The OECD Issues a Report on Domain NamesOn July 13, 2004, the Organization forEconomic Co-operation and Development(OECD) issued a report titled “Generic TopLevel Domain Names: Market Development andAllocation Issues.” The full text of this report isavailable at www.oecd.org/dataoecd/56/34/32996948.pdf.

The report addresses two areas of concern inthe domain name arena. First, it provides anoverview of the structure of the market anddemand for generic top-level domain (gTLD)name registrations. Second, it discusses proposedprocedures for the Internet Corporation forAssigned Names and Numbers (ICANN) toallocate responsibility for and creation of addi-tional gTLDs.

One challenge facing any new gTLD is theability to win recognition and acceptance byusers. The report sets forth substantial quantita-tive information about current domain nameregistrations:

• More than 36 million gTLD domains are cur- rently registered.

• More than 20 million domains are registeredin

country-code TLDs corresponding to the 30 OECD member countries.

• The cost of a gTLD registration has decreased from $50 per year (1995) to as low as $5.95 per year (2004) due to introduction of market competition amongst registrars.

October 1, 2004 Vol. 59, No. 18

There is currently no case law in Chile on whatconstitutes use on the Internet, and there hasbeen little, if any, related commentary.Accordingly, the issue must be examined basedon the understanding of usein Chile and other jurisdic-tions as “action and effectof using” and “continuousand customary use of a per-son or thing,” in thisinstance a trademark.

Regulations governinguse of a trademark in Chilediffer substantially from theprevailing guidelines incomparative jurisdictions.One of the more importantdistinctions in the contextof this discussion is that useof a trademark is notmandatory in Chile,including the fact that evi-dence of use is not requiredto renew a trademark regis-tration, nor is nonuse a basis for canceling a reg-istration.

Consequently, since use of a trademark is notcompulsory in Chile, the question of what consti-tutes use on the Internet there is arguably irrele-vant to trademark protection in Chile.

Nevertheless, even if regulations do not requireuse of a trademark in Chile, there are articlesaddressing how a trademark is to be used andhow to provide proper trademark notice in Chile,

should the owner decide to usethe trademark. To this extentthen, whether use of a trade-mark on the Internet satisfiesthe law as enunciated underthese articles is more than aca-demic.

There are two articles underChilean law that are pertinentto this discussion. The first isArticle 25 of the Law onIndustrial Property, which statesthat “all registered trademarksused in commerce shall visiblyexhibit the words ‘MarcaRegistrada’ or the initials ‘M.R.’or the letter ‘R’ within a circle.Omission of this requirementdoes not affect the validity ofthe trademark, but those who

fail to comply with this provision cannot makeuse of the penal actions referred to in this Law.”

The second pertinent article is Article 31 of theRegulations of the Law, which provides that“trademarks must be used in the same manner in

INTABulletinIN THIS ISSUE

The Voice of the International Trademark Association

Use on the Internet in Chile

SEE CHILE ON PAGE 7

Association NewsMediation Conference Held in MalaysiaBNEF Programs Moving to INTA

Law and Practice

Bosnia and HerzegovinaNew Administrative LawFinlandRENICHEW Found to be ConfusinglySimilar to RENNIEPakistanParis ConventionPeruTax and Intellectual Property AuthoritiesJoin ForcesSwitzerlandAcquired Distinctiveness Through Useof Three-Dimensional TrademarksUnited StatesEx Parte Seizure Order Denied inCounterfeit Cigarette CaseVenezuelaRegistration Void for Failure to Disclaim

Trademark TriviaNESTLÉ

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SEE DOMAIN NAMES ON PAGE 7

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Representing the Trademark Community since 18782 Vol. 59, No. 18

Association NewsMediation Conference Held in MalaysiaOn August 5, 2004, the Malaysian BarCouncil and the International TrademarkAssociation (INTA) held a one-day con-ference on the mediation of intellectualproperty disputes in the auditorium ofthe Malaysian Bar Council. RetiredCourt of Appeal Justice Dato V.C.George served as chair for the event,which was organized by Karen Abrahamof the Malaysian law firm ShearnDelamore & Co.

