They want to take scooby.com away!
Robert P. Bell
kev...@home.net wrote:
>
> Hey everyone!
>
> I just received a letter from Hanna-Barbera's attorney demanding that
> I turn over the domain name scooby.com to them. It was stated that I
> my registration of the name scooby.com (done back in early 1995) is a
> trademark infringement and dilution in violation of their rights.
>
> The letter states that they have numerous registrations for the
> word-mark scooby-doo, but does not state that they have registered
> just the word scooby. So, is registering scooby.com in fact a
> dilution of scooby-doo and an infringement of their rights?
>
> Has there been legal decisions made on this sort of thing?
>
> FYI - scooby.com is registered for my own private use, nothing
> commercial.
>
> Can someone offer advice??
>
Write a nice letter in response (preferably from your attorney) telling them what
a great big hassle it will be for you to relinquish your domain address to them,
and how much expense it will be. Hopefully, you can get a little money and
cooperation from them in return for relinquishing the name (a lifetime pass to
H-B theme parks, perhaps?).
You have a property right here. Thay have a claim against it. They have much
more money and lawyers than you. They also have the new Trademark anti-dilution
act on their side. How badly do you want Scooby.com, particularly if you are not
using it commercially? What are you really giving up here? They would just as
soon avoid attorney expenses and bad press. Work out an equitable arrangement.
Take the money and run, and move on with your life. If you fight it, you'll have
years of hardship, lawyers bills, and will probably lose.
But that's just my opinion. Of course, I haven't gotten such a letter from the
BELL companies - - yet.
--Bob.
kev...@home.net
Hey everyone!
I just received a letter from Hanna-Barbera's attorney demanding that
I turn over the domain name scooby.com to them. It was stated that I
my registration of the name scooby.com (done back in early 1995) is a
trademark infringement and dilution in violation of their rights.
The letter states that they have numerous registrations for the
word-mark scooby-doo, but does not state that they have registered
just the word scooby. So, is registering scooby.com in fact a
dilution of scooby-doo and an infringement of their rights?
Has there been legal decisions made on this sort of thing?
FYI - scooby.com is registered for my own private use, nothing
commercial.
Can someone offer advice??
Thanks!
Kevin Mayeux
kev...@home.net
Ram Samudrala
This is being cross-posted to misc.int-property also.
Whatever you do, unless you wish to be paid for the domain, don't turn
it over without a court order. They CAN, under NSI's current policy,
get it placed "on hold", but neither of you will be able to use it.
This I think is a better alternative than giving it to them.
Some of the people on this thread should know better (the lawyer who
referred to this as a copyright, for example).
Domain names have been found, given the stupidity and ignorance of our
current court system, to infringe trademarks. Two ways you can
infringe are likelihood of confusion and dilution. Your case from my
point of view (I'm no expert) appears to be non-infringing, if the
domain is purely for personal use not related to anything
Hanna-Barbara is doing. Defending your claim may be expensive,
however.
--Ram
kev...@home.net wrote:
>Hey everyone!
>I just received a letter from Hanna-Barbera's attorney demanding that
>I turn over the domain name scooby.com to them. It was stated that I
>my registration of the name scooby.com (done back in early 1995) is a
>trademark infringement and dilution in violation of their rights.
>The letter states that they have numerous registrations for the
>word-mark scooby-doo, but does not state that they have registered
>just the word scooby. So, is registering scooby.com in fact a
>dilution of scooby-doo and an infringement of their rights?
>Has there been legal decisions made on this sort of thing?
>Just FYI - scooby.com is registered for my own private use, nothing
>commercial.
>I WANT TO KEEP IT! Can someone offer advice??
>Thanks!
>Kevin Mayeux
>kev...@home.net
m...@ram.org || http://www.ram.org || http://www.twisted-helices.com/th
They say follow your heart; follow it through.
But how can you, when it's split in two? ---Siouxsie and the Banshees
Andrew C. Greenberg
> Hey everyone!
>
> I just received a letter from Hanna-Barbera's attorney demanding that
> I turn over the domain name scooby.com to them. It was stated that I
> my registration of the name scooby.com (done back in early 1995) is a
> trademark infringement and dilution in violation of their rights.
>
> The letter states that they have numerous registrations for the
> word-mark scooby-doo, but does not state that they have registered
> just the word scooby. So, is registering scooby.com in fact a
> dilution of scooby-doo and an infringement of their rights?
>
> Has there been legal decisions made on this sort of thing?
Lots, although none of it has been definitive yet. _See_, _e.g._,
Panavision Int'l, L.P. v. Toeppen_, No. 96-3284 (C.D. Cal. Nov. 5, 1996)
(holding, inter alia, that merely possessing a domain name constitutes
dilution when the mark deprives a famous mark holder from the right to use
the mark on the internet).
In my view, Judge Pregerson's opinion constitutes a disaster for the
internet as well as for dilution law. His willingness to extend the
concept of "likelihood of dilution" to include not only conduct that may
diminish the distinctiveness of the mark in the traditional sense of
blurring and tarnishment, but also to include conduct that diminishes the
*USE* of the mark in a particular way on a particular medium is judicial
activism at its worst. This is only one of several cases in this area,
many of which have been published in the past few months.
It is the facts yielding law such as this that has led me to actively
advocate upwardly compatible versions of DNS that would facilitate the
sharing of domain names between a plurality of legitimate users. Now,
Toeppen's case is one of blatant "domain name piracy", where Toeppen
freely admitted that he wanted to "hold up" the plaintiff for some money,
earning a profit from his registration fees. But under my proposed version
of nDNS, or the equivalent, Judge Pregerson's argument for such extended
dilution would be impossible, and the judge would need to find likelihood
of confusion or likelihood of dilution in order to grant Toeppen relief.
For my comments on revising DNS, see:
<http://www.gate.net/~werdna/domain.html>
Interestingly enough, Toeppen's case, in which NSI is a co-defendant, leads
to dicta which unfortunately ratifies NSI's "substantive analysis" paranoia:
if mere conduct depriving a party from using a famous mark on the internet
is dilution, then receiving a fee for registering the mark must likewise be
dilution. As I said, the case is bad news.
To the note writer's questions:
You *SHOULD NOT* be relying upon advice garnered from the internet at this
stage. The free advice is worth what you pay for, and no more. *RIGHT
NOW*, you should be consulting with competent counsel and deciding what it
is you want to do to preserve the domain name,You should find a lawyer
familiar with both the law of the internet and one who is intimately
familiar with trademark and dilution, and rely upon his or her advice.
This posting should not be cosntrued to constitute legal advice of any kind,
nor to create an attorney/client relationship thereby. Legal advice requires
the application of law to the particular facts of your case, which cannot
be accomplished merely by reviewing the e-mail posting to which I am now
responding.
--
just another view,
Andy Greenberg (wer...@gate.net)
Carlton Fields
Ram Samudrala
Some clarifications.
Ram Samudrala (r...@mbisgi.umd.edu) wrote:
>get it placed "on hold", but neither of you will be able to use it.
Unless you sue NSI (and until you win the case?).
>Some of the people on this thread should know better (the lawyer who
>referred to this as a copyright, for example).
I meant these people are wrong to refer to trademarks as copyrights
especially given that they claim to be lawyers.
--Ram
"Isn't it ironic that Alanis Morisette's song has little of it?"
---M. Perotto
Michael D. Parker
kev...@home.net wrote:
>
> Hey everyone!
>
> I just received a letter from Hanna-Barbera's attorney demanding that
> I turn over the domain name scooby.com to them. It was stated that I
> my registration of the name scooby.com (done back in early 1995) is a
> trademark infringement and dilution in violation of their rights.
----------------->>
Write them a nice letter back and inform them they can have the domain
name "scooby-doo.com" or "scooby_doo.com" or "scoobydoo.com" or
scooby.hannabarbera.com" (you get the idea), and that your use of
"scooby.com" refers to a nick name you've had for some time or some
other reason you chose it, such as being a scuba diver, etc.
Mike
(not to be taken as legal advice)
tn3...@aol.com
If you want to be a hero to the relatively few people who are concerned
with the ridiculous system that puts your domain name in jeopardy because
of Hanna-Barbera, refuse unless they pay you some cash. If you don't have
enough money to pay lawyers, and/or you're concerned with your mental
well-being, you should probably give it up, but ask for a few nominal
concessions. Doing so would suck, but getting involved in litigation with
a big company like that would be a royal pain unless you can bankroll an
attorney.
Jeff Kuester
wer...@gate.net (Andrew C. Greenberg) wrote:
>Lots, although none of it has been definitive yet. _See_, _e.g._,
>Panavision Int'l, L.P. v. Toeppen_, No. 96-3284 (C.D. Cal. Nov. 5, 1996)
>(holding, inter alia, that merely possessing a domain name constitutes
>dilution when the mark deprives a famous mark holder from the right to use
>the mark on the internet).
