[ncdnhc-discuss] Board Positions on .ORG; Answers from V.Cerf -- full text
Michael Froomkin - U.Miami School of Law
froomkin at law.miami.edu
Fri Mar 29 17:26:08 CET 2002
Kidding aside, I think you missed my point. US law applies to US parties;
it doesn't apply to other people. The UDRP is NOT supposed to be a
consistent set of rules: it allows as a defense that the domain was
registered for a lawful purpose. That obviously differs from place to
place. I use US examples because I know them. My point is that this law
exists, in some form in each country, and whatever it is it can't simply
be overruled by the unilateral acts of a registry.
On Fri, 29 Mar 2002, Jefsey Morfin wrote:
> 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.<--
> >
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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
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