz.com from factorymall.com" In certain respects a DN registry is a
trading name registry (non-commercial use disclaimer, etc. etc.). Up until
now, trading name registries have been run by government entities pursuant
to statutes, particularly trade mark statutes. So with due respect to Mr.
Cerf, we should work to make the systems compatible (or at least mitigate
the incompatability).
>
>
>___________________________________________________
>Roeland M.J. Meyer -
>e-mail: mailto:[EMAIL PROTECTED]
>Internet phone: hawk.lvrmr.mhsc.com
>Personal web pages: http://staff.mhsc.com/~rmeyer
>Company web-site: http://www.mhsc.com
>___________________________________________________
> KISS ... gotta love it!
>
>
>
>
>
