A trademark owner sues NSI over a domain name

A trademark owner sues NSI over a domain name

Post by Carl Oppeda » Sat, 03 Aug 1996 04:00:00



The last half a dozen times that NSI got sued it was by a domain name
owner who had received a 30-day letter.  Now we have a case where it
appears that a trademark owner won an NSI challenge proceeding and got
NSI to put a domain name on hold.  Now the trademark owner is suing
NSI and (apparently) the domain name owner, presumably asking that it
be given the domain name.  Some information about the case may be
found at <http://www.patents.com/porsche/porsche.sht>.

---

http://www.patents.com/ is a web server with frequently asked questions
  and answers on patent law and other intellectual property subjects

 
 
 

A trademark owner sues NSI over a domain name

Post by Richard Sext » Sat, 03 Aug 1996 04:00:00




>The last half a dozen times that NSI got sued it was by a domain name
>owner who had received a 30-day letter.  Now we have a case where it
>appears that a trademark owner won an NSI challenge proceeding and got
>NSI to put a domain name on hold.  Now the trademark owner is suing
>NSI and (apparently) the domain name owner, presumably asking that it
>be given the domain name.  Some information about the case may be
>found at <http://www.patents.com/porsche/porsche.sht>.

INteresting:

Here is the Whois record for PORSCHE.COM:

Heinz Porsche Langeneckert Consulting (PORSCHE2-DOM)
   subsidiary of The Zone One Group Ltd.
   201 Varick Street #290
   New York, N.Y. 10014-0290
   USA

   Domain Name: PORSCHE.COM
   Domain Status: On Hold

   Administrative Contact, Technical Contact, Zone Contact:

      212/785-1024 (FAX) 212/747-9232
   Billing Contact:

      718/884-9970

Now, is there really a guy here with Porsche in his name, in which case
I don't see why he isn't entitled to use it (ala Mrs. Sassoon)
or is that part just sort of, well, um, made up?

I assume we're talking Porsche GmBH here, or is it Porsche North America,
or Porsche Engineering?

I'd better tell my freind Fred Ferrari about this.

--
Richard Sexton


 
 
 

A trademark owner sues NSI over a domain name

Post by Tom Coradesc » Sat, 03 Aug 1996 04:00:00




>>The last half a dozen times that NSI got sued it was by a domain name
>>owner who had received a 30-day letter.  Now we have a case where it
>>appears that a trademark owner won an NSI challenge proceeding and got
>>NSI to put a domain name on hold.  Now the trademark owner is suing
>>NSI and (apparently) the domain name owner, presumably asking that it
>>be given the domain name.  Some information about the case may be
>>found at <http://www.patents.com/porsche/porsche.sht>.

>Here is the Whois record for PORSCHE.COM:

>Heinz Porsche Langeneckert Consulting (PORSCHE2-DOM)
>   subsidiary of The Zone One Group Ltd.
>   201 Varick Street #290
>   New York, N.Y. 10014-0290
>   USA

>   Domain Name: PORSCHE.COM
>   Domain Status: On Hold

>   Administrative Contact, Technical Contact, Zone Contact:

>      212/785-1024 (FAX) 212/747-9232
>   Billing Contact:

>      718/884-9970

>Now, is there really a guy here with Porsche in his name, in which case
>I don't see why he isn't entitled to use it (ala Mrs. Sassoon)
>or is that part just sort of, well, um, made up?

>I assume we're talking Porsche GmBH here, or is it Porsche North America,
>or Porsche Engineering?

Porsche North America (read the WWW page ref'd above). Also the InterNIC
info you quote is out of date:

International Porsche Club - NYC (PORSCHE2-DOM)
   5800 Arlington Avenue
   Riverdale, NY  10471

   Domain Name: PORSCHE.COM
   Domain Status: On Hold

   Administrative Contact:

      212/533-0080
   Technical Contact, Zone Contact, Billing Contact:

      718/884-9970

   Record last updated on 31-Jul-96.
   Record created on 30-Nov-94.


                     http://k-whiner.pica.army.mil/

 
 
 

A trademark owner sues NSI over a domain name

Post by David Forthoffe » Tue, 06 Aug 1996 04:00:00



> ...
> Now, is there really a guy here with Porsche in his name, in which case
> I don't see why he isn't entitled to use it (ala Mrs. Sassoon)
> or is that part just sort of, well, um, made up?