Maybe a little broad in your interpretation? Dilution would not have
existed in this case if Toeppen were not in the "business" of
cybersquatting? The statute does not allow noncommercial use to
"dilute", but when a domain name owner suggests money may be taken for
the domain name, a problem is created for the DNO, right? This may be
a large trap for attorneys advising in this area.
jk
Jeff Kuester
"Robert P. Bell" <Rober...@BELLPAT.COM> wrote:
>Write a nice letter in response (preferably from your attorney) telling them what
>a great big hassle it will be for you to relinquish your domain address to them,
>and how much expense it will be. Hopefully, you can get a little money and
>cooperation from them in return for relinquishing the name (a lifetime pass to
>H-B theme parks, perhaps?).
While the dilution statute does not allow noncommercial use to
"dilute", doesn't the use become commercial under the panavision case
when the domain name owner suggests money will fix the situation?
Thus, how would you avoid hurting a domain name owner's case here
resulting from merely making the suggestion?
jk
elis...@acsu.buffalo.edu
> While the dilution statute does not allow noncommercial use to
> "dilute", doesn't the use become commercial under the panavision case
> when the domain name owner suggests money will fix the situation?
> Thus, how would you avoid hurting a domain name owner's case here
> resulting from merely making the suggestion?
> jk
Not exactly. To the best of my understanding, in the Panavision case Mr.
Toeppen registered panavision.com *with intent* to sell it later to
Panavision *at the registration step*. The intent wasn't really difficult
to prove, you might check his registered domains, like eddibauer.com,
neiman-markus.com and other 158 or so very similar domains.
Besides, again, to the best of my knowledge, when you are in the
course of settlement negotiations, and respond to an offer made by another
party, such price negotiations can't be used against you later. As I saw,
the usual letters that attorneys exchange while trying to settle the case
and avoid litigation always conatain the appropiate language regarding
reservation of all the rights of the parties. I know that courts usually
defer to such clauses.
In the Panavision case it was Mr. Toeppen's lawyer who said during the
hearing somethig like "oh, and by the way, my client intended to sell the
domain to Panavision for $13,000". That language was not protected and was
held against Toeppen.
Maria
--------------------------------------
Maria Eliseeva in...@patentbar.com
Hodgson Russ Andrews Woods & Goodyear
Intellectual Property Group, law clerk
716-848-1255 (office)
SUNY at Buffalo College of Law, 3L
Mike Bandor
kev...@home.net wrote:
>Hey everyone!
>I just received a letter from Hanna-Barbera's attorney demanding that
>I turn over the domain name scooby.com to them. It was stated that I
>my registration of the name scooby.com (done back in early 1995) is a
>trademark infringement and dilution in violation of their rights.
>The letter states that they have numerous registrations for the
>word-mark scooby-doo, but does not state that they have registered
>just the word scooby. So, is registering scooby.com in fact a
>dilution of scooby-doo and an infringement of their rights?
>Has there been legal decisions made on this sort of thing?
>FYI - scooby.com is registered for my own private use, nothing
>commercial.
>Can someone offer advice??
>Thanks!
>Kevin Mayeux
>kev...@home.net
Kevin,
I'm not a lawyer, but I seem to remember a similar suit brought on by
MTV against their former VJ Adam Curry over his registering MTV.COM.
If memory serves me correctly (if not, don't hold it against me--like
I said, I'm not a lawyer) they ended up settling out of court. I
don't recall if the actual figures were published.
Personally, I say keep the name. Has H-B tried suing over the recent
song that mentions "Scooby Snacks?" I think things are getting a
little out of hand and the companies are starting to panic over domain
names and trademarks.
Just my $0.02 (US) worth...
Mike
---------------------------------------------------------
- Mike Bandor (ban...@jcave.com)
- Computer programmer: Ada/C++/Windows/Winhelp/JOVIAL/MASM
-
- "Trying to manage programmers is like trying to herd cats!"
-
- Speaking for myself! Standard disclaimer applies.
---------------------------------------------------------
- Author of MEGATERMS: Military Terms and Acronyms
- http://www.jcave.com/~bandorm/megaterm/megaterm.htm
- ftp://jcave.com/usr/b/bandorm/m-term.zip
---------------------------------------------------------
Robert P. Bell
elis...@acsu.buffalo.edu wrote:
>
> Not exactly. To the best of my understanding, in the Panavision case Mr.
> Toeppen registered panavision.com *with intent* to sell it later to
> Panavision *at the registration step*. The intent wasn't really difficult
> to prove, you might check his registered domains, like eddibauer.com,
> neiman-markus.com and other 158 or so very similar domains.
>
This is what many on the internet fail to mention when they talk about 'big
brother' taking all their rights away. A small, but significant group of
individuals were attempting to hold domain names hostage to the trademark
holders. These were not individuals merely choosing a domain name by
accident, by rather by design.
Although the case law discussion is interesting, the original poster said
"what should I do?". I agree with (T3bone?) that the best you can hope for,
without an expensive legal fight, is to get a few concessions, perhaps a bit
of cash, and move on, especially if you have no particular commerical interest
at stake.
As a matter of personal preference, I would suggest now is a good time to
switch to a new domain address (at H-B expense, of course) with a more mature
name. While using cute nicknames on BBSs and the Internet might seem like fun
now, do you really want to be saddled with such a name 20-30 years from now?
(or change addresses later?). I find it hard to take anyone seriously when
they use a 'handle' on the internet. A matter of personal preference, of
course.
Regards,
--Bob.
Andrew C. Greenberg
Wish I were, Jeff. Consider the following excerpt:
Toeppen's conduct varies from the two standard dilution theories.
As a result of the state of Internet technology, Toeppen was able
not merely "to lessen[] the capacity of a famous mark to identify
and distinguish goods and services BUT TO ELIMINATE THE CAPACITY OF
Panavision marks to identify and distinguish Panavision's goods and
services on the Internet. THE COURT FINDS THAT TOEPPEN'S CONDUCT,
WHICH PREVENTED PANAVISION FROM USING ITS MARKS IN A NEW AND IMPORTANT
MEDIUM, HAS DILUTED PANAVISION'S MARKS WITHIN THE MEANING OF THE
STATUTE.
The court held that Toeppen neither blurred nor tarnished, but was guilty
merely for his "denial of service" attack.
Jeff Kuester
wer...@gate.net (Andrew C. Greenberg) wrote:
>The court held that Toeppen neither blurred nor tarnished, but was guilty
>merely for his "denial of service" attack.
Nonetheless, conduct must at least be commercial in nature, right?
The statute seems to require that, and the court spent a lot of time
showing how his "business" was relevant. Do you agree?
jk
Dennis Toeppen
> Not exactly. To the best of my understanding, in the Panavision case Mr.
> Toeppen registered panavision.com *with intent* to sell it later to
> Panavision *at the registration step*. The intent wasn't really difficult
Hi,
My name is Dennis Toeppen, as in Panavision vs Toeppen.
I am listed as administrative contact on a large number of domain names
because I am sysadmin for an ISP. Many of the approximately 160 (*not*
270+, as frequently posted) names which have my name on them (as technical
contact, in many cases) are not in my control...they belong to others. Of
those that I *do* control, some are domains which I registered for
immediate use by myself (toeppen.com, c-u.com), some were registered for
businesses which I am involved with (suburbanexpress.com, subex.com,
tuscola.com, monticello.com, champaign.com, etc), and others are
registered because I intend to develop a commercial or noncommerical use
for them at some later date. I registered a relatively small number of
(now) controversial names, such as panavision.com and
americanstandard.com, because I felt it would be interesting to see how
the world responded.
Since domain names are often concantenations of various words, syllables,
acronyms, etc., they have tremendous potential to overlap existing
trademarks, particularly since second-level domains in the popular .com
top-level domain are necessarily GLOBALLY UNIQUE. American Standard is a
good example. American standard could refer to "the american standard for
<insert just about anything>". Since the words american standard have a
large number of applications in a large number of contexts, it seems
reasonable that those words might appear in the names of some companies.
As it turns out, a large number of companies have indeed chosen American
Standard as their name: a manufacturer of propane storage equiment, a
guitar manufacturer, and a bathroom fixtures company, to name just a few.
