Subject: GA-DIGEST V1 #1466
From: [email-masked] (GA-DIGEST)
To: [email-masked]

GA-DIGEST          Friday, October 11 2002          Volume 01 : Number 1466

----------------------------------------------------------------------

Date: Thu, 10 Oct 2002 15:21:15 -0500
From: Andy Gardner <[email-masked]>
Subject: RE: [ga] Interesting WIPO ruling re: NewZealand.biz

At 1:20 PM -0500 10/10/02, Rodrigo  Orenday Serrato wrote:
>One of the biggest problems that I find in domain names is that the
>registration of those which include generic names and terms commonly used,
>like the name of a country, is not banned, unlike trade and service marks.

I'm sorry? You want to BAN the registration of generic names and commonly
used terms?

What's left after that?

Ah! Trade and Service Marks.

You want the DNS to be the sole property of the corporations of the planet?

Just as a matter of interest, the registration of trade and service marks
is NOT banned. Nor should it be.

If I want to register coke.info and put up a site extolling the virtues of
de-gassed coal, I'll damn well do it, and the Coca Cola company can kiss my
hairy white butt.

- -- 
Andrew P. Gardner
barcelona.com stolen, stmoritz.com stays. What's uniform about the UDRP?
We could ask ICANN to send WIPO a clue, but do they have any to spare?
Get active: http://www.tldlobby.com
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Date: Thu, 10 Oct 2002 13:45:17 -0700 (PDT)
From: George Kirikos <[email-masked]>
Subject: RE: [ga] Interesting WIPO ruling re: NewZealand.biz

Hello,

- --- Andy Gardner <[email-masked]> wrote:
> And should canada.com.mx be the exclusive right of the country of
> Canada,
> or can the shoe store use it?

Also, at which level should we stop? If I owned sex.com, am I allowed
to have:

http://newzealand.sex.com/   <<-- this does resolve, due to wildcards

It was pointed out to me (thanks to John Berryhill) that there *is* a
case pending for NewZealand.com, WIPO D2002-0754 -- one can do searches
at:

http://www.icann.org/cgi-bin/udrp/udrp.cgi

It'd be an outrage if Virtual Countries lost their domain.

My opinion is that there's no 'new law' on the internet -- it's just
another medium to which the body of law developed over the past 6000
years or so applies. Just like TV or radio, laws will adapt, and
ridiculous rulings by those who ignore history eventually will not
stand.

Sincerely,

George Kirikos
http://www.kirikos.com/

__________________________________________________
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Date: Thu, 10 Oct 2002 16:00:12 -0400
From: "John Berryhill Ph.D. J.D." <[email-masked]>
Subject: Re: [ga] Interesting WIPO ruling re: NewZealand.biz

>
> One of the biggest problems that I find in domain names is that the
> registration of those which include generic names and terms commonly used,
> like the name of a country, is not banned, unlike trade and service marks.

This is the first time I've seen someone arguing that there should be a ban
on generic and common terms AND trademarks.

That leaves few other choices, but maybe we should just ban registering
domain names entirely.

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------------------------------

Date: Thu, 10 Oct 2002 16:23:37 -0500
From: "Rodrigo  Orenday Serrato" <[email-masked]>
Subject: RE: [ga] Interesting WIPO ruling re: NewZealand.biz

Alright, then let's prevent international organizations from registering in
.org, since that's what .int was meant for in the first place.

Atentamente, Regards
Rodrigo Orenday Serratos

- -----Mensaje original-----
De: Leah Gallegos [mailto:[email-masked]]
Enviado el: Jueves, 10 de Octubre de 2002 02:20 PM
Para: [email-masked]; 'Andy Gardner'; [email-masked]
Asunto: Re: [ga] Interesting WIPO ruling re: NewZealand.biz

On Thursday 10 October 2002 01:15 pm, Rodrigo Orenday Serrato wrote:
> I insist that the naming of States is a matter of public interest, and
> therefore registrars should ban the registration of domain names
comprising
> the names of States, unless registration is requested by the State
> concerned.

