[Comment-Ip] Re: Comments on WIPO report sought (was Re: [IFWP] ICANN and WIPO in Berlin)

["Martin B. Schwimmer" <martys@interport.net>]

Without commenting on the proposed 'exclusionary" practice itself, I note
that Mr. Oppedahl impliedly misstates the standard for being a famous mark.
 It is not "coined and unique."  Non-coined marks which are famous include
JOHNNIE WALKER, CADILLAC and NIKE.

Demonstrably unique (or more to the point, demonstrably famous) is a
different concept from "coined and unique" and should not be confused.

Again, as a disclaimer, I am not supporting in this post the exclusionary
list proposal - I beleive however, that a correct understanding of
"demonstrably unique" will be necessary in evaluating the "abusive
registration"  concept - it may be the case that a well-designed abusive
registration process will reduce the need for an exclusion process.




At 07:21 AM 5/7/99 -0600, you wrote:
>At 05:26 AM 5/7/99 , Esther Dyson wrote:
>
>>Thanks for your comments.  AS noted, we have not yet decided what we will
>>do. It indeed depends on public comments, among other things. But aside from
>>our process, do you have any comments on the substance of the WIPO report?
>>We would welcome those.
>>
>>Esther
>
>Summary:  
>
>If ICANN chooses to adopt the WIPO recommendations for domain name
>disputes, it should do so *only* with some changes.  
>
>A.  The "exclusion List" should be available only for entities who can show
>that their mark is coined and unique.  It should be grounds for striking a
>mark from the List if it can be shown that the mark is not or was not unique.
>
>B.  In a domain name dispute, the transfer-the-domain-name remedy should be
>available *only* in cases where the asserted mark is demonstrably coined
>and unique.  Otherwise the only remedy available should be cease-and-desist
>relief (cutting off the domain name).
>
>Details:
>
>Things that WIPO got right:
>
>A.  WIPO officially recognizes reverse domain name hijacking as a problem
>(which NSI has never done).
>
>B.  Decisions will be published rather than secret (as NSI does).
>
>C.  Domain name owners will be told that a challenge is happening *before*
>the case is decided rather than after (as NSI does).
>
>D.  Domain name owners will be allowed to tell their side of the story
>rather than being told of the decision only after it was made (as NSI does).
>
>E.  Domain name owners will be able to point to their own rights and
>legitimate interests rather than being limited to showing that they have a
>trademark registration (as NSI does).
>
>Things that WIPO got wrong:
>
>1.  WIPO proposes an exclusionary List that should only be available to
>those with demonstrably unique and coined trademarks, but is instead open
>to anyone who wins the race to file an application to be on the List, thus
>harming other like-named companies.
>
>2.  WIPO proposes to *transfer* a domain name to a challenger, even if
>there are other equally deserving recipients of the domain name, thus
>rewarding the complainant who wins the race to file a WIPO challenge.
>
>The details.
>
>The WIPO report, to its credit, at least acknowledges that "reverse domain
>name hijacking" is a problem (mentioned at paras. 134, 323, and 325).  The
>report also acknowledges that NSI's domain name policy has been said to be
>"flawed in several important respects" (para. 329).  The report goes so far
>as to cite the Roadrunner v. NSI case, which is the first case in which a
>domain name owner sued NSI to block the cutoff of its domain name under
>NSI's policy (para. 324).  Despite NSI's initial determination that the
>domain name would be taken away from Roadrunner, the outcome of the case
>was that the domain name owner got to keep its domain name (footnote 206).
>[My law firm represented Roadrunner in that case.]
>
>Apparently in response to this, the WIPO recommendation is that the *only*
>circumstance in which the WIPO decisionmaker would entertain a domain name
>complaint would be in the case of a demonstrably "abusive, bad-faith"
>domain name registration.  WIPO says that its process would not be
>available in cases where the two parties have competing rights (para. 172).
> Presumably this means that if WIPO had been running things for the past
>few years instead of NSI, we would not have seen these embarassing cases in
>which NSI so consistently got the "wrong answer", ruling in favor of the
>reverse domain name hijacker even when the domain name owner had done
>nothing wrong (e.g. epix.com, cds.com, dci.com, earth.com, see para. 324).
>
>The WIPO report offers a definition of "abusive", but it is too soon to
>know whether this definition will actually serve WIPO's desired purpose,
>namely discerning between these different types of cases.  Fortunately,
>WIPO will avoid one of NSI's mistakes which was to do its decisionmaking in
>secret.  Instead, WIPO would have each decision *published* (Annex V,
>article 33).  This will permit the Internet community to review the WIPO
>decisions and assure itself that the WIPO decisionmakers are being fair in
>their decisions, and are correctly classifying cases as abusive, reverse
>domain name hijacking, or otherwise.
>
>A very large fraction of challenges brought under NSI's policy were classic
>reverse domain name hijacking, where the challenger had no bona fide claim
>of trademark infringement but merely coveted the subject domain name.  If
>the WIPO recommendations are adopted by ICANN (thus replacing the flawed