In addition to American Standard, many other companies have chosen names
which are not GLOBALLY UNIQUE. Here is a list of a few which I am now
keenly aware of:
Panavision: Panavision LLP (movie cameras) and Panavision Jewelers (524
Fulton St, Brooklyn, NY 11201-5308 Phone: (718)855-8696)
Allsteel: Allsteel, Inc. (Office Furniture), All Steel Buildings (2581
Tracy Rd, Northwood, OH 43619-1004 Phone: (419)666-0200), All Steel
Building and Roofing (All Steel Building & Roofing, Pleasantville, IA
50225 Phone: (515)848-3511)
Greenview: apartments, fertilizer, auto sales, arts center, barbershop, etc.
Indianhead: coin, ski area, a bar, etc.
Great America: auto service, drywall, trucking company, amusement park, etc.
Silver Dome: ballroom, mobile park, supper club, stadium
You get the point.
Permutations of common words and prefixes and suffixes sometimes result in
interesting words which can turn out to be trademarks. InterMetro is a
good example. (digression: Once, I saw a program which someone called a
"suburb name generator". It had a list of words like oak, glen, brook,
wood, stream, field, etc. and it generated a list of names which were
permutations of two or more of the words. The percentage of names it
generated which are actually in use as town names was quite high.)
Names of individuals can also turn out to be trademarks, as Mark Newton
discovered when Apple came calling for newton.com.
Anyhow, it's late and I'm not articulating my thoughts well, so I'll get
to the point: If first-come, first-served is not the method by which
domain names are allocated, how on earth will conflicting claims of
preemptory rights in domain names be sorted out?
Currently, it seems that the person or entity with the greatest capacity
to purchase the services of legal counsel is most likely to wrangle a
domain name from others with competing claims. While this turns out to be
sort of a proxy for an economically rational means of deciding who gets a
domain name, in that the entity with the highest and best use of a domain
name is likely to spend the most to obtain it and is therefore most likely
to obtain it, is a bit strange since payment is not made to the initial
owner of the domain, but to third parties with no interest in the it (the
law firm which represents the trademark holder who prevails and the law
firm which represents the domain owner who does not prevail).
What if rights in real property were decided this way? American Standard
builds a plant. John Doe purchases land adjacent to the plant. American
Standard decides to expand. John Doe won't sell the land. In the absence
of laws upholding John Doe's ownership interest in his property, American
Standard files a frivolous lawsuit which John Doe cannot justify defending
himself against, so he hands the property over to American Standard and
walks away. Yikes!
--
PanaVision.com was the address of a page which I was messing around with
which related to the town of Pana, IL. It featured Aerial photos of Pana.
(The former PanaVision page is currently at www.enterhere.com) Similar
aerial photographs of Champaign, IL were at www.champaign.com last winter
and the Net66 web page carried my "aerial photo of the week," until I
became bored with flying around taking pictures of things. When I
registered panavision.com, I did not intend to attempt to sell my interest
to any particular entity, as Panavision LLP would have y'all believe. I
merely registered it and began using it.
When I was approached by John Farran, CEO of Panavision LLP, I did not
"demand payment". Farran initiated telephone interaction, which included
foul language and threats. His abuse continued for several days. When I
finally made a written offer to transfer the domain in exchange for a cash
payment, he went "into orbit" as someone characterized it.
A rational person would have considered the marginal revenue product
(value) of the domain, the cost of litigation, whether or not the value of
the domain name exceeded the cost of litigation and whether or not the
cost of litigation was likely to exceed the asking price for the domain
name. In the case of Farran/Panavision, the cost of litigation has clearly
exceeded the price I proposed for the domain. Farran apparently allowed
his ego to enter the decision-making process and decided to take on the
world... I guess that Panavision's stockholders must not mind propping up
Farran's ego from time to time. Kind of a perk which comes with the title,
perhaps.
--
I had legitimate ownership interest in an intangible asset which Mr.
Farran coveted. Rather than paying to move that asset to what he thought
was its highest and best use, Mr. Farran has exploited a substantial lack
of understanding on the part of the courts to twist trademark law in his
favor and steal the domain name from its owner...
--
Dennis Toeppen
den...@toeppen.com
elis...@acsu.buffalo.edu
> > Not exactly. To the best of my understanding, in the Panavision case Mr.
> > Toeppen registered panavision.com *with intent* to sell it later to
> > Panavision *at the registration step*. The intent wasn't really difficult
>
> Hi,
>
> My name is Dennis Toeppen, as in Panavision vs Toeppen.
Hi,
>
> I am listed as administrative contact on a large number of domain names
> because I am sysadmin for an ISP. Many of the approximately 160 (*not*
> 270+, as frequently posted) names which have my name on them (as technical
> contact, in many cases) are not in my control...they belong to others. Of
> those that I *do* control, some are domains which I registered for
> immediate use by myself (toeppen.com, c-u.com), some were registered for
> businesses which I am involved with (suburbanexpress.com, subex.com,
> tuscola.com, monticello.com, champaign.com, etc),
The whois databe lists 158 domains if you search on "toeppen". I don't
remember seeing the number 270, though I may be forgetful, of course.
Besides, since you are listed as the administrative contact, I doubt there
is any way to tell whether the domain is registered for your own use or
you are merely a sysadmin.
and others are
> registered because I intend to develop a commercial or noncommerical use
> for them at some later date.
Well, I guess that subjected you to the risk of being qualified as the
court did.
I registered a relatively small number of
> (now) controversial names, such as panavision.com and
> americanstandard.com, because I felt it would be interesting to see how
> the world responded.
>
Did you satisfy your interest? You could have tried something with Elvis
Presley or Disney, it would have been even more fun.
> In addition to American Standard, many other companies have chosen names
> which are not GLOBALLY UNIQUE. Here is a list of a few which I am now
> keenly aware of:
>
> Panavision: Panavision LLP (movie cameras) and Panavision Jewelers (524
> Fulton St, Brooklyn, NY 11201-5308 Phone: (718)855-8696)
>
[the list here]
Have these other *panavisions* asserted any claim to the domain? I
suspect that they didn't, so their existence is really not relevant. To
acquire any property right you have to start with asserting a claim.
Other panavisions never did that. There is a domain maria.com. Which
happened to be my name as well as the name of millions of other women
around the world. I do not think that the question of ownership of
maria.com should be decided by contacting every possible Maria and asking
whether she claims the right to the domain. They can bring claims, if they
choose so, but as between the two particlular parties, if other parties do
not claim the asset, their presence is mostly irrelevent.
> Names of individuals can also turn out to be trademarks, as Mark Newton
> discovered when Apple came calling for newton.com.
Try Elvis Presley, great example. Besides, there was a recent case that
said that in getting a TM from the Trademark Office the Dilution statute
(the one you are aware of by now due to the Panavision case) shall not be
taken into account. Yet, a lawsuit can be perfectly brought and won under
the Dilution Statute. So you can even get a TM from the Trademark Office,
but lose under the Dilution law if you run into a famous mark even
without any likelihood of confusion at all.
> Anyhow, it's late and I'm not articulating my thoughts well, so I'll get
> to the point: If first-come, first-served is not the method by which
> domain names are allocated, how on earth will conflicting claims of
> preemptory rights in domain names be sorted out?
Great question.
>
> Currently, it seems that the person or entity with the greatest capacity
> to purchase the services of legal counsel is most likely to wrangle a
> domain name from others with competing claims.
The strongest most often wins. Or the one with better brains. Not only in
legal battles. It has very little to do with the question of fairness,
life is unfair.
> What if rights in real property were decided this way? American Standard
> builds a plant. John Doe purchases land adjacent to the plant. American
> Standard decides to expand. John Doe won't sell the land. In the absence
> of laws upholding John Doe's ownership interest in his property, American
> Standard files a frivolous lawsuit which John Doe cannot justify defending
> himself against, so he hands the property over to American Standard and
> walks away. Yikes!
> merely registered it and began using it.
If I remember correctly from my first year Property course, that can go
both ways. Yes, there are laws that protect John, also there are cases
that came out differently, like the Poletown and GM case in Michigan. I
don't remember the details very well now.
>
> When I was approached by John Farran, CEO of Panavision LLP, I did not
> "demand payment". Farran initiated telephone interaction, which included
> foul language and threats. His abuse continued for several days. When I
> finally made a written offer to transfer the domain in exchange for a cash
> payment, he went "into orbit" as someone characterized it.
>
Was it your attorney who wrote that offer letter?
> I had legitimate ownership interest in an intangible asset which Mr.
> Farran coveted. Rather than paying to move that asset to what he thought
> was its highest and best use, Mr. Farran has exploited a substantial lack
> of understanding on the part of the courts to twist trademark law in his
> favor and steal the domain name from its owner...
I have a very strong suspicion that it was possiblle to word the letter to
Mr. Farran the way that would make him consider your offer. THis is just a
suspicion, of course, I haven't seen your letter.
Maria
Dennis Toeppen
> If you had left out the part about the CEO of panavision 'ranting', I
might have
> believed the rest of it.