Fortunately, IMO, the law does not agree.  States and governments in general
should use .gov or the equiv. for official uses.  If this were not the case,
there would never be songs like "New York, New York"  or "Chicago" and there
would not have been a ship named the Queen Mary because commercial use of a
government name would be illegal.  In addition, there would be hundreds of
thousands of businesses that would never have existed if the use of regions
or government names were illegal.  UDRP should be disallowed if the result
is
the out and out theft of legitmately held domains.

Leah

The US has .gov for government domains and ccTLDs should do the same.
Actually, .US should be the home of governmental sites for the US, IMO, with
a .gov.us, but that is another discussion.

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------------------------------

Date: Thu, 10 Oct 2002 16:32:36 -0500
From: "Rodrigo  Orenday Serrato" <[email-masked]>
Subject: RE: [ga] Interesting WIPO ruling re: NewZealand.biz

Generics per se cannot be registered as trademarks, at least not under
Mexican, French nor German trademark law, in their present state. There is
an IP specialist here who declared to the press that he beleives that we
should forget about domain names altogether and go back to IP addresses, but
I don't agree with that.

However, an argument I sustained in my professional thesis on the regulation
of domain names in Mexico is the following:

1. Mexican trade & service mark and copyright laws are of public interest,
and they forbid the appropriation of generic terms, amongst others.
2. The Federal Civil Code sets forth that acts which contravene public
interest laws shall be null.
3. The registration of generics as domain names consists in an appropriation
of said terms, thus it contravenes the aforesaid laws.
4. Consequently, said registrations are null.

IP specialists here seem to agree. Constructive and reasonable comments on
the foregoing are wellcome.

Atentamente, Regards
Rodrigo Orenday Serratos

- -----Mensaje original-----
De: John Berryhill Ph.D. J.D. [mailto:[email-masked]]
Enviado el: Jueves, 10 de Octubre de 2002 03:00 PM
Para: [email-masked]; [email-masked]
CC: 'Andy Gardner'; [email-masked]
Asunto: Re: [ga] Interesting WIPO ruling re: NewZealand.biz

>
> One of the biggest problems that I find in domain names is that the
> registration of those which include generic names and terms commonly used,
> like the name of a country, is not banned, unlike trade and service marks.

This is the first time I've seen someone arguing that there should be a ban
on generic and common terms AND trademarks.

That leaves few other choices, but maybe we should just ban registering
domain names entirely.

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------------------------------

Date: Thu, 10 Oct 2002 16:39:28 -0500
From: "Rodrigo  Orenday Serrato" <[email-masked]>
Subject: RE: [ga] Interesting WIPO ruling re: NewZealand.biz

"My opinion is that there's no 'new law' on the internet -- it's just
another medium to which the body of law developed over the past 6000
years or so applies. Just like TV or radio, laws will adapt, and
ridiculous rulings by those who ignore history eventually will not
stand."

BRAVO GEORGE! I absolutely agree with you. 

Cheers mate!

Atentamente, Regards
Rodrigo Orenday Serratos

- -----Mensaje original-----
De: [email-masked] [mailto:[email-masked]]En nombre de George
Kirikos
Enviado el: Jueves, 10 de Octubre de 2002 03:45 PM
Para: [email-masked]
Asunto: RE: [ga] Interesting WIPO ruling re: NewZealand.biz

Hello,

- --- Andy Gardner <[email-masked]> wrote:
> And should canada.com.mx be the exclusive right of the country of
> Canada,
> or can the shoe store use it?

Also, at which level should we stop? If I owned sex.com, am I allowed
to have:

http://newzealand.sex.com/   <<-- this does resolve, due to wildcards

It was pointed out to me (thanks to John Berryhill) that there *is* a
case pending for NewZealand.com, WIPO D2002-0754 -- one can do searches
at:

http://www.icann.org/cgi-bin/udrp/udrp.cgi

It'd be an outrage if Virtual Countries lost their domain.

