RE: [wg-b] Reality checks [the grateful dead(hits)]

["Hartman, Steve" <HartmanS@Nabisco.com>]

I don't believe that a rule that excludes all use of a famous mark from a
domain name other than one owned by the famous mark holder is not workable.
Such a rule would exclude too many domain names that raise, I believe,
legitimate free speech issues; and, in any event, is not a position that
could command political force, whatever its merits. An ICANN rule that
allows john doe to register johndoe-porche-repairs.com does not mean that
such a domain name is not a trademark violation, and it should not prejudice
Porche's right to sue john doe for a trademark violation and prove its case.

Steve Hartman
Nabisco, Inc.

> -----Original Message-----
> From:	Greg Phillips [SMTP:gdp@hpalaw.com]
> Sent:	Tuesday, December 14, 1999 4:48 PM
> To:	KathrynKL@aol.com
> Cc:	Hartman, Steve; erony@marin.k12.ca.us; wg-b@dnso.org
> Subject:	Re: [wg-b] Reality checks [the grateful dead(hits)]
> 
> Independent Porsche repair shops may certainly advertise on their website
> that
> they repair Porsche automobiles, but they should not be allowed to use the
> trademark "Porsche" in their Internet address as a source of their
> services.  If
> one accepts the ruling of the Eastern District of Virginia that "a domain
> name is
> more than a mere internet address.  It also identifies the internet site
> to those
> who reach it, much like . . . a company's name identifies a specific
> company."
> Cardservice International, Inc. v. McGee, 960 F.Supp. 737, 741 (E.D.Va.
> 1997),
> aff'd, 129 F.3d 1258 (4th Cir. 1997) (enjoining use of trademark
> "cardservice,"
> "or any variation thereof, including but not limited to 'csi' or
> 'csimall'"), one
> must also accept the proposition that it is not fair use to use a
> trademark or
> variation of a trademark in a company name.  Manny's Porshop, 972 F.Supp.
> at 1131
> (N.D.Ill. 1997) (enjoining use of "Manny's Porshop" as a business name).
> Accord
> Volkswagenwerk Aktiengesellschaft v. Brewer,  170 U.S.P.Q. 560 (D.  Ariz.
> 1971)
> (use of "VOLKCITY SERVICE CENTER" enjoined); Volkswagenwerk
> Aktiengesellschaft v.
> Karadizian,  170 U.S.P.Q.  565  (C.D. Cal. 1971) (use of "VOLKSWAGEN
> VILLAGE" in
> name enjoined; usage not vitiated by use  of the phrase "Used cars only;
> not  a
> franchised Volkswagen dealer). The FTDA "prohibits even innocuous use" of
> a
> famous trademark.  Manny's Porshop, 972 F.Supp. at 1132 (citing
> Intermatic, Inc.
> v. Toeppen, 947 F.Supp. 1227, 1240 (N.D.Ill. 1996)).  In short, it is not
> "fair
> use" to use a trademark in a domain name.  Brookfield Communications, Inc.
> v.
> West Coast Entertainment Corp., 1999 WL 232014, * 26 (9th Cir. 1999).
> 
> In the real world we don't allow independent repair shops to use the
> trademark
> "Porsche" in their business names or on signs, and we don't allow the
> independent
> repair shops to list themselves under Porsche in the telephone
> directories.  The
> same rules should apply to the Internet.  Thus, an independent repair shop
> may
> advertise in an advertisement or on a website that "We repair Porsche
> automobiles," but shouldn't use one of the world's most famous trademarks
> to
> indicate the source for its services.
> 
> 
> KathrynKL@aol.com wrote:
> 
> > HartmanS@Nabisco.com writes:
> > >  For the sake of completeness, I would add that I can find nothing
> improper
> > >  on the face of it with Porsche objecting to porschebank.com or
> > >  porschelynn.com, or the Academy objecting to theoscars.com. Nothing
> in
> > these
> > >  domain name is a clear message.
> >
> > Based on your message, I fear you are setting an new standard for
> protection
> > of marks.  Rather than requiring the trademark owner to show
> infringement
> > (with the shorthand version being proof of "likelihood of confusion") or
> > rather than having the famous mark owner show dilution under by the
> Paris
> > Convention (shorthand version:  that the diluter is using the mark on
> > "identical or similar goods"), you would like the trademark owner to
> show
> > only that someone is using "their word" and leave the burden of proof to
> the
> > domain name holder to prove their innocence e.g,  not infringing or
> diluting.
> >
> > Such an approach is clean and easy, but it will create tremendous
> problems
> > with all the independent Porsche Repair Garages and with independent
> Oreo
> > distributors.  Under law, they have rights to use even famous marks and
> even
> > in commercial settings.   Needless to say, it creates tremendous
> problems for
> > free speech by making someone the monitor upfront for what is a
> legitimate
> > communicative message using the word "oreo" or "porsche" in it.
> >
> > Also, the approach is not consistent with the equities built into
> current
> > law. The burden of proof, and the showings, under both sovereign laws
> and
> > treaties, rests with the trademark owner.
> >
> > Kathy Kleiman
> >
> > >
> 
>