[ncdnhc-discuss] Board Positions on .ORG; Answers from V.Cerf-- full text
James Love
love at cptech.org
Sat Mar 30 00:06:59 CET 2002
Michael, regardless of what national law might be, there is still value in
having the registry explain if there is any policy regarding how the TLD
should be perceived, in terms of the UDRP rules regarding confusion. If the
TLD is designed to provide a space for non-commerical domain holders (losely
defined), and the registry say that use of a string on the .org TLD for non
commercial purposes was an appropriate and indeed an expected use of the
TLD, and therefore one should not automatically enforce a commerical
trademark in .org, this would be both helpful and responsible.
Jamie
----- Original Message -----
From: "Michael Froomkin - U.Miami School of Law" <froomkin at law.miami.edu>
To: "James Love" <love at cptech.org>
Cc: "vint cerf" <vinton.g.cerf at wcom.com>; "Cade,Marilyn S - LGA"
<mcade at att.com>; <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: Thursday, March 28, 2002 8:34 AM
Subject: Re: [ncdnhc-discuss] Board Positions on .ORG; Answers from V.Cerf--
full text
> 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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