My opinion is that there's no 'new law' on the internet -- it's just
another medium to which the body of law developed over the past 6000
years or so applies. Just like TV or radio, laws will adapt, and
ridiculous rulings by those who ignore history eventually will not
stand.

Sincerely,

George Kirikos
http://www.kirikos.com/

__________________________________________________
Do you Yahoo!?
Faith Hill - Exclusive Performances, Videos & More
http://faith.yahoo.com
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------------------------------

Date: Thu, 10 Oct 2002 16:54:01 -0500
From: Andy Gardner <[email-masked]>
Subject: RE: [ga] Interesting WIPO ruling re: NewZealand.biz

At 4:32 PM -0500 10/10/02, Rodrigo  Orenday Serrato wrote:
>Generics per se cannot be registered as trademarks, at least not under
>Mexican, French nor German trademark law, in their present state. There is
>an IP specialist here who declared to the press that he beleives that we
>should forget about domain names altogether and go back to IP addresses, but
>I don't agree with that.

If he'd said "forget about trying to match domain names to TM's", I'd be
inclined to agree.

>However, an argument I sustained in my professional thesis on the regulation
>of domain names in Mexico is the following:
>
>1. Mexican trade & service mark and copyright laws are of public interest,
>and they forbid the appropriation of generic terms, amongst others.

OK. With you so far.

>2. The Federal Civil Code sets forth that acts which contravene public
>interest laws shall be null.

Still with you.

>3. The registration of generics as domain names consists in an appropriation
>of said terms, thus it contravenes the aforesaid laws.

Only if such registration is an attempt to use such a term as a trademark.
Mere registration of a generic term dosn't contravene.

>4. Consequently, said registrations are null.

So you're going to go to mercadolibre.com.mx and tell them they can't use
the name anymore?

>IP specialists here seem to agree. Constructive and reasonable comments on
>the foregoing are wellcome.

I don't think you and I are on the same planet, let alone in the same country.

- -- 
Andrew P. Gardner
barcelona.com stolen, stmoritz.com stays. What's uniform about the UDRP?
We could ask ICANN to send WIPO a clue, but do they have any to spare?
Get active: http://www.tldlobby.com
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------------------------------

Date: Thu, 10 Oct 2002 17:57:54 -0400 (EDT)
From: "Michael Froomkin - U.Miami School of Law" <[email-masked]>
Subject: RE: [ga] Interesting WIPO ruling re: NewZealand.biz

Why is it so important to make rules and control people?  What's the
*harm* if an international organization chooses to register in .org?

On Thu, 10 Oct 2002, Rodrigo  Orenday Serrato wrote:

> Alright, then let's prevent international organizations from registering in
> ..org, since that's what .int was meant for in the first place.
> 
> Atentamente, Regards
> Rodrigo Orenday Serratos
> 
> -----Mensaje original-----
> De: Leah Gallegos [mailto:[email-masked]]
> Enviado el: Jueves, 10 de Octubre de 2002 02:20 PM
> Para: [email-masked]; 'Andy Gardner'; [email-masked]
> Asunto: Re: [ga] Interesting WIPO ruling re: NewZealand.biz
> 
> 
> On Thursday 10 October 2002 01:15 pm, Rodrigo Orenday Serrato wrote:
> > I insist that the naming of States is a matter of public interest, and
> > therefore registrars should ban the registration of domain names
> comprising
> > the names of States, unless registration is requested by the State
> > concerned.
> 
> Fortunately, IMO, the law does not agree.  States and governments in general
> should use .gov or the equiv. for official uses.  If this were not the case,
> there would never be songs like "New York, New York"  or "Chicago" and there
> would not have been a ship named the Queen Mary because commercial use of a
> government name would be illegal.  In addition, there would be hundreds of
> thousands of businesses that would never have existed if the use of regions
> or government names were illegal.  UDRP should be disallowed if the result
> is
> the out and out theft of legitmately held domains.
> 
> Leah
> 
> The US has .gov for government domains and ccTLDs should do the same.
> Actually, .US should be the home of governmental sites for the US, IMO, with
> a .gov.us, but that is another discussion.
> 
> --
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> Send mail to [email-masked] to unsubscribe
> ("unsubscribe ga-full" in the body of the message).
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> 
> 

