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

[Michael Froomkin - U.Miami School of Law]

A registry can have a policy on whatever it likes.  However its policy
cannot (any more than I can) determine the trademark law of any country. 

I can declare that when I do X, Y, or Z it isn't a trademark infringement
(which is the consequence of a commercial use that's confusing), but no
court will waste much time listening to me.  It's not what I (or the
registry) thinks that counts.

Since UDRP panelists are **supposed** to mirror national law (in fact,
many have totally lost sight of that, and are enjoying their freedom to
make up rules as they go, bringing the UDRP into great disrepute in all
legal circles outside the fraternity of the trademark bar, who are enjoying
deciding cases favoring the interests of the type of clients they tend to
represent), the declaration of the registry shouldn't cut much ice.  Of
course, since arbitrators ignore the law often anyway, this might in fact
be a way to take advantage of that behavior.  But I wouldn't feel good
about it.

To repeat: a registry can have an "acceptable use policy".  Intentional
violation of that policy might be an element of "bad faith" registration
or use.  But what constitutes "infringement" ie "commercial use" and
"confusion" are matters of national law.  We don't get to change that by
contract. 

This is precisely why WIPO can never be trusted to run the UDRP.  At every
turn WIPO sought to have a UDRP system where they would write the
substantive legal rules, unilaterally, without input from the democratic
process.  I fought that every step of the way.  I won in principle - WIPO
abandoned that effort in its final report - although the practice under the
UDRP has not been exemplary.

Even if you think the UDRP should have its own rules, a few minutes
thinking about what happens when the cases are 'appealed' to courts that
will not in any way defer to the arbitrations makes you realize that this
only imposes additional costs on everyone, to almost no gain.

A much better strategy is the one .org actually adopted - a blend of
education and branding.  By teaching people that the personality of .org
is non-commercial, it reduces the actual threat of commercial confusion.
This brilliantly addresses the source of the problem.

Note also that in the US a non-commercial use of a mark is never
infringing except in very weird and rare circumstances (e.g. tarnishment,
by association with say terrorism or pr0n). Also a non-commercial use is
never dilutive.  Never.

On Thu, 28 Mar 2002, James Love wrote:

> Michael, are you saying a registry can't have a "policy" as to what would be
> considered a confusing use of a trademark on its TLD?   Does this mean the
> unions (.union) could not have a policy on this, the .coop, .muesum, .aero,
> etc?   It would seem to me that if the registry adopts such a policy, the
> UDRP panel members should defer to this.
> Jamie
> 
> ----- Original Message -----
> From: "Michael Froomkin - U.Miami School of Law" <froomkin at law.miami.edu>
> To: "vint cerf" <vinton.g.cerf at wcom.com>
> Cc: "James Love" <james.love at cptech.org>; <discuss at icann-ncc.org>;
> <KathrynKL at aol.com>; "'Amadeu at nominalia. com'" <Amadeu at nominalia.com>;
> "Jonathan Cohen" <jcohen at shapirocohen.com>; "Karl Auerbach"
> <karl at cavebear.com>
> Sent: Wednesday, March 27, 2002 11:52 PM
> Subject: Re: [ncdnhc-discuss] Board Positions on .ORG; Answers from
> V.Cerf -- full text
> 
> 
> > The difficulty with this idea is that the UDRP is supposed to mirror
> > national law.  We don't give guidance to panelists because they are
> > supposed to follow law that comes from ELSEWHERE, not ICANN.
> >
> > In fact, however, US law already has a few cases where judges have
> > suggested that .com is more likely to be confusing than other TLDs, so
> > this distinction is a real one, at least for US law based cases.
> > (However, it would be an exaggeration to say that the distinction is
> > a firm one, widely accepted - it's at a just-past-nascent stage at
> > present).
> >
> >
> > On Sat, 23 Mar 2002, vint cerf wrote:
> >
> > > that's in interesting proposal. The trademark world tends to view any
> > > potential dilution or weakening of a mark to be risky so I don't know
> > > whether a formulation such as you suggest would work but it is an
> > > interesting idea. Of course, one might experience abuse of such an
> > > arrangement if someone registered coca-cola.org or kodak.org and
> > > used the site in a way that really did cause confusion as to the
> > > operator of the site, association or not with the known trademark, etc.
> > > So one would also need a way to deal with that, I guess.
> > >
> > > Have you tried this idea out on the business constituency of DNSO?
> > >
> > > vint
> > >
> > > onAt 08:46 AM 3/23/2002 -0500, James Love wrote:
> > > >I would like to offer a different way to frame the issue than one of
> > > >regulating what someone does on a .org site.  By addressing the issue
> of
> > > >what trademark claims one can make, there will be a self selection on
> ..org.
> > > >One can allow completely open registration on .org (the NC and ICANN
> board
> > > >recommendation and certainly what every registrar wants),  and not
> permit
> > > >any challenges to the use of a domain for any reason.   At the same
> time,
> > > >one can provide some guidance to the UDRP panels as to what constitutes
> > > >confusion under the existing UDRP guidelines.  In particular, one make
> it
> > > >clear that a non-commercial use on .org is not considered confusion
> with a
> > > >business use that may have a trademark involving the same domain name
> > > >string.     This would make the NC suggestion of "marketing" .org for
> > > >non-commercial use have some content and structure, and it would have
> the
> > > >costs of this policy borne by those who seek to take .org domains away.
> > > >
> > > >If one has strong ideological reasons to oppose any differentiation of
> uses
> > > >of TLDs, then this will not be well received, and there may be some
> other
> > > >pragmatic or strategic concerns here, that have not been explained.
> But I
> > > >have offered this to address concerns that the NC recommendation for
> ..org is
> > > >too vague in some areas, and to address our own concersn about NGO's
> being
> > > >knocked off .org domains by businesses who have similiar trademarks (as
> has
> > > >already happened in .net).
> > > >
> > > >   Jamie
> > >
> > > _______________________________________________
> > > Discuss mailing list
> > > Discuss at icann-ncc.org
> > > http://www.icann-ncc.org/mailman/listinfo/discuss
> > >
> >
> > --
> > Please visit http://www.icannwatch.org
> > A. Michael Froomkin   |    Professor of Law    |   froomkin at law.tm
> > U. Miami School of Law, P.O. Box 248087, Coral Gables, FL 33124 USA
> > +1 (305) 284-4285  |  +1 (305) 284-6506 (fax)  |  http://www.law.tm
> >                         -->It's hot here.<--
> >
> >
> 
> 

-- 
		Please visit http://www.icannwatch.org
A. Michael Froomkin   |    Professor of Law    |   froomkin at law.tm
U. Miami School of Law, P.O. Box 248087, Coral Gables, FL 33124 USA
+1 (305) 284-4285  |  +1 (305) 284-6506 (fax)  |  http://www.law.tm
                        -->It's hot here.<--