Speakers included Loong Seng Onn,executive director of the Singapore Mediation Centre; MichaelLeathes, a member of the INTA Alternative Dispute ResolutionCommittee and the CPR Institute of Dispute Resolution; andDato’ Cecil Abraham and Khoo Guan Huat, two Malaysian IPsolicitors.

The papers presented during the conference covered mediationissues in Malaysia and Singapore, as well as the scope of IP dis-putes and the need for a new mindset on this issue. Attendees alsoviewed an INTA/CPR video of a trademark dispute being mediated.

A mock mediation workshop was conduct-ed during the last segment of the conference.Attendees participated in mock mediations asparties or as the mediator, giving them hands-on experience in conducting mediation.

After the workshop, attendees shared theirexperiences and perspectives. Questions wereposed to the facilitators, particularly on thestrategies involved in conducting a mediationsession. Many attendees said that they left theconference with a better understanding ofwhy 80 percent of all disputes in which medi-

ation is attempted result in a settlement. Several also said that theyfeel more prepared for the use of mediation in IP disputes.

For further information on mediation, visit www.inta.org/adr,www.cpradr.org (where the mediation video is available) orwww.mediation.com.sg (the premier mediation body in SoutheastAsia).

By Raj Dronamraju, Shearn Delamore & Co., Kuala Lumpur, Malaysia

BNEF Programs Moving to INTABNEF Winding DownAs a result of the INTA Planning Committee’s deliberationsconcerning the 2006 – 2009 Strategic Plan, including theiranalysis of the results of the Membership Survey, theCommittee recommended, and the INTA Board of Directorsunanimously approved on September 22, 2004, that BNEF’sprograms continue within the INTA structure and that BNEFbe wound down.

Specifically, the success and value of BNEF’s Lefkowitz,Ladas, Pattishall and Scholarship programs received unani-mous support among the Board of Directors, and it was feltthat INTA is in a better position to leverage these programsand to expand them internationally, particularly given INTA’snew professor and student membership initiative.

BNEF’s Gala will become the INTA Gala, and it will occuras scheduled on Saturday, May 14, 2005 in San Diego. Thenew INTA Gala will serve as an occasion to recognize awardrecipients, including Lefkowitz, Ladas, Pattishall andScholarship program winners, as well as the outstanding vol-unteers and leaders of the Association.

INTA will keep you updated on this via the Bulletin andthe website. If you have any questions, please contactCathleen Curran at +1-212-768-9885 or ccurran@bnef.org.

2005 INTA Renewals Begin!

Please check your mailboxes and email foryour INTA membership renewal notice.

January 31, 2005 is the deadline to renew your INTAmembership so that you can continue to receive benefitssuch as:

• The INTA Membership Directory,INTA Bulletin and The Trademark Reporter®

• Access to online trademark resources through INTA’s Members Only Site

• Discounts on events and publications

• Involvement with INTA committees• And much more…

Renew your membership online at www.inta.org/renewor mail or fax your renewal payment to INTA’s customerservice department.

Questions? Email membershiprenewal@inta.org, call +1-212-768-9887, ext.108, or fax +1-212-768-1234.

Thank you for your continued membership and participa-tion in the INTA community.

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3Vol. 59, No. 18www.inta.org

Law and PracticeBOSNIA AND HERZEGOVINANew Administrative Law In July 2004, a new draft law establishing a separate state body responsi-ble for industrial property (IP) matters was put before the Parliament ofBosnia and Herzegovina.

Currently, the Institute for Standardization, Metrology and Patentsadministers IP issues. This Institute, which is responsible for a variety ofunrelated industrial and commercial issues, will be divided into three sep-arate state bodies with responsibility for standardization, metrology, andindustrial property respectively. The new law should ensure better admin-istration of IP rights and guarantee equal treatment of IP rights through-out Bosnia and Herzgovina.