- -- 
		Please visit http://www.icannwatch.org
A. Michael Froomkin   |    Professor of Law    |   [email-masked]
U. Miami School of Law, P.O. Box 248087, Coral Gables, FL 33124 USA
+1 (305) 284-4285  |  +1 (305) 284-6506 (fax)  |  http://www.law.tm
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Date: Thu, 10 Oct 2002 17:12:40 -0500
From: "Rodrigo  Orenday Serrato" <[email-masked]>
Subject: RE: [ga] Interesting WIPO ruling re: NewZealand.biz

Well, to begin with, simply that they were not meant to register it there;
they have their own specific gTLD, and in abusing gTLDs like that, they
preclude other persons' rights to register in .org.

Say for example WHO.ORG; who should be entitled to that domain? The World
Health Organization (who should register under .INT), or the rock band (if
they were still playing, that is)?.

My perspective is much more about order, respecting other people's rights
and conforming to the law than just about controlling them, Professor.

Atentamente, Regards
Rodrigo Orenday Serratos

- -----Mensaje original-----
De: Michael Froomkin - U.Miami School of Law
[mailto:[email-masked]]
Enviado el: Jueves, 10 de Octubre de 2002 04:58 PM
Para: Rodrigo Orenday Serrato
CC: 'Leah Gallegos'; 'Andy Gardner'; [email-masked]
Asunto: RE: [ga] Interesting WIPO ruling re: NewZealand.biz

Why is it so important to make rules and control people?  What's the
*harm* if an international organization chooses to register in .org?

On Thu, 10 Oct 2002, Rodrigo  Orenday Serrato wrote:

> Alright, then let's prevent international organizations from registering
in
> ..org, since that's what .int was meant for in the first place.
>
> Atentamente, Regards
> Rodrigo Orenday Serratos
>
> -----Mensaje original-----
> De: Leah Gallegos [mailto:[email-masked]]
> Enviado el: Jueves, 10 de Octubre de 2002 02:20 PM
> Para: [email-masked]; 'Andy Gardner'; [email-masked]
> Asunto: Re: [ga] Interesting WIPO ruling re: NewZealand.biz
>
>
> On Thursday 10 October 2002 01:15 pm, Rodrigo Orenday Serrato wrote:
> > I insist that the naming of States is a matter of public interest, and
> > therefore registrars should ban the registration of domain names
> comprising
> > the names of States, unless registration is requested by the State
> > concerned.
>
> Fortunately, IMO, the law does not agree.  States and governments in
general
> should use .gov or the equiv. for official uses.  If this were not the
case,
> there would never be songs like "New York, New York"  or "Chicago" and
there
> would not have been a ship named the Queen Mary because commercial use of
a
> government name would be illegal.  In addition, there would be hundreds of
> thousands of businesses that would never have existed if the use of
regions
> or government names were illegal.  UDRP should be disallowed if the result
> is
> the out and out theft of legitmately held domains.
>
> Leah
>
> The US has .gov for government domains and ccTLDs should do the same.
> Actually, .US should be the home of governmental sites for the US, IMO,
with
> a .gov.us, but that is another discussion.
>
> --
> This message was passed to you via the [email-masked] list.
> Send mail to [email-masked] to unsubscribe
> ("unsubscribe ga-full" in the body of the message).
> Archives at http://www.dnso.org/archives.html
>
>

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		Please visit http://www.icannwatch.org
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U. Miami School of Law, P.O. Box 248087, Coral Gables, FL 33124 USA
+1 (305) 284-4285  |  +1 (305) 284-6506 (fax)  |  http://www.law.tm
                      -->It's very hot here.<--

