Monday, April 6, 1998

Mon Apr 06, 1998 07:59:44 PM moderator_michelle_s:Hello, my name is Michelle Spaulding, and I'll be moderating this evening's seminar. We will be discussing material on this week's topic, domain names. Specifically, I'd like to see discussion on when use of a trademarked name (by other than the trademark owner) as a domain name should constitute trademark infringement dilution. Additionally, we may discuss the sufficiency of the current system of allocating top-level domain names. Please join in, I will only help guide the discussion.

Mon Apr 06, 1998 07:59:49 PM moderator_michelle_s:There!

Mon Apr 06, 1998 08:02:12 PM moderator_michelle_s:Note: It should read trademark infringement OR dilution in the above paragraph.

Mon Apr 06, 1998 08:03:39 PM moderator_michelle_s:I realize that many of you may not have had a chance to do this week's reading . . .

Mon Apr 06, 1998 08:03:50 PM moderator_michelle_s:So I'll start us off with a scenario.

Mon Apr 06, 1998 08:05:13 PM moderator_michelle_s:If a user registers the domain name "" and tries to get Pepsico to pay him to get the domain name, what rights does Pepsico have under current trademark law?

Mon Apr 06, 1998 08:06:02 PM moderator_michelle_s:Alternatively, considering that the Internet is a new and different medium, what rights do you think Pepsico should or should not have?

Mon Apr 06, 1998 08:09:31 PM rebecca_j:Not having read this week's readings or possessing much real knowledge of trademark law I am poorly prepared. However, it would seem Pepsico should not have to pay for something already owned, if indeed, the company owns "pepsi>"

Mon Apr 06, 1998 08:10:29 PM moderator_michelle_s:Let's assume that Pepsico does own the trademark in Pepsi. Should this make a difference for the domain name?

Mon Apr 06, 1998 08:10:43 PM robert_m:you picked a unique about a simple name like refering to over a thousand companies that use that name in their businesses.

Mon Apr 06, 1998 08:11:11 PM moderator_michelle_s:Alter the scenario a bit. Say that the person who registered it, did so because his dog's name is Pepsi and he puts pictures of his dog there.

Mon Apr 06, 1998 08:11:53 PM rebecca_j: ""?

Mon Apr 06, 1998 08:12:03 PM rebecca_j: ""?

Mon Apr 06, 1998 08:12:05 PM moderator_michelle_s:yes

Mon Apr 06, 1998 08:12:40 PM moderator_michelle_s:Should Pepsi have the domain name handed to them because they have trademarked the soft drink?

Mon Apr 06, 1998 08:13:22 PM moderator_michelle_s:What if the person who registered it did so because their business name was Pepsi, also?

Mon Apr 06, 1998 08:13:58 PM rebecca_j:His business is named after his dog?

Mon Apr 06, 1998 08:14:09 PM rebecca_j:What is his business?

Mon Apr 06, 1998 08:14:40 PM moderator_michelle_s:Sorry -- I was offering different versions of the same scenario. In one, it was personal use for his dog pictures . . .

Mon Apr 06, 1998 08:14:57 PM moderator_michelle_s:In another, it was a business with the same name, to offer another way to look at it . . .

Mon Apr 06, 1998 08:14:59 PM robert_m:the www belongs to everone. as long as the registered owner tells people that he has a dog named---pepsi---and not the owner of a soft drink, he should be ab

Mon Apr 06, 1998 08:16:00 PM moderator_michelle_s:What it appears you're referring to Robert is classic trademark infringement.

Mon Apr 06, 1998 08:16:29 PM moderator_michelle_s:The businesses must be in some competition, and the test is whether a consumer would be confused as to the source of the product.

Mon Apr 06, 1998 08:16:49 PM moderator_michelle_s:However, trademark dilution is increasingly being employed to litigate this issue.

Mon Apr 06, 1998 08:17:47 PM moderator_michelle_s:Dilution does not require competition nor consumer confusion. Only that the use of the mark by another lessens the effectiveness for the trademark owner in one of two ways.

Mon Apr 06, 1998 08:21:07 PM robert_m:pepsi is really a unique example of a name------please pick another one--------there are 35 different companies that have the trademark----SMART___in different catagories ----the first person to register the domain get it.

Mon Apr 06, 1998 08:22:39 PM moderator_michelle_s:Well, I purposely picked a pretty unique name for a very specific reason -- we all know Pepsi sells a cola product. But does that mean they should be the only ones to get rights to that name on the Web?