The draft law should be enacted in September 2004. As the proposalsare of a political nature, however, they have faced great resistance bothfrom the Institute’s personnel and patent and trademark attorneys, mostof whom come from Sarajevo, Bosnia.

Contributor: Davor Boskovic, PRODUCTA Ltd., Zagreb, Croatia; Verifier: IntelbiroOffice, Sarajevo, Bosnia and Herzegovina

PAKISTANParis ConventionPakistan has acceded to the Paris Convention, effectiveJuly 22, 2004.

Pursuant to other amendments to the Pakistan TradeMarks Act, which came into effect on April 12, 2004,the initial registration period of trademarks has beenextended from seven to ten years, and the renewal periodhas been reduced from 15 to ten years. However, forapplications filed prior to April 12, 2004 (unless con-verted), the initial registration period would be sevenyears. The renewal period will be 15 years for cases inwhich the renewal fell due prior to the effective datementioned above.

Service marks are now also registrable in Pakistan forthe first time. Although the regulations provide for pro-tection only in Classes 35 to 42, the authorities haveagreed that applications may be accepted for filing inClasses 35 to 45.

Applications filed before the effective date of the newlaw will be handled under the old law of 1940, unlessapplicants for such applications make a request for con-version of the applications to new law applications. Thedeadline for conversion is one year after the effectivedate of the new law, and trademarks that have alreadybeen registered will be transferred to the new Register.

Contributor: Lindsay Esler, Deacons, Hong Kong; Verifier:Mohammed Bharucha, Bharucha & Co., Karachi, Pakistan

PERU

Tax and Intellectual Property Authorities Join ForcesThe Peruvian Superintendency of Tax Administration and the National

Institute of Competition and Intellectual Property (INDECOPI) havesigned an agreement of mutual cooperation and support.

These institutions will coordinate activities to enable customs authori-ties to identify infringing products more efficiently. They will also preparejoint campaigns against intellectual property right infringements.

Source: El Peruano, August 19, 2004; Contributor: Claudia Fernandini, Clarke Modet &Co. Peru, Lima, Peru; Verifier: Alfredo Valencia, Valencia Law Office, Lima, Peru

SWITZERLANDAcquired Distinctiveness Through Use of Three-Dimensional TrademarksOn February 24, 2004, the Swiss Supreme Court held that TheSwatch Group SA had not proven that the pinnacled hinges ofthe SWATCH watch strap had acquired distinctiveness throughuse, and therefore did not qualify for trademark registration.

To register its pinnacled hinges as a three-dimensional trade-mark for watch straps, The Swatch Group SA had presented cred-ible evidence of long-standing use of watch straps with suchhinges. The application was, however, turned down by all author-ities involved. In particular, the Supreme Court argued that thewatch straps were not blank, but bore the SWATCH trademark.Such use would not answer the question of whether blank watchtraps with pinnacled hinges had acquired distinctiveness throughuse. Moreover, the Court held that the trademark authorities cor-rectly required an especially high level of substantiation ofacquired distinctiveness through use, particularly in relation tocommonplace signs such as watch straps, which the public would

regard simply as part of the product rather than as a sign that dis-tinguished goods of one enterprise from another. The Court indi-cated that positive results of a public opinion poll, which werenot submitted in this case, would have been helpful.

The case demonstrates the considerable difficulties of establish-ing acquired distinctiveness of blank three-dimensional signswhen they are used only in combination with words or figurativeelements, and the increasing relevance of opinion polls, which theSupreme Court considers important for substantiating acquireddistinctiveness.