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------------------------------

Date: Thu, 10 Oct 2002 18:13:50 -0400 (EDT)
From: "Michael Froomkin - U.Miami School of Law" <[email-masked]>
Subject: Generics [Was RE: [ga] Interesting WIPO ruling re: NewZealand.biz]

[Note change in subject line]

Let's assume you are correct about Mexican law.  Mexico can of course have
any public policy rule it chooses.  That's its sovereign right.  And that
may well control how the .mx registry acts, as it should.  But why should
that have any influence on what a Norwegian does in .com via a Brazilian
registrar?  Indeed why *should* it influence the rules of any registry not
located in Mexico or in a jurisdiction with a similar rule?

I should note that in the US, by the way, you cannot register a 'generic'
term as a trademark for the good or service for which it is generic, but
you can register it for things for which it is fanciful.  So I can't
register "apple" for red crunchy fruits of apple trees, but I can register
a trademark on "apple" for records, computers, or cleaning services.  Are
you saying that the rule in Mexico is that no one can register "manzana"
for anything? 

[I believe I am now at the posting limit, so this is my last comment of
the day.]

On Thu, 10 Oct 2002, Rodrigo  Orenday Serrato wrote:

> Generics per se cannot be registered as trademarks, at least not under
> Mexican, French nor German trademark law, in their present state. There is
> an IP specialist here who declared to the press that he beleives that we
> should forget about domain names altogether and go back to IP addresses, but
> I don't agree with that.
> 
> However, an argument I sustained in my professional thesis on the regulation
> of domain names in Mexico is the following:
> 
> 1. Mexican trade & service mark and copyright laws are of public interest,
> and they forbid the appropriation of generic terms, amongst others.
> 2. The Federal Civil Code sets forth that acts which contravene public
> interest laws shall be null.
> 3. The registration of generics as domain names consists in an appropriation
> of said terms, thus it contravenes the aforesaid laws.
> 4. Consequently, said registrations are null.
> 
> IP specialists here seem to agree. Constructive and reasonable comments on
> the foregoing are wellcome.
> 
> Atentamente, Regards
> Rodrigo Orenday Serratos
> 
> 
> 
> -----Mensaje original-----
> De: John Berryhill Ph.D. J.D. [mailto:[email-masked]]
> Enviado el: Jueves, 10 de Octubre de 2002 03:00 PM
> Para: [email-masked]; [email-masked]
> CC: 'Andy Gardner'; [email-masked]
> Asunto: Re: [ga] Interesting WIPO ruling re: NewZealand.biz
> 
> 
> >
> > One of the biggest problems that I find in domain names is that the
> > registration of those which include generic names and terms commonly used,
> > like the name of a country, is not banned, unlike trade and service marks.
> 
> This is the first time I've seen someone arguing that there should be a ban
> on generic and common terms AND trademarks.
> 
> That leaves few other choices, but maybe we should just ban registering
> domain names entirely.
> 
> 
> --
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> Send mail to [email-masked] to unsubscribe
> ("unsubscribe ga-full" in the body of the message).
> Archives at http://www.dnso.org/archives.html
> 
> 

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U. Miami School of Law, P.O. Box 248087, Coral Gables, FL 33124 USA
+1 (305) 284-4285  |  +1 (305) 284-6506 (fax)  |  http://www.law.tm
                      -->It's very hot here.<--

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------------------------------

Date: Fri, 11 Oct 2002 00:26:11 +0200
From: Thomas Roessler <[email-masked]>
Subject: Re: [ga] Interesting WIPO ruling re: NewZealand.biz

On 2002-10-10 16:32:36 -0500, Rodrigo  Orenday Serrato wrote:

>1. Mexican trade & service mark and copyright laws are of public 
>interest, and they forbid the appropriation of generic terms, 
>amongst others.

What kind of appropriation?

