Mallesons Stephen Jaques
Confidential communication
 
At a practical level, introducing a "distinctiveness" test such as s. 41 in
the Trade Marks Act will impose an enormous administrative burden.  There is
a whole government agency, the Trade Marks Office, to perform this function
and it is currently taking any where from 9 to 12 months if not longer to
attempt this.  Also, the ASIC and some State Business Name Registrars
abandoned this policy because their decisions were too arbitrary and
involved them in having to arbitrate disputes between name owners/claimants.

At a philosophical level, why does a domain name have to be distinctive?
What is wrong with allowing someone to register a name like car.com.au or
book.com.au?  Afterall, under the current policy which claims to prohibit
descriptive names, people have been able to register names like
cranehire.com.au even though this is a heading in the Yellow Pages
directory.  (Yes, I know Melbourne IT trots out that SOME of these were
already registered before the policy was introduced, but this one is
registered under a business name registered in September last year and there
are many other similar examples.)

Warwick A Rothnie
Partner
Mallesons Stephen Jaques Melbourne
Direct line (61 3) 9643 4254
Fax (61 3) 9643 5999


-----Original Message-----
From: Richard Archer [mailto:rha§interdomain.net.au]
Sent: Wednesday, 18 October 2000 9:40:AM
To: dns§auda.org.au
Subject: RE: [DNS] Place Names


At 9:25 +1000 18/10/00, Bill Ladas wrote:

>While it's clear that under the UDRP someone with 'trade mark rights' in
>a place name may be able to get a transfer of the domain name if it was
>registered and used in bad faith (see for example the WIPO
>"stmoritz.com" decision), it's not clear whether smaller place names
>will be able to prove such rights and succeed under the .com.au dispute
>resolution policy.  The restriction in the .com.au name space is in
>keeping with the restrictions against registering geographical names in
>the Trade Marks Act 1995 (Cth) (even though it will depend on the facts
>whether a domain name is acting as a trade mark).  Perhaps something
>similar to section 41 of the Act should be employed, so that even a
>geographical name with no inherent adaptability to distinguish, may be
>registered as a .com.au if it satisfies section 41(6) - that is, it is
>factually distinctive of the proprietor's goods or services.  If domain
>names are going to be treated as business identifiers, perhaps we need
>more of an accord with our trade marks legislation.
>
>What does everyone else think?

I think that's one of the best suggestions that's been
posted to this list since Geoff Huston stopped posting
his "the DNS is not a directory" mantra.

Still needs more work (the devil is in the detail), but
it appears to me to have potential.

  ...R.

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