That is just one of the anomalies with the .com.au Policy:  a word that
is generic can't be registered as a .com.au, but two words can (again,
provided the Policy requirements are met)!  

Granted the administrative burden would be huge, but the Trade Marks
Office has staff trained specifically for the task of determining
distinctiveness, while INA only consults the Yellow Pages etc.

Apparently the rise in "keywords" (for an example, try realnames.com)
and other "intelligent" technologies will reduce the importance of
domain names in the coming years, but I don't think the domain name
issue is going to go away in a hurry.  For that reason, I think there is
some merit in the suggestion that new gTLDs should be added that
correspond to the Nice Classification (where the domain name will be
used in commerce), and others added for websites of a non-commercial
nature.  I would be very interested in what people think about this one
...

A domain name certainly does not have to be distinctive, but it would
have to be in order to qualify for registration as a trade mark, of
course.  The thing is, owners of generic domain names like book.com,
might get a bit angry when, if for example someone typed in book as a
keyword search at excite.com, and were taken to barnes and noble's
website.  It's clear that the sale of keywords is going to be a huge
issue, as owners of generic domain names are going to have to find some
legal recourse when keywords could result in a substantial decrease in
hits!  They don't have an action in unfair competition available to them
in Australia, and, because their domain name is generic, they probably
won't be able to rely on the Trade Marks Act either (unless they have a
registered the domain name as a trade mark pursuant to s 41(6) and try
for infringement of a well known trade mark under s 120(3)).

It's all a big mess.  What is required is a solution that is forward
looking.  The first come first served method, I think, has not served us
well, and completely ignores proprietorship issues where the domain name
is distinctive and does function as a trade mark.

Bill Ladas


> -----Original Message-----
> From:	Rothnie, Warwick [SMTP:Warwick.Rothnie§msj.com.au]
> Sent:	Wednesday, 18 October 2000 11:20
> To:	'dns§auda.org.au'
> Subject:	RE: [DNS] Place Names
> 
> 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.
> 
> --
> This article is not to be reproduced or quoted beyond this forum
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> 
> --
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