Source: The Swatch Group SA v. Swiss Federal Institute of IntellectualProperty and Swiss Federal Commission of Appeals, Case 4A.4/2003, BGE130 III 328; Contributor: Christoph Gasser, Staiger, Schwald & Partner, ZurichSwitzerland; Verifier: Lorrenz Ehrler, Bugnion, Wagner-Mesciaca & Partners,Geneva, Switzerland

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4 Vol. 59, No. 18 Representing the Trademark Community since 1878

Law and Practice

VENEZUELARegistration Void for Failure to DisclaimIn a surprising decision with potentially far-reaching effects, theVenezuelan Industrial Property Registry declared a trademark reg-istration for a design mark null and void because theAdministration failed to request a disclaimer for generic termsincluded in the description of the mark. The Registry orderedthat the application that was the basis of the registration bereturned to the applicant to exclude the generic terms from thedescription of the mark and then continue its registration process.

This case involved a trademark registration for JACK’SSNACKS PLATANITO and Design (Reg. No. P-174904), whichwas applied for in 1992 and granted in 1995. According to theRegistry, the term PLATANITO, which is Spanish for “littleplantains,” was generic for products included in the coverage ofthe mark, and therefore should have been expressly disclaimed.Since such a disclaimer was not made, the Administration shouldhave returned the application. The Administration’s failure toreturn the application tainted the registration process and ren-dered the resulting registration null and void.

The Registry cited Article 77 of Decision 313 as the legal basisfor the disclaimer. This Article states that all trademark applica-tions must contain a clear and complete description of the pro-posed mark. The legal basis for returning the application toexclude the generic terms from the description was Article 144 ofDecision 486 of the Andean Pact, which provides that an applica-

tion that does not fulfill formal requirements shall be returned tothe applicant for correction.

Resolution No. 0412 was an ex officio decision issued by theIndustrial Property Registrar based on Article 25 of theVenezuelan Constitution and Article 83 of the AdministrativeProcedures law, which in essence allow the Administration to cor-rect their own errors. The owner of the annulled registration has15 working days to appeal the decision. It is unclear whether anappeal has been filed in this case.

This decision has caused great concern in the Venezuelan intel-lectual property community, particularly because of its sweepingand seemingly spontaneous nature. Based on this decision, own-ers of design marks are at risk of losing valuable registrations ifthe Administration failed to request a disclaimer on generic termsduring the registration process. Some intellectual property special-ists argue that it would have been more just to record a note onthe existing protocol of the registration in question, expresslyexcluding protection for the generic terms, rather than to declarethe registration null and void and oblige the applicant to gothrough the entire registration process again.

Source: Resolution No. 0412, February 26, 2004, published in IndustrialProperty Bulletin No. 463, April 12, 2004; Contributor: Dianne R. Phoebus,Baker & McKenzie, Caracas, Venezuela; Verifier: Ricardo A. AntequeraHernández, Estudio Antequera Parilli & Rodríguez, Caracas, Venezuela

In Roche Consumer Health (Worldwide), Ltd. v. Vitabalans Oy, theFinnish Supreme Court found confusing similarity between thetrademarks RENNIE and RENICHEW, despite their differentmarketing channels (Judgement KKO 2004:49).

Roche is the proprietor of Finnish trademark registrations forRENNIE (and design) and DIGESTIF RENNIE. The wordRENNIE is also well known to Finnish consumers, due to itsextensive use over several decades. RENNIE products are themarket leader amongst products for treatment of indigestion, andare sold exclusively in pharmacies, a marketing channel that isstrictly controlled by the authorities.

Vitabalans, a Finnish producer of natural health products,adopted the mark RENICHEW for a product for the treatmentof indigestion, which was available exclusively in health foodstores. Both companies’ products contained the same active ingre-dients and were intended for the same use.

The Supreme Court found that the trademark RENNIE washighly original and well known to the public. In addition, thetwo products were found to be similar in their use by and avail-ability to the public. The prefixes of the names RENNIE andRENICHEW were considered as dominant parts of the trade-marks, following the structure of the Finnish language. TheCourt noted that the word RENNIE and the prefix RENI would

be pronounced almost identically. In addition, the font and sizeof letters used and the general coloring of the product packageswere similar, although the shape and materials were not.