Mon Apr 06, 1998 08:22:44 PM rebecca_j:Smart may be a better example for some discussion. However, I would like to know more about a univque name suech as Pepsi, too.

Mon Apr 06, 1998 08:23:50 PM rebecca_j:How is the web different from other worlds?

Mon Apr 06, 1998 08:24:19 PM rebecca_j:If Pepsico owns that name elsewhere, why not on the web?

Mon Apr 06, 1998 08:24:48 PM moderator_michelle_s:Pepsi is protected by federal (U.S.) trademark. But what if someone in France has a company called Pepsi?

Mon Apr 06, 1998 08:25:10 PM moderator_michelle_s:The Web is not restricted to U.S. citizens only . . . and this presents clashes in the laws.

Mon Apr 06, 1998 08:25:28 PM rebecca_j:Ok, now the difference begins to take shape.

Mon Apr 06, 1998 08:26:08 PM rebecca_j:Does France have comparable trademark protection?

Mon Apr 06, 1998 08:26:41 PM rebecca_j:If the French company comes to the U.S. to do business...

Mon Apr 06, 1998 08:27:17 PM rebecca_j:How is that conflict resolved in non-web situations?

Mon Apr 06, 1998 08:27:36 PM moderator_michelle_s:What we're talking about here is the French company doing business in France, but US users can access it as easily as French users.

Mon Apr 06, 1998 08:29:08 PM rebecca_j:Then, perhaps, Pepsi can't "own" that name online.

Mon Apr 06, 1998 08:31:34 PM rebecca_j:Well Betsy, was it my bad breath?

Mon Apr 06, 1998 08:32:24 PM moderator_betsy_r:I'm sorry, I just joined and I don't see michelle. what are we discussing?

Mon Apr 06, 1998 08:32:49 PM rebecca_j:Everyone left.

Mon Apr 06, 1998 08:33:16 PM rebecca_j:We were trying to discuss trademark infringement...

Mon Apr 06, 1998 08:34:04 PM moderator_joseph_l:looks like we are having technical difficulties

Mon Apr 06, 1998 08:34:21 PM rebecca_j:You mean it wasn't my breath?

Mon Apr 06, 1998 08:34:30 PM moderator_joseph_l:certainly not :)

Mon Apr 06, 1998 08:34:45 PM moderator_joseph_l:maybe we should keep going with the discussion ...

Mon Apr 06, 1998 08:34:51 PM moderator_joseph_l:until she gets back?

Mon Apr 06, 1998 08:35:05 PM rebecca_j:I was in solitude, something I normally appreciate, but not in a chat.

Mon Apr 06, 1998 08:35:44 PM moderator_betsy_r:Joe, can you get us into the hypo a bit?

Mon Apr 06, 1998 08:35:51 PM moderator_joseph_l: :). What about the idea of registering a trademark and then selling it at a profit? E.g. any problems with that?

Mon Apr 06, 1998 08:35:55 PM moderator_jack_l:hi all; Michelle says she'll be right back. Her software locked up.

Mon Apr 06, 1998 08:36:19 PM moderator_michelle_s:Hi -- sorry about that! I thought you guys were just typing really slow!

Mon Apr 06, 1998 08:36:19 PM robert_m:pepsi does not own the rights to every word in every language in every country in the world---spelled--PEPSI---------MOST PEOPLE SHOULD START TO COMPREHEND THAT THE WWW IS GLOBAL

Mon Apr 06, 1998 08:36:53 PM moderator_joseph_l:so, then a first-come-first-served idea would be better in your view?

Mon Apr 06, 1998 08:37:15 PM moderator_michelle_s:but what about ease of use for consumer?

Mon Apr 06, 1998 08:37:37 PM robert_m:IT IS NOT THAT IT IS BETTER------BUT JUST A FACT OF LIFE

Mon Apr 06, 1998 08:37:53 PM moderator_michelle_s:Consumers like to type in Pepsi -- have the browser supply the .com -- and get to Pepsico products

Mon Apr 06, 1998 08:38:25 PM moderator_michelle_s:U.S. trademark law is designed to protect the consumer, isn't it?

Mon Apr 06, 1998 08:39:01 PM rebecca_j:Is consumer comfort the motivation of the law?

Mon Apr 06, 1998 08:39:11 PM moderator_michelle_s:Well, I wouldn't say "comfort"

Mon Apr 06, 1998 08:39:25 PM moderator_michelle_s:But it is designed so that a consumer can identify the source of a product . . .

