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

Fri Mar 29 11:19:55 CET 2002

Dear Michael,
1. many things could be easier of the world was part of the USA. But this 
is not yet the case :-)
2. UDRP has no value if the Registry does not decide to use it.
jfc

On 14:34 28/03/02, Michael Froomkin - U.Miami School of Law said:
>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.<--
>
>_______________________________________________
>Discuss mailing list
>Discuss at icann-ncc.org
>http://www.icann-ncc.org/mailman/listinfo/discuss