Significantly, the overall similarity of the symbols RENNIEand RENICHEW was found high, and use of the markRENICHEW was found to give the public an impression ofbeing part of a Roche product family. The Court further pointedout that because the products were in practice not sold throughthe same channels, direct comparison of the products and of theirtrademarks was difficult. Although marketing through differingtrade channels has usually been considered to reduce the overalllikelihood of confusion between marks, the goods in this casewere intended for exactly the same purpose, and the difference inretail outlets was not considered decisive.

The Court, therefore, considered the mark RENICHEW to beconfusingly similar to the registered trademark RENNIE, thedesign RENNIE and the words DIGESTIF RENNIE. Vitabalanswas enjoined from using the name, required to pay damages forthe estimated loss of goodwill value of the RENNIE mark, andordered to hand over the estimated profits it had gained from sell-ing RENICHEW.

Contributor: Esa Korkeamaki, HH Partners Oy, Helsinki, Finland; Verifier:Tuuka Airaksinen, Benjon Oy, Helsinki, Finland

FINLANDRENICHEW Found to be Confusingly Similar to RENNIE

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Community Trade Marks and Community Designs ForumCo-sponsored by INTA and the Office forHarmonization in the Internal Market (OHIM)

October 14 – 15, 2004Crowne Plaza HotelSan Francisco, California, USA

Attend this forum for practical information anduseful tips to increase your understanding ofCommunity Trade Marks and Designs, and tomake it easier for you to determine whether theseroutes for protecting your trademarks and designsin the European Union are right for you.

To register, or for more information, email customerservice@inta.org, or visitwww.inta.org/events.

Also, check out The Community Trade Mark,INTA’s publication on how best to navigate thesystem. Details on how to order can be found atwww.inta.org/pubs.

5Vol. 59, No. 18www.inta.org

Trademark owners seeking ex parte seizure orders for counterfeitcases in the Third Circuit have a new decision interpreting thescope of the Trademark Counterfeiting Act of 1984, 15 U.S.C §1116(d). In a consolidated appeal captioned Lorillard TobaccoCom. v. Bisan Food Corp., Civ. Nos. 03-3151, 03-3160, 03-3161,2004 U.S. App. LEXIS (3d Cir. July 28, 2004), the Third Circuitlimited the reach of one of its earlier decisions, Vuitton v. White,945 F.2d 569 (3d Cir. 1991).

Lorillard owns the trademark NEWPORT for cigarettes. Aftera Lorillard sales representative discovered counterfeit NEWPORTcigarettes at three stores in New Jersey, the company filed with theNew Jersey District Court complaints, ex parte applications forseizure orders and temporary restraining orders against the threestores. The District Court judge declined to issue the seizureorders on the grounds that Lorillard failed to demonstrate that (1)orders other than seizure orders were inadequate and (2) thedefendants would destroy or otherwise make the counterfeit ciga-rettes inaccessible to the court if notice was given.

Lorillard appealed the District Court’s decision. The Third

Circuit reviewed the consolidated appeal in light of its earlierVuitton decision. In Vuitton, the Third Circuit granted ex parteseizure orders against street vendors who were selling counterfeitVUITTON merchandise.

In upholding the district court’s decision, the Third Circuit dis-tinguished the Vuitton case. Unlike the defendants in the Vuittoncase, the defendants in this case were not street vendors and hadnot previously failed to appear in court. Moreover, as small inde-pendent retailers, there was no evidence that they were unlikely tocomply with a court order. Finally, as incorporated businesseswith assets, the defendants had much to lose if held in contempt.The defendants were simply not as likely to ignore a court orderas the street vendors in Vuitton. According to the Third Circuit,the District Court did not abuse its discretion in denyingLorillard’s request.