Registration of a domain name only means appropriation in that  
specific "space".  Registering coffee.org does not prevent anyone  
else from calling a cup of coffee "a cup of coffee".  (And it also 
doesn't prevent anyone else from registering coffee.com, by the  
way.)

That's vastly different from the kind of appropriation which would  
be implied by an appropriate trademark registration of the term  
"coffee".  (Which indeed better should not happen.)

- -- 
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Date: Thu, 10 Oct 2002 18:41:57 -0400
From: Dan Steinberg <[email-masked]>
Subject: Re: [ga] Interesting WIPO ruling re: NewZealand.biz

Actually, in a public forum in the past century, Jonathan Cohen (not yet an
ICANN board member at the time) stood up in the audience of a panel discussion I
believe I was chairing, and stated with great vigour (and for the record) that
"no one should be allowed to own patents.com".

"John Berryhill Ph.D. J.D." wrote:

> >
> > One of the biggest problems that I find in domain names is that the
> > registration of those which include generic names and terms commonly used,
> > like the name of a country, is not banned, unlike trade and service marks.
>
> This is the first time I've seen someone arguing that there should be a ban
> on generic and common terms AND trademarks.
>
> That leaves few other choices, but maybe we should just ban registering
> domain names entirely.
>
>

- --
Dan Steinberg

SYNTHESIS:Law & Technology
35, du Ravin  phone: (613) 794-5356
Chelsea, Quebec  fax:   (819) 827-4398
J9B 1N1                 e-mail:[email-masked]

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Date: Thu, 10 Oct 2002 17:45:10 -0500
From: "Rodrigo  Orenday Serrato" <[email-masked]>
Subject: RE: [ga] Interesting WIPO ruling re: NewZealand.biz

In a way, if I were to register ACUPOFCOFFEE.COM, it does prevent everyone
else but me to call a cup of coffee exactly that IN THE DNS. That's my
point.

By the way, let me state that this thing I said about my thesis is as yet
only a theory of mine; I haven't yet had the opportunity to challenge any
generic registrations in court. And what I said was only that IP specialists
here SEEM to agree, nothing more.

Atentamente, Regards
Rodrigo Orenday Serratos

- -----Mensaje original-----
De: Thomas Roessler [mailto:[email-masked]]
Enviado el: Jueves, 10 de Octubre de 2002 05:26 PM
Para: Rodrigo Orenday Serrato
CC: 'John Berryhill Ph.D. J.D.'; [email-masked]; 'Andy Gardner';
[email-masked]
Asunto: Re: [ga] Interesting WIPO ruling re: NewZealand.biz

On 2002-10-10 16:32:36 -0500, Rodrigo  Orenday Serrato wrote:

>1. Mexican trade & service mark and copyright laws are of public
>interest, and they forbid the appropriation of generic terms,
>amongst others.

What kind of appropriation?

Registration of a domain name only means appropriation in that
specific "space".  Registering coffee.org does not prevent anyone
else from calling a cup of coffee "a cup of coffee".  (And it also
doesn't prevent anyone else from registering coffee.com, by the
way.)

That's vastly different from the kind of appropriation which would
be implied by an appropriate trademark registration of the term
"coffee".  (Which indeed better should not happen.)

- --
Thomas Roessler                        http://log.does-not-exist.INFO/

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------------------------------

Date: Thu, 10 Oct 2002 17:46:03 -0500
From: "Rodrigo  Orenday Serrato" <[email-masked]>
Subject: RE: [ga] Interesting WIPO ruling re: NewZealand.biz

Care to comment on that?

Atentamente, Regards
Rodrigo Orenday Serratos

- -----Mensaje original-----
De: Dan Steinberg [mailto:[email-masked]]
Enviado el: Jueves, 10 de Octubre de 2002 05:42 PM
Para: John Berryhill Ph.D. J.D.
CC: [email-masked]; [email-masked]; 'Andy Gardner';
[email-masked]
Asunto: Re: [ga] Interesting WIPO ruling re: NewZealand.biz

Actually, in a public forum in the past century, Jonathan Cohen (not yet an
ICANN board member at the time) stood up in the audience of a panel
discussion I
believe I was chairing, and stated with great vigour (and for the record)
that
"no one should be allowed to own patents.com".