John Farran called approximately five times over the course of two weeks.
Why this is so hard for you to believe, I do not know.
> Pana, Illinois? come on.......
Do you have a web browser? As I mentioned, the page has moved to
www.enterhere.com.
Russell Nelson
> > In addition to American Standard, many other companies have chosen names
> > which are not GLOBALLY UNIQUE. Here is a list of a few which I am now
> > keenly aware of:
> >
> > Panavision: Panavision LLP (movie cameras) and Panavision Jewelers (524
> > Fulton St, Brooklyn, NY 11201-5308 Phone: (718)855-8696)
> >
> [the list here]
>
> Have these other *panavisions* asserted any claim to the domain? I
> suspect that they didn't, so their existence is really not relevant.
Sure it is. Why should one trademark holder have any rights superior
to another trademark holder?
> > Anyhow, it's late and I'm not articulating my thoughts well, so I'll get
> > to the point: If first-come, first-served is not the method by which
> > domain names are allocated, how on earth will conflicting claims of
> > preemptory rights in domain names be sorted out?
>
> Great question.
The problem is that trademark law does not map well onto the domain
name system. If it were, then you would see N top level domains, one
for each area that U.S. trademark law recognizes as distinct. But
that doesn't help, really, since other countries have different
trademark laws; why should the U.S. law be superior to other laws? So
then you have to have trademark.area.us for U.S. trademarks.
> > Currently, it seems that the person or entity with the greatest capacity
> > to purchase the services of legal counsel is most likely to wrangle a
> > domain name from others with competing claims.
>
> The strongest most often wins. Or the one with better brains. Not only in
> legal battles. It has very little to do with the question of fairness,
> life is unfair.
But the whole point behind a legal system is to decide questions based
on fairness. If you give up on the idea of a fair legal system, why
bother with having one? Why not just let powerful people do whatever
they want, when they want?
> > When I was approached by John Farran, CEO of Panavision LLP, I did not
> > "demand payment". Farran initiated telephone interaction, which included
> > foul language and threats. His abuse continued for several days. When I
> > finally made a written offer to transfer the domain in exchange for a cash
> > payment, he went "into orbit" as someone characterized it.
>
> Was it your attorney who wrote that offer letter?
Don't you think he'd be foolish to do otherwise?
--
-russ <nel...@crynwr.com> http://www.crynwr.com/~nelson
Crynwr Software sells network driver support | PGP ok
521 Pleasant Valley Rd. | +1 315 268 1925 voice | The more corrupt the state,
Potsdam, NY 13676-3213 | +1 315 268 9201 FAX | the more numerous the laws.
Robert P. Bell
elis...@acsu.buffalo.edu wrote:
> Teoppen says:
I registered a relatively small number of
> > (now) controversial names, such as panavision.com and
> > americanstandard.com, because I felt it would be interesting to see how
> > the world responded.
> >
>
> Did you satisfy your interest? You could have tried something with Elvis
> Presley or Disney, it would have been even more fun.
>
So this confirms that Mr. Toeppen's story about innocently creating a website for Pana,
Illinois is nothing but a crock? Where, pray tell, is the town of AmericanStandard, in
West Virginia?
Sorry, you are not an "innocent" user of these domain names. You have here admitted an
intent to tie up famous trademarks for friviolous (and possible profit-motivated)
purpose.
This is more akin to third world Trademark practice. In some third world countries,
the first-to-file would recieve a mark, regardless of whether they intended to use it
or not. Typicaly, the Dictator's nephew would scarf up all the trademarks for popular
American products (Coca-Cola, Levis, etc. etc.) and wait for those companies to enter
that market.
It became nothing more than a barrier to entry - an import tax. Your actions are doing
the same thing on the Internet. As a result, we have a (too strong, IMHO) new law
concerning "famous" marks. Who gets hurt? The innocent user of such marks.
Funny, my gut instincts about you were right on target.
Regards,
--Bob.
Robert P. Bell
Dennis Toeppen wrote:
>
> > If you had left out the part about the CEO of panavision 'ranting', I
> might have
> > believed the rest of it.
>
> John Farran called approximately five times over the course of two weeks.
> Why this is so hard for you to believe, I do not know.
you make such an ad hominem attack on Mr. Farran, I start to question the rest
of the story.
If you are an "innocent user" of the panavision.com domain, my sympathies.
But, given the new Trademark act, you'll probably have to fork over the rights
eventually. Since you do not seem to have a direct commercial interest at
stake, wny not change the Pana, Illinois website name to "Pana.com" or
"PanaIll.com" or some other name?
If you are one of those individuals who has seized upon the idea of reserving
domain names as a quick and easy way to make money without working, then you
have no sympathy from me at all. There are a lot of holes in your story, to
say the least. Your attacks on the personality of the Panavision ceo make me
wonder more.
But, good luck with your project in any event.
Regards,
--Bob.
elis...@acsu.buffalo.edu
> > Have these other *panavisions* asserted any claim to the domain? I
> > suspect that they didn't, so their existence is really not relevant.
>
> to another trademark holder?
Nothing was said about superiority of one TM holder's rights to the rights
of another TM holder, not in my posting, at least. The point was about
asserting an ownership claim by a TM holder before the ownership right can
be vested at all, which is a different point.
> > The strongest most often wins. Or the one with better brains. Not only in
> > legal battles. It has very little to do with the question of fairness,
> > life is unfair.
>
> But the whole point behind a legal system is to decide questions based
> on fairness. If you give up on the idea of a fair legal system, why
> bother with having one? Why not just let powerful people do whatever
> they want, when they want?
This is more philosophical than TM question. Nobody is giving up on the
idea of a fair legal system. I guess, each of us has his own idea of what
fairness is. Lack of maney here is very often a hurdle on the way to
justice, that can't be fair or right, in my opinion. But that's how it is.
> > > When I was approached by John Farran, CEO of Panavision LLP, I did not
> > > "demand payment". Farran initiated telephone interaction, which included
> > > foul language and threats. His abuse continued for several days. When I
> > > finally made a written offer to transfer the domain in exchange for a cash
> > > payment, he went "into orbit" as someone characterized it.
> >
> > Was it your attorney who wrote that offer letter?
>
> Don't you think he'd be foolish to do otherwise?
I have no knowledge about that, that's why the question was asked. There
are many things that are quite clearly foolish, but people do them anyway
for various reasons.
Maria
Chung & Press, P.C.
Andrew C. Greenberg wrote:
>
>
> Wish I were, Jeff. Consider the following excerpt:
>
> Toeppen's conduct varies from the two standard dilution theories.
> As a result of the state of Internet technology, Toeppen was able
> not merely "to lessen[] the capacity of a famous mark to identify
> and distinguish goods and services BUT TO ELIMINATE THE CAPACITY OF
> Panavision marks to identify and distinguish Panavision's goods and
> services on the Internet. THE COURT FINDS THAT TOEPPEN'S CONDUCT,
> WHICH PREVENTED PANAVISION FROM USING ITS MARKS IN A NEW AND IMPORTANT
> MEDIUM, HAS DILUTED PANAVISION'S MARKS WITHIN THE MEANING OF THE
> STATUTE.
>
> merely for his "denial of service" attack.
>
This is the only case I'm aware of in which dilution was found under
this type of theory. It's a real stretch if the person registers the
name but doesn't use it. Can denial of service apply to 800 numbers?
How about to phone numbers in other area codes (they are unique as
well). Most companies with 7-letter trademarks would have someone in
their area code using their name as a phone number. Is it a question of
intent? That's never been an element of dilution before. So, for
example, could Dominos Pizza sue an individual who happened to have the
phone number 366-4667 (dom-inos)? It makes no sense. Now, if they used
it to sell pizza, or advertised the phone number in a manner that
diluted (for another business), that would be another story.
Dan Press
Chung & Press, P.C.
McLean, VA
Andrew C. Greenberg
In article
<Pine.GSO.3.93.96112...@destrier.acsu.buffalo.edu>,
elis...@acsu.buffalo.edu wrote:
> > Panavision: Panavision LLP (movie cameras) and Panavision Jewelers (524
> > Fulton St, Brooklyn, NY 11201-5308 Phone: (718)855-8696)
> >
> [the list here]
>
> Have these other *panavisions* asserted any claim to the domain? I
> suspect that they didn't, so their existence is really not relevant.
Disagree. Panavision won by summary judgment on a dilution theory,
requiring a finding that the mark was famous. That is, so distinctive
that it is exclusively identified with the plaintiff and is entitled to
trademark-like protection against defendants without having to prove any
likelihood of confusion.