Contributor: Leigh Ann Lindquist, Sughrue Mion, PLLC, Washington, DC, USA;Verifier: Janice Housey, Roberts, Mlotkowski & Hobbes, P.C., McLean,Virginia, USA

UNITED STATESEx Parte Seizure Order Denied in Counterfeit Cigarette Case

RoundtableCircuit

October 18 – 29, 2004Various cities in the United States

For more information, or to register, visitwww.inta.org/events.

Topic:

Trademark Counterfeiting andEnforcement

For Non-Attorney Trademark Professionals

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6 Vol. 59, No. 18 Representing the Trademark Community since 1878

Trademark TriviaNESTLÉIn the mid-1860s, Henri Nestlé, a Swiss pharmacist, began experimenting with various combina-tions of cow’s milk, wheat flour and sugar in an attempt to develop an alternative source of infantnutrition for mothers who were unable to breastfeed. His first customer was a premature infantwho could tolerate neither his mother’s milk nor any of the conventional substitutes, and hadbeen given up for lost by local physicians.

After Mr. Nestlé’s new formula saved the child’s life, people quickly recognized the value of thenew product. Within a few years, “Farine Lactée Nestlé” was being marketed in much of Europe.

Mr. Nestlé also showed early understanding of the power of branding. He had adopted his owncoat of arms as a trademark; in his German dialect, Nestlé means “little nest.” One of his agentssuggested that the nest in the coat of arms could be exchanged for the white cross of the Swiss flag. His response was firm: “Iregret that I cannot allow you to change my nest for a Swiss cross . . . I cannot have a different trademark in every country; any-one can make use of a cross, but no one else may use my coat of arms.”

In 1875, Daniel Peter, Mr. Nestlé’s friend and neighbor, figured out how to combine milk and cocoa powder to create milkchocolate. Mr. Peter started a company that quickly became the world’s leading maker of chocolate, and later merged with Nestlé.

Source: www.nestle.com/All_About/History/1866_1905/1866-1905.htm; Editor: Elaine Czach, INTA, New York, New York, USA

Announcing INTA Membershipsfor Professors and Students!

INTA is pleased to announce that membership inthe Association is now available to students andprofessors of intellectual property law.

These new membership categories are open tofull- and part-time law students and non-attorneylegal students for US $25 per year, and professorswho teach intellectual property law full time forUS $75 per year.

Student and professor members will enjoy manybenefits, including:

• Online access to the INTA Bulletin and The Trademark Reporter®

• Access to INTA’s Members Only Site, host to a vast library of information resources

• Free or substantially discounted attendance to INTA meetings and forums, including INTA’sAnnual Meeting, host to more than 6,000 trade mark professionals from around the world

• Discounts on INTA’s print publications• And much more….

For more information, visit www.inta.org/join,send an email to membership@inta.org, or call+1-212-768-9887, ext. 108.

At INTA’s two-day forum in Prague, colleagues fromEurope (including representatives of Europe-based business) and the United States will discuss such timelytopics as:

• The Interaction of Community Trade Marks and the Madrid Protocol in an Enlarged Europe

• Trademarks in Business Transactions in the New Europe

• Enforcement in Eastern Europe (focusing on the EU Enforcement Directive and its interplay with local laws)

For more information, or to register, visitwww.inta.org/events.Also, don’t forget to pick up a copy of InternationalTrademark Treaties and Agreements. This well-organ-ized compilation of 17 key treaties, agreements and policystatements provides a comprehensive resource for worldwide trademark law. For more information, visitwww.inta.org/pubs.

December 2 – 3, 2004InterContinental Hotel Prague, Czech Republic

Europe 2004 and Beyond – New Frontiers and Opportunities Forum

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7Vol. 59, No. 18www.inta.org

Chile CONTINUED FROM PAGE 1

which they have been granted registration, notwithstanding otherformalities included in the Regulations.”