"John Berryhill Ph.D. J.D." wrote:

> >
> > One of the biggest problems that I find in domain names is that the
> > registration of those which include generic names and terms commonly
used,
> > like the name of a country, is not banned, unlike trade and service
marks.
>
> This is the first time I've seen someone arguing that there should be a
ban
> on generic and common terms AND trademarks.
>
> That leaves few other choices, but maybe we should just ban registering
> domain names entirely.
>
>

- --
Dan Steinberg

SYNTHESIS:Law & Technology
35, du Ravin  phone: (613) 794-5356
Chelsea, Quebec  fax:   (819) 827-4398
J9B 1N1                 e-mail:[email-masked]

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Date: Thu, 10 Oct 2002 17:49:57 -0500
From: "Rodrigo  Orenday Serrato" <[email-masked]>
Subject: RE: [ga] Interesting WIPO ruling re: NewZealand.biz

If you were to appear before the IMPI and request the registration of
"paper" for paper products, registration would be denied, irrespective of
whether you intend to effectively use it as a trademark or not. Thefore you
could not obtain an exlusive right over the aforesaid term. And if granted
by mistake, such registration would be null.

Atentamente, Regards
Rodrigo Orenday Serratos

- -----Mensaje original-----
De: [email-masked] [mailto:[email-masked]]En nombre de Andy
Gardner
Enviado el: Jueves, 10 de Octubre de 2002 04:54 PM
Para: [email-masked]
Asunto: RE: [ga] Interesting WIPO ruling re: NewZealand.biz

At 4:32 PM -0500 10/10/02, Rodrigo  Orenday Serrato wrote:
>Generics per se cannot be registered as trademarks, at least not under
>Mexican, French nor German trademark law, in their present state. There is
>an IP specialist here who declared to the press that he beleives that we
>should forget about domain names altogether and go back to IP addresses,
but
>I don't agree with that.

If he'd said "forget about trying to match domain names to TM's", I'd be
inclined to agree.

>However, an argument I sustained in my professional thesis on the
regulation
>of domain names in Mexico is the following:
>
>1. Mexican trade & service mark and copyright laws are of public interest,
>and they forbid the appropriation of generic terms, amongst others.

OK. With you so far.

>2. The Federal Civil Code sets forth that acts which contravene public
>interest laws shall be null.

Still with you.

>3. The registration of generics as domain names consists in an
appropriation
>of said terms, thus it contravenes the aforesaid laws.

Only if such registration is an attempt to use such a term as a trademark.
Mere registration of a generic term dosn't contravene.

>4. Consequently, said registrations are null.

So you're going to go to mercadolibre.com.mx and tell them they can't use
the name anymore?

>IP specialists here seem to agree. Constructive and reasonable comments on
>the foregoing are wellcome.

I don't think you and I are on the same planet, let alone in the same
country.

- --
Andrew P. Gardner
barcelona.com stolen, stmoritz.com stays. What's uniform about the UDRP?
We could ask ICANN to send WIPO a clue, but do they have any to spare?
Get active: http://www.tldlobby.com
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Date: Thu, 10 Oct 2002 17:51:31 -0500
From: "Rodrigo  Orenday Serrato" <[email-masked]>
Subject: RE: Generics [Was RE: [ga] Interesting WIPO ruling re: NewZealand.biz]

Professor, your comment on generics as trademarks in the US is very similar
to the way it works in Mexico. My explanation on it was not complete, for
which I apologize. Your explanation shall come in handy for a test I'm about
to take.