Accordingly, evidence of use of the mark in commerce by others is evidence
that the mark is not famous, and therefore relevant. If the mark was not
famous, the plaintiff would have a much tougher row to hoe, having to
prove not only that Toeppen was using a mark in commerce, but having to
prove that Toeppen's use was likely to cause confusion as to the source
or origin of Toeppen's goods and services. The court had already been
overreaching and had to create a novel legal theory to find a likelihood
of dilution.
Ordinarily, you see, noncompeting uses of trademarks are routinely
permitted. This is why the mark ABC can be shared by a television
network, a chain of liquor stores and a pizzeria chain. When used by
noncompeting entities, the mark may be appropriated for other uses not
likely to be confused with the previous three companies. Despite how
well-known is the network, "ABC" is probably not a famous mark.
Interestingly enough, Toeppen is said by the District Court not to have
challenged famousness at all upon summary judgment. Evidence of such
third party uses might have raised sufficient fact issues concerning
famousness to preclude summary judgment.
At any rate, the existence of uses of "Panavision" by third parties,
while not itself a defense (jus tertii), is relevant to evidence that
panavision is not a "famous" mark, within the meaning of the dilution
statute.
elis...@acsu.buffalo.edu
> >
> > Try Elvis Presley, great example.
>
> have seen typically involve right to publicity.
There was a fan club web site that had Elvis Presley's pictures, photos,
things like that. I think it was a pure fan meeting place, nothing
commercial. The site got stripped off by Presley Enterprise, though later
PE made some kind of a deal with that site. I can not recall off the top
of my head now what exactly the basis for the "stripping off" was. I can
check the URL and let you know, if your are interested. The site has the
title "Elvis left the Internet"
>
> > Besides, there was a recent case that
> > said that in getting a TM from the Trademark Office the Dilution statute
> > (the one you are aware of by now due to the Panavision case) shall not be
> > taken into account. Yet, a lawsuit can be perfectly brought and won under
> > the Dilution Statute. So you can even get a TM from the Trademark Office,
> > but lose under the Dilution law if you run into a famous mark even
> > without any likelihood of confusion at all.
>
> Please cite the case. I would think that such a result, while possible,
would require fairly remarkable facts. In fact, wasn't dilution recently
held not to be sufficient grounds for a cancellation petition?
yes I think we are talking about the same case here, though, I guess, my
wording was not accurate, sorry for that. The case I was talking about was
Babson Bros. Co v. Surge Power Corp. TTAB, No.97,242, 8/7/96). From the
summary of the case in the BNA: "The framers of The Federal Trademark
Dilution Act of 1995" did not intend to provide a new statutory ground for
opposition or cancellation,the TTAB held Aug.7 as a matter of first
impression, denying an opposer's motion to add a dilution claim to its
notice of opposition. " From the same BNA report: "The Act this created a
federal cause of action in the courts, and included as a remedy injunctive
relief against commercial use of defendant's mark.
The TTAB, however, is an administrative tribunal empowered only to
determine the right to register or maintain a registration... It is not
authorized to determine the right to use... Moreover, the Board edded, the
TTAB can not enjoin party from using a mark, and it can not award monetary
damages."
And so on, I can't cite the whole thing. So that case related to the
notice of opposition or cancellation proceedings. If that is not the case
you meant and you are interested in the one I cited, please, feel free to
drop me an e-mail and I will mail it to you.
Best,
Maria
Andrew C. Greenberg
> > Names of individuals can also turn out to be trademarks, as Mark Newton
> > discovered when Apple came calling for newton.com.
>
> Try Elvis Presley, great example.
I am unaware of any Presley-as-trademark cases. Most of the cases I
have seen typically involve right to publicity.
> Besides, there was a recent case that
> said that in getting a TM from the Trademark Office the Dilution statute
> (the one you are aware of by now due to the Panavision case) shall not be
> taken into account. Yet, a lawsuit can be perfectly brought and won under
> the Dilution Statute. So you can even get a TM from the Trademark Office,
> but lose under the Dilution law if you run into a famous mark even
> without any likelihood of confusion at all.
Please cite the case. I would think that such a result, while possible,
would require fairly remarkable facts. In fact, wasn't dilution recently
held not to be sufficient grounds for a cancellation petition?
--
Dennis Toeppen
Bob Bell sez...
People
>don't litigation "Just to see what happens". Another party told me you
>refused to answer where the $$$ came from to pay for the litigation.
>Contingency, perhaps?
>
>I conclude one of the following (or more):
>
>1. You are a sick fuck who craves attention.
>
>2. You were hoping to score big bucks without work by squatting domain names.
>
>3. You are just an asshole.
Dennis Toeppen
You are certainly quick to draw conclusions which you lack the information
to make. Also, your credibility is adversely impacted by the juvinile
manner in which you interact with others.
Dennis Toeppen
Maria, please clarify with whom you are communicating. Since you did not
include the name of the person with whom you are communicating, someone
might erroneously conclude that you are communicating with the original
poster, me.
Dennis Toeppen
den...@net66.com
In article
<Pine.GSO.3.93.961126...@orichalc.acsu.buffalo.edu>,
elis...@acsu.buffalo.edu wrote:
> > > Have these other *panavisions* asserted any claim to the domain? I
> > > suspect that they didn't, so their existence is really not relevant.
> >
Robert P. Bell
This is the level of "maturity" that Mr. Toeppen and Mr. Vorhees have.
After asking them both to stop polluting my mailbox with their diatribes,
I reived the following. I'm very impressed you two spend a lot of time
on the internet forging e-mails. Oooh! Aliasing! That should be hard
for an ISP to do.
From Mr. Vorhees:
From: big...@winslow.net66.com
Date: Wed, 27 Nov 1996 11:53:21 -0600 (CST)
To: rober...@BELLPAT.COM
Have an enjoyable Thanksgiving, Bob.
Nice try, Mark, but don't you think I can filter better than that?
From Mr. Toeppen:
From: "nots...@haha.com" <nots...@haha.com>
To: "Robert P. Bell" <Rober...@BELLPAT.COM>
Date: Wed, 27 Nov 96 11:43:30 -0400
Reply-To: "nots...@haha.com" <nots...@haha.com>
Priority: Normal
Subject: Re: panavision.com, the real story
I have little sympathy for either gentlemen or their causes.
--Bob
elis...@acsu.buffalo.edu
> Maria, please clarify with whom you are communicating. Since you did not
> include the name of the person with whom you are communicating, someone
> might erroneously conclude that you are communicating with the original
> poster, me.
>
> Dennis Toeppen
> den...@net66.com
Dennis, it is sort of hard to answer for several reasons. First, I forgot,
since there were several people who responded to your original posting,
the posting was quite interesting, in my opinion. I understand that in a
newsgroup a person is communicating with whoever reads the newsgroup, so
it is addressed to everybody. I don't think there is a great risk to
conclude I was addressing you. Except for your original posting, I didn't.
Second, you reposted to the newsgroup Bell's opinion of your persona, the
opinion not favorable at all. I haven't seen Bell's posting you replied to
in the newsgroup yet. If it was his private e-mail to you and you posted
it for everybody, I don't think it is an appropriate thing to do, no
matter how insulting that opinion may be. This is really between you two.
I personally have no desire to participate in a thread like that at all,
where people began to swear at each other. Yuck. So I am not participating
in that discussion neither with you nor with nobody else anymore.
Robert P. Bell
elis...@acsu.buffalo.edu wrote:
> If it was his private e-mail to you and you posted
> it for everybody, I don't think it is an appropriate thing to do, no
> matter how insulting that opinion may be.
Yes, it was a private e-mail message. Maria, my gut instincts about this Toeppen
character were right on. He has not been harrassing me with e-mail messages (see
earlier post).
I think I have said all there is to say, and the court has as well. Toeppen _lost_
the Panavision case, apparently. Sounds like sour grapes.
And that's the last I'll say about it as well.
Regards,
--Bob.
Robert P. Bell
Robert P. Bell wrote:
>
> From: big...@winslow.net66.com
> Date: Wed, 27 Nov 1996 11:53:21 -0600 (CST)
> To: rober...@BELLPAT.COM
>
> Have an enjoyable Thanksgiving, Bob.
>
My apologies, met66.com is the domain address of Mr. Toeppen, not Mr.
Vorhees
Robert P. Bell
Robert P. Bell wrote:
>
> elis...@acsu.buffalo.edu wrote:
> > If it was his private e-mail to you and you posted
> > it for everybody, I don't think it is an appropriate thing to do, no
> > matter how insulting that opinion may be.
