I have been asked this several times in my career: can the word TRADEMARK serve as a trademark?  Well, someone thinks so.

The Court of Appeals for the Sixth Circuit issued an interesting decision, Bird v. Parsons.  The Court exercised personal jurisdiction over defendant Dotster, an ICANN-accredited registrar, based on the assumption that because Dotser sold 233,000 domain names in the U.S., 1/50 of those (4,666) were likely sold in Ohio, so Dotster had minimum contacts with Ohio.  Can this argument be made in Hawaii?  The decision is at http://pacer.ca6.uscourts.gov/cgi-bin/getopn.pl?OPINION=02a0177p.06.  There is also a discussion as to whether registrars and name re-sellers (Afternic was another defendant), “traffic” in names.

Read this article from Brandchannel’s site on the accepted practice of ambush marketing.  Is purchasing a competitor’s name as a search term on a pay-for-performance search engine (such as overture.com) different (legally, as opposed to ethically)?

The FTC has fined John Zuccarini, also known as The Country Walk, JZDesign, RaveClub Berlin, and more than 22 names incorporating the word “Cupcake,” including Cupcake Party, Cupcake-Party, Cupcake Parties, Cupcake Patrol, Cupcake Incident, and Cupcake Messenger over $1.8 million for various transgressions involving over 5,500 domain names.  I have actions pending against him, maybe you do too.

The press release (with links to the order “suspending” most of the 5,500 names) is at: http://www.ftc.gov/opa/2002/05/cupcake.htm. 

p.s. A unified gTLD whois which allowed searches by registrant name, address, email, and phone number  would make enforcement against this type of guy easier.

There goes my chance at representing Mattel: http://trademarks.org/barbie/.  This site was created by someone who cannot be described as a fan of trademark lawyers.

Ben Edelman of Harvard has become the Charles Kuralt of the Domain Name world, releasing offbeat reports on strange happenings.  Check out his report on intentional whois fraud at http://cyber.law.harvard.edu/people/edelman/invalid-whois/?d., as well as abuse of “dropped names” at http://cyber.law.harvard.edu/people/edelman/renewals/   This one on a possible lawyer/squatter exploiting the new .biz names is particularly disturbing: http://cyber.law.harvard.edu/people/edelman/biz-sunrise/ (note: on that last one, the lawyer says it ain’t so).

The Second Land Rush will begin soon for.info domain names.   Some of these names were the subject of fraudulent sunrise applications.  Others were challenged by Afilias because the applicant had made fatal errors on its application – for example, applying to register ACMESYSTEM.INFO when the underlying trademark registration was for ACME SYSTEMS.  More info at http://www.newsbytes.com/news/02/176738.html.

The 1-888-MATTRES case, In re DIAL-A-Mattress, 244 F.3d 88 (Fed. Cir. 2001) suggests that domain names in the form [DESCRIPTIVE TERM].COM or [GENERIC TERM].COM are registrable as trademarks (at least in the U.S.), but what scope of protection should they be accorded?  A hint that the answer is “not much” is a WIPO decision (in Spanish) at http://arbiter.wipo.int/domains/decisions/html/2002/d2002-0249.html in which the owners of the registered mark INTERNETNEWS.COM lost a UDRP against the registrant of INTERNETNEWS.INFO.  An English language account is at http://news.zdnet.co.uk/story/0,,t269-s2110412,00.html