On the other hand, it is funny that you should mention the interest of
Mexico on what a Norwegian does through a Brazilian registry, because the
last time I checked, a Norwegian holds TEQUILA.COM, and uses it for a mobile
phone website. As you know, TEQUILA is not only our foremost national
liquor, but it is also an apellation controlle, which may not be used for
anything else but for the identification of the aforesaid beverage.

Atentamente, Regards
Rodrigo Orenday Serratos

- -----Mensaje original-----
De: Michael Froomkin - U.Miami School of Law
[mailto:[email-masked]]
Enviado el: Jueves, 10 de Octubre de 2002 05:14 PM
Para: Rodrigo Orenday Serrato
CC: 'John Berryhill Ph.D. J.D.'; [email-masked]; 'Andy Gardner';
[email-masked]
Asunto: Generics [Was RE: [ga] Interesting WIPO ruling re:
NewZealand.biz]

[Note change in subject line]

Let's assume you are correct about Mexican law.  Mexico can of course have
any public policy rule it chooses.  That's its sovereign right.  And that
may well control how the .mx registry acts, as it should.  But why should
that have any influence on what a Norwegian does in .com via a Brazilian
registrar?  Indeed why *should* it influence the rules of any registry not
located in Mexico or in a jurisdiction with a similar rule?

I should note that in the US, by the way, you cannot register a 'generic'
term as a trademark for the good or service for which it is generic, but
you can register it for things for which it is fanciful.  So I can't
register "apple" for red crunchy fruits of apple trees, but I can register
a trademark on "apple" for records, computers, or cleaning services.  Are
you saying that the rule in Mexico is that no one can register "manzana"
for anything?

[I believe I am now at the posting limit, so this is my last comment of
the day.]

On Thu, 10 Oct 2002, Rodrigo  Orenday Serrato wrote:

> Generics per se cannot be registered as trademarks, at least not under
> Mexican, French nor German trademark law, in their present state. There is
> an IP specialist here who declared to the press that he beleives that we
> should forget about domain names altogether and go back to IP addresses,
but
> I don't agree with that.
>
> However, an argument I sustained in my professional thesis on the
regulation
> of domain names in Mexico is the following:
>
> 1. Mexican trade & service mark and copyright laws are of public interest,
> and they forbid the appropriation of generic terms, amongst others.
> 2. The Federal Civil Code sets forth that acts which contravene public
> interest laws shall be null.
> 3. The registration of generics as domain names consists in an
appropriation
> of said terms, thus it contravenes the aforesaid laws.
> 4. Consequently, said registrations are null.
>
> IP specialists here seem to agree. Constructive and reasonable comments on
> the foregoing are wellcome.
>
> Atentamente, Regards
> Rodrigo Orenday Serratos
>
>
>
> -----Mensaje original-----
> De: John Berryhill Ph.D. J.D. [mailto:[email-masked]]
> Enviado el: Jueves, 10 de Octubre de 2002 03:00 PM
> Para: [email-masked]; [email-masked]
> CC: 'Andy Gardner'; [email-masked]
> Asunto: Re: [ga] Interesting WIPO ruling re: NewZealand.biz
>
>
> >
> > One of the biggest problems that I find in domain names is that the
> > registration of those which include generic names and terms commonly
used,
> > like the name of a country, is not banned, unlike trade and service
marks.
>
> This is the first time I've seen someone arguing that there should be a
ban
> on generic and common terms AND trademarks.
>
> That leaves few other choices, but maybe we should just ban registering
> domain names entirely.
>
>
> --
> This message was passed to you via the [email-masked] list.
> Send mail to [email-masked] to unsubscribe
> ("unsubscribe ga-full" in the body of the message).
> Archives at http://www.dnso.org/archives.html
>
>

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		Please visit http://www.icannwatch.org
A. Michael Froomkin   |    Professor of Law    |   [email-masked]
U. Miami School of Law, P.O. Box 248087, Coral Gables, FL 33124 USA
+1 (305) 284-4285  |  +1 (305) 284-6506 (fax)  |  http://www.law.tm
                      -->It's very hot here.<--

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