>
> Yes, it was a private e-mail message. Maria, my gut instincts about this Toeppen
Steve Lawrenz
In article <werdna-2711...@192.0.2.23>,
Andrew C. Greenberg <wer...@gate.net> wrote:
>In article
><Pine.GSO.3.93.96112...@destrier.acsu.buffalo.edu>,
>elis...@acsu.buffalo.edu wrote:
>> > Names of individuals can also turn out to be trademarks, as Mark Newton
>> > discovered when Apple came calling for newton.com.
>>
>> Try Elvis Presley, great example.
>I am unaware of any Presley-as-trademark cases. Most of the cases I
>have seen typically involve right to publicity.
Here in Seattle, the King's estate has
been leaning on the owners of a bar called The
Velvet Elvis. Not sure what their theory is, or
whether they've filed a complaint. I'll
do a little checking and post again.
Carl Oppedahl
In article <e1ktj...@bigred.inka.de>,
Olaf Titz <ol...@bigred.inka.de> wrote:
>The only problem with this is, that most Americans (at least those
>participating in this discussion) seem to violently oppose any
>geography-based domain name scheme. I don't know why.
I have seen nothing to support this characterization of most
Americans.
What I have seen is companies, in many countries of the world, that
have international customer bases, and that don't want a domain name
tied to any particular country. This behavior is not limited to the
US. Recently I saw a company in .ES (Spain) trying to take away a
COM domain, presumably because they prefer .COM to .ES.
I have also seen the unworkable mess that has accumulated around the
US domain. If your business (using BIGRED.INKA.DE) were to move from
one part of Germany to another, you would get to keep the same domain
name. Nothing about the domain name ties to you any particular part
of Germany. In contrast, the .US domain has this terribly fragmented
micro-geographic tree structure, e.g. company.YORKTOWN-HEIGHTS.NY.US.
Now suppose company wishes to move to some other location within the
US. The new domain might be company.GRAND-RAPIDS.MI.US. So now they
have to lose all the accumulated goodwill associated with the previous
domain name -- all the web browser bookmarks, email address lists,
etc. Or the other choice is to continue to use the old domain name,
all the while making the public think they are still located a
thousand miles away from their true, new location.
I believe that if there were a domain name address space that was tied
to the US, but not fragmented further geographically, it would be
quite popular. Suppose there were a defined second-level-domain
COM.US, say. Then a company could register company.COM.US and would
not face the problem of micro-fragmentation within the US.
Nick Hilliard
Carl Oppedahl (oppe...@patents.com) said:
: US. Recently I saw a company in .ES (Spain) trying to take away a
Are you implying that there's something wrong with a Spanish company
registering a .COM domain?
Nick
Carl Oppedahl
In article <57n9du$e...@ezekiel.ieunet.ie>,
ni...@eunet.ie (Nick Hilliard) wrote:
>Carl Oppedahl (oppe...@patents.com) said:
>: Recently I saw a company in .ES (Spain) trying to take away a
>: COM domain, presumably because they prefer .COM to .ES.
>Are you implying that there's something wrong with a Spanish company
>registering a .COM domain?
I am implying nothing of the sort. Read what I wrote: "take away",
not "register".
In the case I am thinking of, there is a name (call it "foo") that is
used by many companies. The owner of foo.ES has a trademark for
particular goods, and the owner of foo.COM does not infringe that
trademark. Yet the owner of foo.ES wishes to take away the foo.COM
domain name from its owner.
You edited out my point when you quoted one sentence of my posting.
My point was that it is not *only* Americans (as suggested by a
previous poster) who are eager to own non-geographic domain names.
Nick Hilliard
Carl Oppedahl (oppe...@patents.com) said:
: In the case I am thinking of, there is a name (call it "foo") that is
: particular goods, and the owner of foo.COM does not infringe that
: trademark. Yet the owner of foo.ES wishes to take away the foo.COM
: domain name from its owner.
Oh fine. This wasn't 100% clear from your original posting.
Nick
Robert P. Bell
Carl Oppedahl wrote:
>
> In article <e1ktj...@bigred.inka.de>,
> Olaf Titz <ol...@bigred.inka.de> wrote:
>
> >The only problem with this is, that most Americans (at least those
> >participating in this discussion) seem to violently oppose any
> >geography-based domain name scheme. I don't know why.
>
> I have seen nothing to support this characterization of most
> Americans.
A MODEST PROPOSAL:
Not only include geographic description, but subject matter as well (as in
trademark classifications?). To wit:
Macdonalds.com =====> Macdonalds.hamburger.USA.COM
Panavision.com =====> Panavision.cameras.USA.COM
=====> Panavision.jewlers.USA.COM
=====> Pana.Illinois.USA.COM
Roadrunner.com ====> Roadrunner.ISP.USA.COM
====> Roadrunner.W-B.USA.COM
O.K., maybe it isn't a realistic solution, but it does illustrate the
_geographical_ and _subject matter_ limitations which are _missing_ from
domain names, and hence causing all the problems in the TM arena.
For those of you who say "it can't be done" because of technical reasons, hey
these are computers, they are supposed to be programmable to do what _we_
want them to do, not vice-versa.
Regards,
--Bob.
P.S. American and all for it.
Carl Oppedahl
In article <NELSON.96N...@desk.crynwr.com>,
nel...@desk.crynwr.com (Russell Nelson) wrote:
>In article <57n3va$1si0...@dell.panix.com> oppe...@patents.com
(Carl Oppedahl) writes:
>> In contrast, the .US domain has this terribly fragmented
>> micro-geographic tree structure,
>> e.g. company.YORKTOWN-HEIGHTS.NY.US.
>> Now suppose company wishes to move to
>> some other location within the
>> US. The new domain might be
>> company.GRAND-RAPIDS.MI.US. So now they
>> have to lose all the accumulated
>> goodwill associated with the previous
>> domain name
>Duh! I'm sorry, Carl, but you're being a dunce. There is no reason
>AT ALL why company.YORKTOWN-HEIGHTS.NY.US should have to change their
>name if they move. And given the cachet associated with Princeton,
>NJ, there is no reason why you can't have company.PRINCETON.NJ.US,
>even though they're nowhere near Princeton.
Thank you, Mr. Nelson, for your kind words.
It's a pity you edited out what I said after that:
>> Or the other choice is to continue to use the old domain name,
>> all the while making the public think they are still located a
>> thousand miles away from their true, new location.
If a business moves from one city in the US to some other city a
thousand miles away, it would be stupid to keep using a domain name
that is specific to the former location. It would mislead customers
and potential customers as to the location of the business. People
would be forever dialing directory assistance to the old city,
trying to get a phone number. The post office in the old city would
forever be getting misdirected mail. In other words, I disagree with
your view that "there is no reason" not to keep using the old
city-specific domain name.
The geographic-cachet idea is interesting. Perhaps in some lines of
business it would not be a problem to mislead the public about where
the business is located. But I suggest that there are probably some
lines of business in which it *would* be a problem, indeed might be
illegal.
---
Carl Oppedahl, oppe...@patents.com Oppedahl & Larson, patent law firm
http://www.patents.com/ is a web server with frequently asked questions
and answers on patent law and other intellectual property subjects
Carl Oppedahl
In article <329FA4...@BELLPAT.COM>,
"Robert P. Bell" <Rober...@BELLPAT.COM> wrote:
>A MODEST PROPOSAL:
>
>Not only include geographic description,
>but subject matter as well (as in
>trademark classifications?). To wit:
>Roadrunner.com ====> Roadrunner.ISP.USA.COM
>
> ====> Roadrunner.W-B.USA.COM
>
>O.K., maybe it isn't a realistic solution,
>but it does illustrate the
>_geographical_ and _subject matter_
>limitations which are _missing_ from
>domain names, and hence causing all
>the problems in the TM arena.
>
>For those of you who say "it can't be
>done" because of technical reasons, hey
>these are computers, they are supposed to
>be programmable to do what _we_
>want them to do, not vice-versa.
There are reasons why this proposal doesn't work, but the reasons are
not technical. The main reason is this -- roadrunner.com was and is
an ISP with a large number of customers whose email addresses were and
are of the form user...@roadrunner.com. NSI had stated its plans to
cut off "roadrunner.com" which would have destroyed the domain name
owner, for the simple reason that customers would not tolerate a
forced change of email address. They would simply leave the domain
name owner and switch to some other ISP.
Your proposal, which is that Roadrunner Computer Services stop using
"Roadrunner.com" and switch to "Roadrunner.ISP.USA.COM", would destroy
RCS in exactly the same way.
Those who would propose to redesign the domain name system (as NSI
purported to do when it announced its Second, Third, and Fourth
Policies, and as Mr. Bell does here) must take into account the
substantial investments of time and money that
present-day non-infringers put into their Internet domain names. A
forced change of domain name for no good reason destroys those
investments. It's not in the best interests of the Internet.