Previously, evidence of use on the Internet to the court intrademark matters was considered an accessory, valued consider-ably less than, for example, photocopies of foreign registrations.Today, this situation is completely different and use of trademarkson the Internet is considered strong evidence by the authority.

Use on the Internet should undoubtedly follow the basic legaland regulatory requirements included in the aforementionedArticles. To the extent that it does follow these standards, and isotherwise satisfactory, it will constitute strong evidence of useunder Chilean law.

From a broader perspective and as evidence in a lawsuit, evi-dence of use on the Internet is considered in its own right.Therefore, even if use on the Internet does not follow statutory

formalities, it can still be decisive in deciding trademark disputeswhere use is an issue.

The credibility of Internet use requires consideration of territo-riality of use, the amount of visits to a certain page in order todetermine their importance, and origin of those visits, as well ashow to recognize that such use is real and not fabricated. InChile, the ever-increasing acceptance and incorporation of thecertification and validation of signatures has gone a long way tovalidate Internet use under such signatures.

By Max Montero, Johansson & Langlois, Santiago, Chile

The existence of defensive registrations, domain name specula-tion and traffic aggregation make it difficult to assess the realdemand for the new gTLDs based on what was introduced in200l – .biz and .info in particular. However, it is speculated thatdemand for any new gTLD domains may be relatively limited.Much of the registration activity is in the .com gTLD, with mar-ket acceptance of new gTLDsbeing lower than projected.For many existing users, newgTLDs simply represent anadditional cost for defensiveregistrations.

The OECD presents evi-dence that .com, .net and .orgregistrations have increased,while .biz and .info registra-tions have decreased. This maybe caused by non-renewal of.biz and .info domains bydomain speculators, as theresale market for these namesnever formed. Furthermore,the evidence shows that many .biz domains are defensively regis-tered: approximately 25 percent of .biz domains are likely regis-tered by the same organizations that own the corresponding .comdomain, and they are not being actively used. The anticipatedregistrations in new gTLDs have not achieved the levels contem-plated by the registries in 2001 – Neulevel has registered onlyapproximately 26 percent of their projected domain for domainnames under .biz, while no other registry has reached more thanseven percent of its projections.

The OECD cites, as the strongest argument for not creatingnew domain names, the cost to business users of defensive regis-trations. Most business users prefer higher registration fees to dis-courage speculation. Sunrise periods provide some benefit, but do

not cure the economic concerns of business users, as these regis-trations are normally priced at a premium. Evidence of increaseduse of Uniform Dispute Resolution Policy proceedings supportsbusiness users’ likelihood to forego substantial defensive registra-tions in any new gTLDs and rely instead on legal action toresolve any disputes.

In support of the introduction ofadditional gTLDs, the OECD cites theuse of new gTLDs as more focusedmarketing tools containing content spe-cific to their audience (i.e., the use of.asia for regionally specific sites). Theremay also be new business opportunitiesenvisioned by the use of new gTLDs(i.e., .mobi as a new business line forthe group of companies backing theregistry – Microsoft, HP, Nokia, etc.).

The second part of the report focuseson the selection of new gTLDs and theallocation of registry responsibility. Itdiscusses the pros and cons of two dif-ferent allotment methods: auctions and

comparative selection. The OECD suggests that either of thesemethods can be effective alone or in combination with the other.

The OECD report comes at a time when ICANN is consider-ing ten applications for sponsored gTLDs. Amendment 6 to theMemorandum of Understanding between ICANN and the U.S.Department of Commerce, which was agreed to in September2003, requires ICANN to “Continue the process of implement-ing new top level domains (TLDs).”

By Mitchell Bompey, Morgan Stanley, New York, New York, USA

Domain Names CONTINUED FROM PAGE 1

“Evidence of increased use ofUniform Dispute ResolutionPolicy proceedings supportsbusiness users’ likelihood toforego substantial defensive reg-istrations in any new gTLDsand rely instead on legal actionto resolve any disputes.”