>NSI policy), it is to be expected that some such challengers will try to
>use the WIPO process just as NSI's policy was used.  Such challengers will
>try to shoehorn their fact patterns into the WIPO definition of "abusive"
>(see Annex IV).  At this time we can only hope that the WIPO decisionmakers
>would stand firm and refuse to allow the WIPO process to be misused in this
>way, but until a few such decisions have been made and published we cannot
>know whether WIPO will get the "right answers".
>
> From my point of view the biggest blunder by WIPO is the recommendation
>that there be a newly created intellectual property right, called the
>domain name "exclusion" (annex VI).  WIPO would establish a List of
>trademarks that have been found to be "famous or well-known".  Any
>trademark owner fortunate enough to get its trademark on the List would
>enjoy two powerful rights having no basis in previous intellectual property
>law.  
>
>1.  No one other than the trademark owner would be allowed to register an
>Internet domain name that contains the trademark that is on the List (Annex
>VI).
>
>2.  If someone has a domain name that is shown by the trademark owner to be
>"misleadingly similar" to a trademark that is on the List, then in the
>event of a WIPO challenge brought by the trademark owner, a strong
>evidentiary presumption would be made against the domain name owner that
>could be overcome only by satisfying "the burden of justifying the
>legitimacy" of the domain name (Annex V, article 26).  
>
>This blunder will lead to endless acrimony and struggle as owners of
>non-unique, non-coined trademarks manage to get their trademarks on the
>List.   The many past disputes involving two like-named companies (Juno
>Electric v. Juno Online, Pike Electric v. Pike, Prince Sporting Goods v.
>Prince computer training) and involving a trademark and a like-named
>company (e.g. Hasbro's "Clue" game v. Clue Computing) will play out again
>and again under WIPO's exclusion-list policy.  Suppose Hasbro manages to
>convince WIPO that "clue" belongs on the List because it is "famous or
>well-known".  Then the common dictionary word "clue" would be effectively
>withdrawn from the domain name address space, and nobody could register a
>new domain name of that common dictionary word.  Suppose the sporting goods
>company manages to convince WIPO that "prince" belongs on the List, again
>because it is "famous or well-known".  Then the common dictionary word
>"prince" would be unavailable to anyone registering a new domain name.
>
>What's worse, Hasbro and the sporting goods company could then use the
>newly created strong evidentiary presumption against not only identical
>domain names, but also against domain names that are merely alleged to be
>"misleadingly similar".
>
>The proposed WIPO exclusionary List is a disaster, failing completely to
>acknowledge that in real life there can be many like-named companies.  When
>any one of a group of like-named companies manages to get its name on the
>List, there will be never-ending trouble as uses its List status to try to
>block the other like-named companies from getting domain names that
>correspond to their own names.  There is a United Air Lines and there is a
>United Van Lines, each probably correct in thinking its name is "famous"
>and "well-known".  there is a Ford Modeling Agency and a Ford Motor
>Company, each "famous" and "well-known".  When WIPO announces the day on
>which companies can first apply to be on the List, there will be a land
>rush by companies to get on the List so that they can gain advantages over
>slower but like-named companies.
>
>WIPO should have said that only companies with demonstrably unique names
>(e.g. Exxon, Xerox) are permitted on the List.  This would avoid battles
>between groups of like-named companies who will fight to get on the List
>and who will later use their status on the List to the disadvantage of
>their like-named counterparts who were slower to try to get on the List.
>
>The final mistake made by WIPO relates to the possible outcomes of disputes
>decided under its dispute policy.  Under the NSI policy, the only thing
>that happened if a challenger prevailed was cease-and-desist relief -- the
>domain name owner was no longer able to use the domain name.  But WIPO says
>one of its available remedies will be to *transfer* ownership of a domain
>name from the previous owner to the challenger (Annex IV, "remedies"
>section).  But this ignores that for a domain name that is a non-unique,
>non-coined word (e.g. prince.com) there may well be dozens or hundreds of
>entities equally well deserving to own the domain name.  WIPO will ignore
>the other entities and will transfer the domain name to the challenger who
>happens to have "won the race to the courthouse", an unseemly way of
>determining who gets the prize when there may be other deserving
recipients.  
>
>WIPO should have said that only companies with demonstrably unique names
>are entitled to transfer-the-domain-name relief.  Other companies who
>prevail in WIPO challenges should only be entitled to cease-and-desist
relief.
>
>This latter point has been raised by the undersigned in an amicus brief
>filed in the appellate case of Avery v. Sumpton (brief at
>http://www.patents.com/avery/avery1.htm ) which will be argued June 8, 1999
>(docket sheet at http://www.patents.com/avery/docket.txt ).
>
>
>
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