Mon Apr 06, 1998 08:39:34 PM moderator_betsy_r:Will confusion arise if "pepsi" turns up something else?

Mon Apr 06, 1998 08:39:58 PM rebecca_j:Source of the product, not a space on the web?

Mon Apr 06, 1998 08:40:08 PM robert_m:pepsi is still a bad example because it is very unique--------try-------fortune-time--life--------------

Mon Apr 06, 1998 08:40:46 PM moderator_michelle_s:Robert -- I used the unique name for a reason. If however, you would like to change the course of the discussion, please offer an alternative hypothetical to discuss . . .

Mon Apr 06, 1998 08:41:34 PM moderator_betsy_r:Robert, should TM treaties have an impact on your "globalization" of TMs argument?

Mon Apr 06, 1998 08:43:11 PM robert_m:let us pick a name that is trademarked by 25 different companies-------like---------LIFE-------CEREAL, PERFUME, MAGAZINE, ECT.

Mon Apr 06, 1998 08:43:37 PM moderator_michelle_s:Please, Robert, feel free to alter the hypo and present the one you'd like to discuss . . .

Mon Apr 06, 1998 08:44:26 PM moderator_betsy_r:I mean, _should_ compaies have a monopoly worldwide over their spelling or shape, etc.

Mon Apr 06, 1998 08:46:05 PM rebecca_j:In Robert's example names, common spellings of common words, how could a company have a monoploy?

Mon Apr 06, 1998 08:46:14 PM moderator_michelle_s:So, if Life magazine and Life cereal were litigating "", who should get it?

Mon Apr 06, 1998 08:46:43 PM rebecca_j:first on to it...

Mon Apr 06, 1998 08:47:08 PM moderator_michelle_s:but that's the way it's currently done -- and there are huge problems arising. How should they be handled?

Mon Apr 06, 1998 08:47:35 PM rebecca_j:What are the alternatives?

Mon Apr 06, 1998 08:47:49 PM robert_m:I CANNOT UNDERSTAND HOW ONE COMPANY CAN DEMAND TO capture his name all over the world---------if he were smart enough to run a big corporation he shoukd of been smart enough to be first to dicver the use of a new media technology

Mon Apr 06, 1998 08:48:25 PM moderator_michelle_s:But Robert, what if there is an actual issue and it's not about demand?

Mon Apr 06, 1998 08:48:54 PM moderator_michelle_s:Take the Loreal case -- Loreal wants, but so do the makers of the game "Perfection"

Mon Apr 06, 1998 08:50:07 PM rebecca_j:So, Robert, you are saying first come, first serve?

Mon Apr 06, 1998 08:50:09 PM moderator_betsy_r:one alternative: indexing within names so everyone gets one they want and then the user gets a choice.

Mon Apr 06, 1998 08:51:01 PM robert_m:guess what------i want that word too-----but if i am not first------i not not cry about it

Mon Apr 06, 1998 08:51:43 PM rebecca_j:Perfection_game, perfection_smell ???

Mon Apr 06, 1998 08:51:47 PM moderator_michelle_s:Yes, Robert is apparently saying first come, first served should handle it. Are there any alternative viewpoints?

Mon Apr 06, 1998 08:52:19 PM moderator_betsy_r:Robert, are you concerned about whining, or about economic concerns?

Mon Apr 06, 1998 08:52:40 PM robert_m:big companies do not like the fact that the www makes us all equal in our businesses

Mon Apr 06, 1998 08:53:05 PM moderator_michelle_s:But what about the Panavision case?

Mon Apr 06, 1998 08:53:17 PM rebecca_j:Does the web really make all of us equal?

Mon Apr 06, 1998 08:53:31 PM moderator_michelle_s:Dennis Toeppen registered and put up an aerial view of Pana, Illinois.

Mon Apr 06, 1998 08:53:39 PM moderator_michelle_s:Or Pana, somewhere

Mon Apr 06, 1998 08:54:11 PM moderator_michelle_s:Should the time, money, and other investment Panasonic put into Panavision go down the drain because Dennis Toeppen wanted money from them?

Mon Apr 06, 1998 08:54:32 PM robert_m:as long as he does not profess to sell tv sets-----it is ok

Mon Apr 06, 1998 08:54:50 PM moderator_michelle_s:But that's just trademark infringement -- what about dilution?

Mon Apr 06, 1998 08:54:57 PM rebecca_j:But did Dennis take the name to sell it?

