[ncdnhc-discuss] Board Positions on .ORG; Answers from V.Cerf--full text

[Michael Froomkin - U.Miami School of Law]

Once again, with feeling:

You cannot "instruct" UDRP panelists on how to apply the law to your
taste. If you do so, you buy into the idea that the UDRP is free-standing
system of rules divorced from national law.  Within a year, WIPO will be
"instructing" panelists too.  They will do it full time.

The standards for what constitutes infringement are set by national law.

The UDRP instructs panelists to mirror a subset of national law, when they
are told that "you are making a legitimate noncommercial or fair use of
the domain name" is a full defense.  What constitutes "legitimate" is set
by national law.

You can of course "educate" panelists by explaining to them what a
non-commercial use is, how being in .org might itself be one example of
that use, and so on.

But start down the slippery slope of letting ICANN tell panelists what
substantive rules to use, and in no time at all you will have the first
WIPO report.   Please read it, then read my critique, and you will realize
that for all of the UDRP's flaws it could have been a lot worse.  And will
be if we follow down the road you propose.

WIPO's interim report for first process
http://wipo2.wipo.int/process1/rfc/3/index.html

My comments then
http://www.law.miami.edu/~amf/critique.pdf
or 
http://www.law.miami.edu/~amf/critique.htm



On Mon, 1 Apr 2002, James Love wrote:

> Karl, thanks for note regarding the proposal for clarification of UDRP rules
> on "confusion," and the non-commerical use of a string in the SLD .org
> space.
> 
> I am *not* suggesting ICANN or the registry investigate the way .org domains
> are used, or make any complicated legal requirements for use of a .org
> domain.  I *am* suggesting that someone who uses the .org domain for
> non-commerical purposes (*loosely* defined) be protected from having the
> domain taken away by a commerical trademark owner in the UDRP, on the
> grounds that the domain is confusingly similiar to a commerical trademark.
> 
> The distinction is important.  The enforcement mechanims for the UDRP
> already exists.   Every .org domain holders is bound by contract to use the
> UDRP.  When the UDRP is triggered, by someone asserting confusion with a
> *commerical* trademark, the UDRP panel should be instructured that
> non-commerical use of a domain is not confusing.
> 
> This is a very minor but useful instruction to provide the UDRP panels.  The
> commerical trademark owners would benefit by this, in the following way.  If
> there was a commercial use of the .org that was confusing with their
> commerical trademark, they could pursue remedies under the UDRP.  But if it
> was simply a non-profit (formally *or* informally organized, formerly tax
> exempt *or* not) organization using the same string, they would not be
> expected to buy the domain or pay for a UDRP proceeding.  This would save
> the commerical trademark owner money.    It would result also, I believe, in
> giving the .org TLD the type of meaning that most .org domain holders want
> it to have, in a non-coercive and non-bureaucratic way.   Jamie
> 
> <----examples of .org domains that are similar to strings used for
> commerical purposes-------->
> 
> CPTech.Org  Consumer Project on Technology
> CPTech.Net  - Cathodic Protection Technology, Pte Lid,
> CPTech.Com  -  Corporate Technologies, Inc.
> 
> http://www.att.com   AT&T
> http://WWW.ATT.ORG  / Associated Talmud Torahs
> 
> http://www.mediaaccess.com/   Medica Access Internet Solutions
> http://www.mediaaccess.org   The Media Access Project
> 
> http://www.apc.org/  The Association for Progressive Communications
> http://www.apc.com  The American Power Conversion Corporation
> 
> http://www.acm.com/   Adams Capital Management
> http://www.acm.org/   the Association for Computing Machinery
> 
> http://www.epic.com   EPIC Technology Group Solutions
> http://www.epic.org Electronic Privacy Information Center
> 
> http://www.ala.com/   Andrew Lloyd & Associates
> http://www.ala.net   ALANet INternet Services
> http://www.ala.org   American Library Association
> 
> http://www.cpsr.com  CPS Resarch
> http://www.cpsr.org    Computer Professionals for Social Responsibility
> 
> http://www.aaa.com  the American Automobile Association
> http://www.aaa.org/ the Amateur Astronomers Association of NY
> 
> ----- Original Message -----
> From: "Karl Auerbach" <karl at cavebear.com>
> > The commercial/non-commerial question can be very muddy.  For example,
> > suppose a non-profit has links on its web page to commercial sites that
> > pay for click-throughs?  Here in the US the IRS requires that tax exempt
> > entity account for such revenues as if it were not tax exempt.  And the
> > theatre company I work with - and which has a .org name - acts in many
> > respects exactly like a for-profit.  For instance it spends hundreds of
> > thousands of dollars every year promoting our shows.  And although we are
> > involved in the performing arts and are a non-profit and tax exempt
> > entity, we are still in the stream of commerce (broadly defined) and
> > really do like the concept of protecting our company's name.
> >
> > But the deeper issue here is something that is akin to the idea of
> > goodness or badness by association.  Here what is being suggested is that
> > there may be some sort of legal or or UDRP-visible aura that might attach
> > to a domain name simply by virtue of the company it keeps, i.e. the TLD it
> > is in.
> >
> > That has always bothered me.  My own personal preference is that actual
> > use is what must be objected to or what must be used as a defense.
> >
> > Over the last year or so I've been asking people whether we might improve
> > things a bit, at least here in the US, if the US trademark law were
> > amended to say something along the following lines:
> >
> > No holder of a registered mark would be placed in jeopardy of losing that
> > mark because the holder did not obtain a domain name in any or all of the
> > domain name registries available to it.
> >
> > (Of course, one would want more precise language.)
> >
> > My feeling is that something like that might help mark owners feel a bit
> > less compelled to register early and often as TLDs (and subdomains of
> > ccTLDs) open up.
> >
> > --karl--
> >
> >
> >
> >
> >
> >
> >
> >
> >
> 
> 

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A. Michael Froomkin   |    Professor of Law    |   froomkin at law.tm
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