Domain Trademark Law: Lachev Defense

Monte:-“There are some people who have gotten it. The 7 th circuit decision that recognized that so and so was selling aftermarket Beanie Baby’s using the bargainbeaniebabies.com domain and the 7 th circuit said the whole point was this artificial 2 nd market is there, if people can’t refer to these products and if people interested in these products are probably interested in other collectables too.”

Jay:-“I just read that in the Google and Geico case the judge ruled in Google’s favor. The headline was Google gets legal victory as judge rules Google’s ad policy doesn’t violate federal trademark laws. These are very important decisions and I have a lot of clients who care about this. These swing back and forth but in trademark law there is back and forth and people generally question and want to have to definite rules. You have this and that and it’s a line drawing exercise and a gray area and what matters is the specific facts and what matters is the difference is a central search directory or some of the more distributed peer to peer and you can’t put a finger on it. Some of it can be very difficult.”

Monte:-“The difference between Napster and a centralized search directory of central material. Can’t put a finger on it, but it can very much depend on strengths of the market or type of marketplace people who buy Rolls Royce’s generally won’t be fooled by cheap imitations but people who buy cheaper products can be fooled by cheaper products.”

Jay:-“Back to ICANN and domain name transfers and guys squatting on domain.”

Monte:-“There is a defense on trademark law called Lachey I have been doing something that would otherwise be wrong for so long that this guy didn’t adequately protect his rights. Trademarks can be lost if they aren’t enforced. Nylon, Cellophane, aspirin, zippers etc .. became generic products for the terms they are taking. Vigilant enforcement to protect trademarks - Lachey comes into play at around 6 years and there had to have been some reason for me to know if I’m the defendant that the trademark owner really didn’t like. What I was doing, but they gave me reason to believe they were not going to do anything about it, they sent a cease and desist then 10 years later show up at my door trying to enforce their trademark, they can run into problems with that. Rule of thumb is about 6 years is when I’m looking at a case to see if they have domain registrations in 1995 a lot of times don’t care what the facts are, where have you been for 10 years is not true in every circumstance but somebody did a graph sometime about how long a domain has been registered vs the probability and outcome, it starts dramatically in favor of domain registrars if they have had it for so long. I didn’t answer the 1 st question because it was shorter.”

Jay:-“And it was the less interesting one. I see the red light. We had such good content today. We ran over by 36 minutes! Definitely, we want to have both of you back on. Nobody would ever say law is interesting but John you’ve turned that into a new meaning. I want to wind down the show now and appreciate your time. We definitely want you guys back on. Thanks Noel and John Berryhill for being here tonight. I think it would be much better Monte if I was there with you.”

Monte:-“Come on down. Just a reminder. We’ll be on next Monday and we will probably have Matt Kutz from Google and David Moruse from Chilean. Make sure you look at the rest of the line up on webmaster radio. There are some great shows hosted by Gray Dustios and people that have relevant content on the web. With that I’ll sign off and see you next week at the same time same place. Be the master of your domain at DomainMasters.”