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INTA BULLETIN EDITORIAL BOARDTo contact a member of the INTA Bulletin, send anemail to bulletin@inta.org.

Editor-in-ChiefTrevor Stevens, Davies Collison Cave

Senior EditorMary DeLongis, Diageo North America Inc.

Executive Editor: Law & Practice, Middle East, Africa, Pacific RimKay Rickelman, Spoor & Fisher

Executive Editor: Law & Practice, Europe and Central AsiaRichard Penfold, DLA

Executive Editor: Law & Practice, AmericasJennifer Van Kirk, Lewis and Roca LLP

Executive Editors, FeaturesAmanda Laura Nye, King & SpaldingAdriana Casati, Berkemeyer

Executive Editor: Online ArticlesPatricia A. Wilczynski, Law Office of Patricia A. Wilczynski

Executive Editor: Special ReportsBrian Winterfeldt, Mintz, Levin, Cohn, Ferris, Glovsky andPopeo, P.C.

INTA BULLETIN STAFFManaging EditorNaeran Rubio

Associate EditorElaine Czach

Designer Katie Frichtel

INTA SENIOR STAFFExecutive DirectorAlan C. Drewsen

Director, Human Resources & Association GovernanceMaria Bachman

Director, EducationAnn Eng

Director, Marketing & CommunicationsDaryl G. Grecich, CAE

Executive AssistantMaribel Lajara

Director, External RelationsBruce MacPherson

Manager, Finance & AdministrationMelissa Starr

INTA Department Email AddressesExecutive Director: executivedirector@inta.orgMembership: membership@inta.orgCustomer Service: customerservice@inta.orgTM Affairs & Policies: tmaffairs@inta.orgMeetings: meetings@inta.orgPublications: publications@inta.orgThe Trademark Reporter®: tmr@inta.orgPublic Relations: publicrelations@inta.orgAdministration & Finance: adminfinance@inta.orgJob Bank: jobbank@inta.orgSponsorship & Exhibitions: sponsorship@inta.orgRoundtables: roundtables@inta.orgBrand Names Education Foundation: info@bnef.org

© 2004 International Trademark Association

Mark Your CalendarsOctober 3 – 6, 2004Trademark Administrators Conference, Arlington, Virginia, USA

October 4 – 15, 2004Roundtable on Trademark Enforcement & Pre-Litigation Strategies,Various cities in the United States

October 7 – 8, 2004 Trade Dress Forum, New York, New York, USA

October 14 – 15, 2004Community Trade Marks and Community Designs Forum, San Francisco, California, USA

October 18 – 29, 2004Roundtable: Trademark Counterfeiting and Enforcement (for non-attorney trademark professionals),Various cities in the United States

October 22, 2004Roundtable: Neueste Rechtsprechung des Europäischen Gerichtshofsin Markensachen und aktuelle Entwicklungen im MarkenrechtStuttgart, Germany

November 10 – 13, 2004Leadership Meeting, Phoenix, Arizona, USA

December 2 – 3, 2004Europe 2004 and Beyond – New Frontiers and Opportunities ForumPrague, Czech Republic

New Payment OptionPay directly from your bank account whenever you register for an INTA event or renew your membership online with INTA’s new automated clearing house system. For more information, visit the INTA website atwww.inta.org/events/howto.html or call Customer Service at +1-212-768-9887,ext. 157.

Business Development and OpportunitiesTo inquire about sponsorship or exhibition opportunities for INTA’s events, visitwww.inta.org/sponsor.

Although every effort has been made to verify the accuracy of items carried in this newsletter,readers are urged to check independently on matters of specific concern or interest. The INTA

Bulletin primarily relies on members of the INTA Bulletin Committee and INTA staff for contentbut also accepts submissions from others. The INTA Bulletin Editorial Board reserves the rightto make, in its sole discretion, editorial changes to any item offered to it for publication.

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