It seems to me that a guy named, say, Johann Porsche, may be forced to use
a domain name such as JohannPorsche.com to avoid diluting the trademark
of the Porsche manufacturers.

--
David Forthoffer

 
 
 

A trademark owner sues NSI over a domain name

Post by Jason M. Drange » Thu, 08 Aug 1996 04:00:00




> > ...
> > Now, is there really a guy here with Porsche in his name, in which case
> > I don't see why he isn't entitled to use it (ala Mrs. Sassoon)
> > or is that part just sort of, well, um, made up?

> It seems to me that a guy named, say, Johann Porsche, may be forced to use
> a domain name such as JohannPorsche.com to avoid diluting the trademark
> of the Porsche manufacturers.

> --
> David Forthoffer

A guy named porsch is entitled to use the name.  However, the system is
imperfect.  It is a first to file system.  Surnames are not protectable
as trademarks anyway.  I do not think that Porsche would be considered a
surname in the U.S.  Porshe has built up considerable recognition, has
trademark registrations andtherefore would be entitled to the
"porsche.com" name.

Whether right or wrong.

 
 
 

A trademark owner sues NSI over a domain name

Post by Andrew C. Greenbe » Fri, 09 Aug 1996 04:00:00



> A guy named porsch is entitled to use the name.  However, the system is
> imperfect.  It is a first to file system.  Surnames are not protectable
> as trademarks anyway.  I do not think that Porsche would be considered a
> surname in the U.S.  Porshe has built up considerable recognition, has
> trademark registrations andtherefore would be entitled to the
> "porsche.com" name.

> Whether right or wrong.

Wrong!  (At least under U.S. Law)

U.S. is still fundamentallly first to use, with a subtle twist for
intent-to-use applications.

Section 2 of the Lanham Act provides that no trade-mark by which the goods
of the applicant may be distinguished from
the goods of others shall be refused registration on the principal register on
account of its nature unless it-

     (c) Consists of or comprises a name, portrait, or signature identifying a
      particular living individual except by his written consent, or the name,
      signature, or portrait of a deceased President of the United States during
      the life of his widow, if any, except by the written consent of the
widow.

That language doesn't exclude names registered with consent, or that do
not identify a particular living individual.  However, surnames will not
be registrable unless distinctive, which only happens upon proof of
secondary meaning, under 2(f).

Finally, it is well-settled that having a name does not give any right or
license to use the name in commerce in a manner confusingly similar to a
distinctive mark owned by another.  If you have any doubts, ask Walter S.
Taylor of the Bully Hill Vinyards.

--
just another view,

Carlton Fields

 
 
 

A trademark owner sues NSI over a domain name

Post by Jason M. Drange » Tue, 13 Aug 1996 04:00:00




> > A guy named porsch is entitled to use the name.  However, the system is
> > imperfect.  It is a first to file system.  Surnames are not protectable
> > as trademarks anyway.  I do not think that Porsche would be considered a
> > surname in the U.S.  Porshe has built up considerable recognition, has
> > trademark registrations andtherefore would be entitled to the
> > "porsche.com" name.

> > Whether right or wrong.

> Wrong!  (At least under U.S. Law)

> U.S. is still fundamentallly first to use, with a subtle twist for
> intent-to-use applications.

> Section 2 of the Lanham Act provides that no trade-mark by which the goods
> of the applicant may be distinguished from
> the goods of others shall be refused registration on the principal register on
> account of its nature unless it-

>      (c) Consists of or comprises a name, portrait, or signature identifying a
>       particular living individual except by his written consent, or the name,
>       signature, or portrait of a deceased President of the United States during
>       the life of his widow, if any, except by the written consent of the
> widow.

> That language doesn't exclude names registered with consent, or that do
> not identify a particular living individual.  However, surnames will not
> be registrable unless distinctive, which only happens upon proof of
> secondary meaning, under 2(f).

> Finally, it is well-settled that having a name does not give any right or
> license to use the name in commerce in a manner confusingly similar to a
> distinctive mark owned by another.  If you have any doubts, ask Walter S.
> Taylor of the Bully Hill Vinyards.

> --
> just another view,

> Carlton Fields

I meant that the "first to file syste" applied to the registration of
domain names - not federal trademark registrations.