At 11:49 AM 5/16/98 +1000, Gordon Gecko wrote:
>In my opinion the idea being proposed by ADNA and Professor Gerrand to add
two new domains being tm.au and pr.au is not wise. The current problem with
>com.au is that business are finding it hard to register their trademarks
and product names. I don't understand the reason why Melbourne IT will not
allow this, as this is what there policy of "attempting to derive a domain
name from the  commercial entities legal name is all about".

Gordon  
Let me put the facts correctly before responding to your comments, with
which I largely agree.
The motions I put to the ADNA Board meetings (unsuccessfully) in January
and April simply reflected the views voted on at the public consultation
sessions on 'Domain Names and Trade Marks' convened by the Trade Marks
Registrar in November 1997. As I had helped organise those seminars, I
wanted to ensure that the recommendations of the public consultation
sessions were taken up by ADNA.

In fact the overwhelming majority at each seminar (Melbourne and Sydney)
voted for what you seem to be suggesting, viz. amend the eligibility
criteria for com.au so that the prior registration of an Australian trade
mark owned by the applicant would qualify as an alternative to the existing
criteria (RBN or ACN etc).
This is a sensible aproach, and it would save businesses the cost (about
$75 per name) of registering an RBN about their trademark, so that they can
register it under com.au

Under the terms of our licence condition for com.au, Melbourne IT does not
have the flexibility to change current policies without endorsement from a
body such as ADNA.  It was only when my co-directors on the ADNA Board
rejected my motion for the second time, giving reasons listed in the
Minutes of the meeting of 30 April (posted at http://adna.asn.au/), that I
put a second motion that at least would give TM-holders the option of
registering equivalent DNs under tm.au or pr.au (provided they were not
already taken, of course).


>If we assume that Melbourne IT is correct in not allowing certain
tradenames under .com.au 
[not quite right; we can register them under current policies if the TM
also coincides with a subset of the applicant's ACN or RBN - and it is not
already allocated]

>and we allow them to register under tm.au we are going to face
>massive new problems.
>
>For those who do not understand trademarks, a company that owns a
registered trademark only owns it with respect to certain type of goods and
services. For
>example Prince owns an Australian trademark for tennis racquets however a
computer company also owns a  trademark called prince. How will it be decided
>who has the superior right to prince.tm.au? In most cases there will be
more than 2 entities that own a registered trademark in respect of more than 2
>categories of goods thus the legal fights will be enormous.

The Trade Marks Registrar estimates that coincidence of  TMs only occurs in
fewer than 5% of registered Australian TMs.


>Thus we are back to the same problems as we have under .com.au exceptworse
because we are saying tm.au is reserved for trademarks, but whose trademark
is it reserved for?
Given the estimate of fewer than 5% of 'collisions', where the disappointed
applicant would have recourse to using either pr.au, com.au or net.au, this
doesn't seem to be a problem.


> Any comments would be appreciated..

I hope that the above helps.

PG
Professor Peter Gerrand
CEO, Melbourne IT
T: +61 3 9344 9300
F: +61 3 9347 9473
W: www.MelbourneIT.com.au