Mon Apr 06, 1998 08:55:11 PM moderator_michelle_s:Actually, he took the name to prove a point, then to sell it . . .

Mon Apr 06, 1998 08:56:40 PM moderator_michelle_s:We've got about five minutes left in our hour. This would be a good time to resolve any lingering questions . . .

Mon Apr 06, 1998 08:57:02 PM rebecca_j:I still want an answer on pepsi.

Mon Apr 06, 1998 08:57:28 PM moderator_michelle_s:OK -- but please refresh me (my earlier screen is gone) -- what would you like answered?

Mon Apr 06, 1998 08:58:15 PM rebecca_j:France ... U.S. ... what are the possible solutions to companies in two countries with like trademarks?

Mon Apr 06, 1998 08:58:18 PM robert_m:if Dennis does not want any money from Panavision--he should have the right to keep it----------if his ONLY INTENT WAS TO SELL THE NAME-THAT SEEMS-UNETHICALE

Mon Apr 06, 1998 08:59:10 PM moderator_michelle_s:To be honest, Rebecca -- I can't answer that question. I do know that we have reciprocal TM treaties with other countries so we may be protected there.

Mon Apr 06, 1998 08:59:24 PM rebecca_j:I agree with "unethical" Robert. Where is the legal answer?

Mon Apr 06, 1998 08:59:53 PM moderator_michelle_s:I believe, however, that U.S. TM law trumps within the U.S.

Mon Apr 06, 1998 09:00:06 PM rebecca_j:Thanks Michelle. What about someone taking the name in U.S. and then trying to sell it?

Mon Apr 06, 1998 09:00:20 PM moderator_michelle_s:On the Internet or in real space?

Mon Apr 06, 1998 09:00:31 PM moderator_betsy_r:Rebecca: that would be a great question for the threaded conference.

Mon Apr 06, 1998 09:00:56 PM moderator_jack_l:Rebecca -- I'll look up the answer on the international TM question; there is a fairly clear answer I believe. Check the threaded discussion page sometime tomorrow.

Mon Apr 06, 1998 09:01:28 PM rebecca_j:And, is there a difference between "dictionary" words and "unique" names?

Mon Apr 06, 1998 09:02:11 PM moderator_michelle_s:If you go through this week's reading, you'll see where the "unique" aspect comes into play . . .

Mon Apr 06, 1998 09:02:32 PM rebecca_j:Will next week's readings be up earlier?

Mon Apr 06, 1998 09:03:18 PM moderator_michelle_s:They are slated to be up Monday mornings. Would you like to see them up on Sundays instead?

Mon Apr 06, 1998 09:03:21 PM moderator_betsy_r:Joe's Trademark Primer is great on what "uniqueness" entitles a word to, in trademark.

Mon Apr 06, 1998 09:03:46 PM rebecca_j:I have a heavy teaching and meeting schedule on Mondays and can't get to them.

Mon Apr 06, 1998 09:03:46 PM moderator_michelle_s:The URL, please, Betsy (I'm not sure they could find it under "Joe's Trademark Primer")!

Mon Apr 06, 1998 09:04:09 PM moderator_michelle_s:So would Sundays be better do you think?

Mon Apr 06, 1998 09:04:20 PM rebecca_j:Sundays would be much better.

Mon Apr 06, 1998 09:04:25 PM moderator_betsy_r:Sorry. it's in the "library" within "resources".

Mon Apr 06, 1998 09:04:46 PM moderator_michelle_s:OK -- I'll pass that along, Rebecca. And thanks, Betsy : )

Mon Apr 06, 1998 09:05:43 PM moderator_michelle_s:OK -- I'm going to call it now. If you have any further questions, please review this week's module and post any questions or thoughts in the threaded conference! Thanks for participating!

Mon Apr 06, 1998 09:05:56 PM rebecca_j:Thanks to you.

Mon Apr 06, 1998 09:06:40 PM robert_m:THANKS

Mon Apr 06, 1998 09:07:00 PM moderator_betsy_r:Bye! :)

Mon Apr 06, 1998 09:20:45 PM moderator_michelle_s:Note: If you are logging in from a non-U.S. country, please be advised that we are operating under Daylight Savings Time. The time now is one hour ahead of Eastern Standard Time.

Mon Apr 06, 1998 09:23:16 PM ashok:Hi. I know I am late but got my time zones wrong - callingfrom Australia. Will do better next time