Where two parties both want a domain name, and one of them was already
using the domain name and is not infringing anybody's trademarks, I
cannot see what good reason there is for forcing the domain name owner
to give up its domain name. If anyone should have to accept a
second-choice domain name, not the domain name they really wanted, it
should be the one that wasn't already using the domain name.
Since I represented Roadrunner Computer Systems let me shift the
example elsewhere. Hasbro covets "clue.com" because they have a board
game called "Clue". Meanwhile, Clue Computing has been using
"clue.com" for many years, and (no big surprise here) has not, through
its computer consulting business, been infringing the childrens' game
trade mark.
Mr. Bell's proposal makes good sense *going forward*. Let Hasbro
register clue.hasbro.com (which they can already do without having to
inconvenience anyone else, since they already have "hasbro.com".)
The only harm in Mr. Bell's proposal is in applying it retroactively.
Russell Nelson
> In contrast, the .US domain has this terribly fragmented
> micro-geographic tree structure, e.g. company.YORKTOWN-HEIGHTS.NY.US.
> Now suppose company wishes to move to some other location within the
> US. The new domain might be company.GRAND-RAPIDS.MI.US. So now they
> have to lose all the accumulated goodwill associated with the previous
> domain name
Duh! I'm sorry, Carl, but you're being a dunce. There is no reason
AT ALL why company.YORKTOWN-HEIGHTS.NY.US should have to change their
name if they move. And given the cachet associated with Princeton,
NJ, there is no reason why you can't have company.PRINCETON.NJ.US,
even though they're nowhere near Princeton.
--
-russ <nel...@crynwr.com> http://www.crynwr.com/~nelson
Crynwr Software sells network driver support | PGP ok
521 Pleasant Valley Rd. | +1 315 268 1925 voice | The more corrupt the state,
Potsdam, NY 13676-3213 | +1 315 268 9201 FAX | the more numerous the laws.
Andrew C. Greenberg
In article <57o9cc$1sh8...@dell.panix.com>, oppe...@patents.com (Carl
Oppedahl) wrote:
> >For those of you who say "it can't be
> >done" because of technical reasons, hey
> >these are computers, they are supposed to
> >be programmable to do what _we_
> >want them to do, not vice-versa.
I agree with Bob, and have proposed an upward compatible approach to
DNS toward this end. See <http://www.gate.net/~werdna/domain.html>.
> There are reasons why this proposal doesn't work, but the reasons are
> not technical. The main reason is this -- roadrunner.com was and is
> an ISP with a large number of customers whose email addresses were and
> are of the form user...@roadrunner.com. NSI had stated its plans to
> cut off "roadrunner.com" which would have destroyed the domain name
> owner, for the simple reason that customers would not tolerate a
> forced change of email address. They would simply leave the domain
> name owner and switch to some other ISP.
Another difficulty of Bob's proposal is that the scope of a business's
business changes over time, as do the markets in which the business
operates. By linking the individual's identity and that scope of
business (and geographical zone of operation) to the domain name, we
force the business to either change its domain name periodically,
requiring massive updating of HTML and links everywhere, as well as
reeducating a public about how to reference the new name, or to stay
with its old identity, and be forever typecast in that original form.
acme.widgets.parentcorp.tampa.fl.usa may be fitting today, but when
I move across the bay into st. pete, things change. When I change
from widgets to widgets, tools and die, things change, and when
acme sells its assets to takeovercorp, things again change once more.
I actually prefer a shared "acme.com", with pointers to a database of
particularizing information. The particularizing information can
change over time, but the identity need not.
Andrew C. Greenberg
In article Carl Oppedahl wrote in response to a comment of Russell Nelson
concerning the issue of geographic particularizing of domain names.
The problem remains that you haven't solved the domain name problem. Two
companies in the same city (and many in ny.ny, sanfran.ca, or any other
large city) will have the same company name, though they are both entitled
to use their respective trademarks. In addition, by adding mutable traits
to the domain name, such as a current geographical location or a particular
good or service. the company is faced by the problem that as its identity
in the world adapts, it is type-cast into its first internet world-view.
In fact, the internet technology is lagging the reality of the commercial
marketplace in this regard, not the other way around. It is not the problem
of the commercial marketplace that it doesn't conform with the operation of
DNS, but the other way around.
In the beginning, middle and end of the day, acme's identity will be acme,
until acme changes to axxon, or something else for its own commercial
reasons. There can be many acme's, all legitimately operating in the same
geographical areas, and that is the point. Why can't they all share
"acme.domain"? There is no technical reason therefore, its just a matter
of technical will. That, and the owner of "acme.com", who is likely
pleased with the status quo, having frozen out all the other
acme's from that domain name.
I have a proposal that I think severs the mutable state information from
the identity itself and still permit a variety of "acme.com" names to be
shared among identities, still using the mutable state information to
distinguish between them.
See <http://www.gate.net/~werdna/domain.html>
Robert P. Bell
Carl Oppedahl wrote:
At 03:23 AM 11/30/96 GMT, you wrote:
>
>There are reasons why this proposal doesn't work, but the reasons are
>not technical. The main reason is this -- roadrunner.com was and is
>an ISP with a large number of customers whose email addresses were and
>are of the form user...@roadrunner.com. NSI had stated its plans to
>cut off "roadrunner.com" which would have destroyed the domain name
>owner, for the simple reason that customers would not tolerate a
>forced change of email address. They would simply leave the domain
>name owner and switch to some other ISP.
Too many people are moving into Northern Virginia, so they are _again_
adding new area codes. We'll have to update our phone directories, send
out announcements, etc. etc.
A big pain in the butt, especially when clients get a recorded message
that a "number is no longer in service".
Destroy business? Maybe, but I think Bell Atlantic will survive.
I find it hard to believe that you keep dredging up this "burden on the
defendant" issue as if it had some basis in the LAW. Granted it is
unfair, and in this instance, the Trademark case is probably weak. BUT,
it is not a legal ground of defense. And even if it were, I think it
specious.
E-mail can be aliased, forwarded, and otherwise manipulated for a
transition period of 30, 60, or 90 days. If Roadrunner was forced to
switch, it would not be the end of the world for them. A burden, yes,
but not the end of the world. Suppose their name was GeneralMotors.COM,
same analysis?
BTW, if you READ my posting, it was suggested (half-humoursly) as a means
of solving the problem of domain names versus Trademarks, to wit:
Trademarks have _geographical_ limitations, domain names do not.
Trademarks have subject matter classification, domain names do
not.
As I'm sure you will agree, that is the core of the problem, especially
when four or five entities are using the same mark in different areas
(geographical or subject matter).
Regards,
--Bob.
Carl Oppedahl
In article <32A1FF...@BELLPAT.COM>,
"Robert P. Bell" <Rober...@BELLPAT.COM> wrote:
It is disingenuous at best to compare Bell Atlantic with an ISP. Bell
Atlantic is a monopoly supplier of telephone numbers in Northern
Virginia, or so close to it as to make no matter. As such, it stands
no risk of losing customers because of their telephone numbers
changing.
Roadrunner Computer is not a monopoly supplier of email addresses. It
has tens of thousands of competitors. Even if you restrict its sphere
of competitors to those who can dial local calls to reach Roadrunner,
there are competitors.
A second reason it is dishonest to make this comparison is that when
an area code splits, the burden falls on *everyone* in that area code,
regardless of who supplies their dial tones. A forced cutoff of
"roadrunner.com" is not a burden that falls on everyone in the
Internet.
>I find it hard to believe that you keep
>dredging up this "burden on the
>defendant" issues as if it had some basis
>in the LAW. Granted it is unfair,
>and in this instance, the Trademark case
>is probably weak. BUT, it is not a
>legal ground of defense.
It is important to be well-informed regarding the law of preliminary
injunctive relief. It is well established in most jurisdictions that
preliminary injunctive relief will be granted *only* after a balancing
of the hardships on the two parties. In other words, it is
indeed a defense (except in NSI's court) to a proposed grant of
preliminary injunctive relief that an undue burden would be imposed on
the defendant. What NSI grants is preliminary injunctive relief,
without bothering to consider the balance of hardships on the parties
or likelihood of success on the merits.
>E-mail can be aliased, forwarded, and
>otherwise manipulated for a transition
>period of 30, 60, or 90 days. If Roadrunner
>was forced to switch, it would
>not be the end of the world for them.
I am sorry to have to say it, but your view is incorrect. It would
have destroyed them, same as it would have destroyed Juno Online for
their domain name "juno.com" to be cut off. Talk to any ISP with
thousands or hundreds of thousands of customers, and they will tell
you the same thing.
>BTW, if you READ my posting, it was
>suggested (half-humoursly) as a means of
>solving the problem of domain names
>versus Trademarks, to wit:
>
> Trademarks have _geographical_
>limitations, domain names do not.
Well, not all domain names do. But look at the 180 or so two-letter
top-level domain names. They all have geographical connotations.
> Trademarks have subject matter
>classification, domain names do not.
>As I'm sure you will agree, that
>is the core of the problem, especially when
>four or five entities are using the same
>mark in different areas
>(geographical or subject matter).
No, it's not the core. No more than with easily spelled 800 numbers
or stock ticker symbols.
There was no problem that needed fixing, none at all, until the Second
NSI policy. Until then, the courts were more than adequate to
straighten out the handful of disputes that had arisen.
Robert P. Bell
Carl Oppedahl wrote:
> It is important to be well-informed regarding the law of preliminary
> injunctive relief. It is well established in most jurisdictions that
> preliminary injunctive relief will be granted *only* after a balancing
> of the hardships on the two parties. In other words, it is
> indeed a defense (except in NSI's court) to a proposed grant of
> preliminary injunctive relief that an undue burden would be imposed on
> the defendant. What NSI grants is preliminary injunctive relief,
> without bothering to consider the balance of hardships on the parties
> or likelihood of success on the merits.
>
I agree, but your earlier post did not make it clear you were referring to
injunctive relief (or at least, I missed it). Since the "infringement" has been
going on for years already, it is hard to argue irrepreable hard to Plaintiff, and
the burden on Defendant is great.
But as an overall defense to a TM infringement, no.
Regards,
--Bob.
Richard Sexton
In article <werdna-0112...@192.0.2.23>,
> See <http://www.gate.net/~werdna/domain.html>
Well, apart from the fact I doubt digital-1.com or ibm-1.com
or sun-1.com would fly, it's a great idea.
People are looking for names, not numbers. If they wanted numbers
they'd use IP's.
The problem is the scarcity of domain names. The Internet solves
problems of scarcity by creating new resources.
New TLD's to the rescue; let people use the names they want.
--
Richard Sexton
ric...@alter.nic When good enough isn't good enough
ric...@vrx.net
Carl Oppedahl
In article <581k20$6...@gold.interlog.com>,
ric...@interlog.com (Richard Sexton) wrote:
>In article <werdna-0112...@192.0.2.23>,
>> See <http://www.gate.net/~werdna/domain.html>
>
>Well, apart from the fact I doubt digital-1.com or ibm-1.com
>or sun-1.com would fly, it's a great idea.
>
>People are looking for names, not numbers. If they wanted numbers
>they'd use IP's.
>
>The problem is the scarcity of domain names. The Internet solves
>problems of scarcity by creating new resources.
>
>New TLD's to the rescue; let people use the names they want.
I see no scarcity. Can you explain where the scarcity is?
First, I see no scarcity to the left of the dot. As far as I can see,
there is room for plenty more letters to the left of the dot. If
"united.com" is taken and United Van Lines wants a domain name, what's
wrong with "unitedvan.com" or "unitedvanlines.com"?
I also see no scarcity to the right of the dot. The fact is that
there are now over 180 tld's (recall all those two-letter country-type
tlds).
The real problem, to the extent there is one, is that large companies
attach great significance to COM domains that are identical to their
own names. Adding letters to the left of the dot, or the right of the
dot, won't change that instantly or even soon. NSI exacerbates it by
enacting its terribly flawed domain name trademark policy that makes
trademark owners think they don't need to go to court to get the
domain name they covet. See <http://www.patents.com/nsi.sht> for
more on the flawed NSI policy.
Ram Samudrala
Carl Oppedahl (oppe...@patents.com) wrote:
>First, I see no scarcity to the left of the dot. As far as I can see,
>there is room for plenty more letters to the left of the dot. If
>"united.com" is taken and United Van Lines wants a domain name, what's
>wrong with "unitedvan.com" or "unitedvanlines.com"?
>I also see no scarcity to the right of the dot. The fact is that
>there are now over 180 tld's (recall all those two-letter country-type
>tlds).
You've hit right on the head! It's not technology that's lagging,
it's attitudes of companies (and the policies of NSI). The present
system is more than adequate to handle the problem, but as you point
out:
>The real problem, to the extent there is one, is that large companies
>attach great significance to COM domains that are identical to their
>own names.
--Ram
m...@ram.org || http://www.ram.org || http://www.twisted-helices.com/th
Unfortunately people are not rebelling against Microsoft.
They don't know any better. ---Steve Jobs
Andrew C. Greenberg
> Carl Oppedahl (oppe...@patents.com) wrote:
>
> >First, I see no scarcity to the left of the dot. As far as I can see,
> >there is room for plenty more letters to the left of the dot. If
> >"united.com" is taken and United Van Lines wants a domain name, what's
> >wrong with "unitedvan.com" or "unitedvanlines.com"?
>
> >I also see no scarcity to the right of the dot. The fact is that
> >there are now over 180 tld's (recall all those two-letter country-type
> >tlds).
As I noted, the TLD's resolve little. Which city gets to call itself
St. Petersburg? There will be conflicts even in city names. Consensus
on National abbreviations were agreed upon only after fierce negotiation.
Moreover, what happens when two entities in the same city want the same
domain name "to the left of the dot?" This happens with great regularity
even here in Tampa, and far more so in cities of comparable and larger
size. We are simply moving the problem off to another time and another place.
A recent comment noting that abc-3.com and abc-5.com are unattractive
names (and, to be sure, they are) did not observe that neither would be
"known" by their number. Under nDNS, Users would typically type "abc",
and be either defaulted into the proper number or given a menu asking
"network or pizzeria" in accordance with their software.
dh...@ether.rahul.net
In <werdna-0412...@192.0.2.23> wer...@gate.net (Andrew C.
Greenberg) writes:
>Under nDNS, Users would typically type "abc",
>and be either defaulted into the proper number or given a menu asking
>"network or pizzeria" in accordance with their software.
Regrettably, there is a technical reason why this will be unworkable.
The reason is this: It's impossible to assume that the user is always
available to interactively resolve ambiguities. Consider:
- Email is often processed when no human user is available to
interactively resolve ambiguities. Email may be saved in a queue and
processed later, or it might be forwarded via a .forward file and
processed without human intervention.
- How about links in web pages? Will we require each link to
include the numeric suffix? The person with the web browser does
not know which suffix was intended by the person creating the web page.
- How about background jobs? Users often do something like
% ncftp ftp://some.example.com/pub/files/some.program >& Log &
% logout
The only reliable thing to do will be to always include the numeric suffix.
--
Rahul Dhesi <dh...@ether.rahul.net>
"please ignore Dhesi" -- Mark Crispin <m...@CAC.Washington.EDU>
Eric Edwards
In article <werdna-0112...@192.0.2.23>, Andrew C. Greenberg writes:
> In article Carl Oppedahl wrote in response to a comment of Russell Nelson
> concerning the issue of geographic particularizing of domain names.
>
> The problem remains that you haven't solved the domain name problem. Two
> companies in the same city (and many in ny.ny, sanfran.ca, or any other
> large city) will have the same company name, though they are both entitled
> to use their respective trademarks. In addition, by adding mutable traits
> to the domain name, such as a current geographical location or a particular
> good or service. the company is faced by the problem that as its identity
> in the world adapts, it is type-cast into its first internet world-view.
Only if the company restricts itself to only one domain name. This is not
necessary.
If acme makes both widgits and doodads, is would be apropriate that they
would exist as both acme.widgits.com and acme.doodads.com
If they decided to start makeing cars, they would register acme.autos.com,
sprinkling CNAME's to cover shared resources.
If acme abandons the widgit business, then acme.widgits.com will be
phased out and eventually relinquished back to the pool.
If acme decides to abandeon all current buiness and enter a new market
then domain name confusion is going to be the least of their problems.
[snip]
> I have a proposal that I think severs the mutable state information from
> the identity itself and still permit a variety of "acme.com" names to be
> shared among identities, still using the mutable state information to
> distinguish between them.
>
> See <http://www.gate.net/~werdna/domain.html>
I looked. You are proposing that, when looking up acme.com, the resolver
prompt the user and ask him/her which one they want. This might work for
web clients, ftp, and telnet clients.
But many, many dns queries are not user initiated. The user may not even
be arround. Email, nntp, web crawlers, etc, etc. They all use domain
names. They can't wait for the sysadmin to come back to the console and click
on the dialog box.
If you just want to patch up web client access, then you don't even need a
new protocols. All you need is for www.acme.com homepage to made up of
links to all the various acmes. To see a real life example of this, check
out <http://www.southwest.com>
----
"..very sad life. Probably have very sad death. But there's symetry"
Remember the home hobbyist computer: Born 1975, died April 29, 1994