Re: Implications of NSI *Skunkworks* Rul ing

[Duane Little <aadn1@nwi.net>]

Andre Marcel wrote:
> 
> Duane Little wrote :
> >Under the MoU, the mere registration of a name is clearly
> >regarded as the virtual equivalent of a de facto infringement.
> 
> While we understand the concern that this might be the case, in
> fact nothing could be farther from the truth.
> 
> We would recommend that anyone interested in this topic review
> the background material contained in the Policy Oversight
> Committee (POC) Request for Comments (RFC) Notice-97-03, at
> http://www.gtld-mou.org/docs/notice-97-03.html, as well as the
> text of the [Second Revised] Draft Substantive Guidelines
> Concerning Administrative Challenge Panels (ACPs) under the
> gTLD-MoU, at http://www.gtld-mou.org/docs/sracps.htm.  The
> RFC period for comments on this draft has been extended to
> December 5, 1997.
> 

I've read it.  While it mitigates the situation somewhat, it is NO
solution.

The thing is, you see, the entire ACP process should virtually not exist
at all.  Existing courts and laws suffice.


> The draft substantive guidelines require in every case a balancing
> between the rights and interests of the domain name holder, and
> the rights of the intellectual property (trademark) owner who filed
> the challenge.  Under the guidelines, the first-come first-served
> principle is stated as the basic rule for the right to hold and use a
> domain name in the gTLDs (see paragraph 10).  Cancellation of
> the domain name because of conflict with an intellectual property
> right is an exception to that principle, and there must be sufficient
> justification for doing so.
> 
There is NO justification for doing so without either a court order, or
arbitration/adjudication which has been freely agreed to by both parties
AFTER the conflict develops.


> Accordingly, the rights and interests of the domain name holder will
> be broadly taken into account when the domain name is
> challenged by a trademark owner. The rights and interests that
> must be taken into account by an ACP include the following,
> among others (see paragraph 20 of the substantive guidelines):
> 
> -  good faith use of the domain name by the domain name holder
> on the Internet;

Courts decide "good faith," not WIPO or its "rules."


> -  evidence of widespread public recognition of the domain name
> holder's use of the domain name on the Internet;

You're getting deeply into the creation of your own approximation of
trademark law right here.

What gives you the right?


> -  any prior rights that the domain name holder may have
> concerning the domain name;

Rights a court can very well evaluate.


> -  use of the domain name holder's personal name or nickname as
> a second-level domain name in a gTLD which is dedicated to
> personal names;

A fine idea, should you ever have TLDs under your control.

> -  any other right to continue use of the domain name.
> 
All of which YOU decide on YOUR standards and in a manner which clearly
exceeds the limits of standard trademark law in the rights and powers it
grants a trademark holder.

You're even allowing trademark owners to enjoin anyone's and everyone's
use of _similar_ names to their own!

Such things overstep the bounds of practically any existing trademark
law.


> An ACP must also take into account, among other things, the type
> of use that is being made of the domain name on the Internet, the
> impact of the use of the domain name by the domain name holder
> on the challenger's business, and the impact that cancellation of
> the domain name would have on the domain name holder's
> customers (paragraph 34).  A finding by the ACP that the domain
> name has been used by the domain name holder continuously and
> in good faith on the Internet for two years is considered a
> rebuttable presumption that the domain name holder is entitled to
> continue that use of the domain name (paragraph 21).
> 
Useless verbiage.  The standards of existing law are sufficient to deal
with all this.


> The substantive guidelines for ACPs have been drafted, and
> revised, in an almost year-long open and public process involving
> the participation of domain name owners and Internet associations,
> as well as trademark owners, trademark associations, and national
> governments.  They strive to achieve a balance between the
> needs and interests of users of the Internet, and those of
> trademark owners and other intellectual property right holders
> (themselves Internet users and domain name holders), to create
> stability in the global commercial and communications environment
> that the Internet has become.
> 
And WIPO strives to achieve unprecedented rights for those it represents
-- trademark owners.


> Andre Marcel
> Consultant, WIPO
> speaking on my own behalf
  ^^^^^^^^^^^^^^^^^^^^^^^^^

Looks to me like you're speaking for WIPO.


Duane

> <andre.marcel@wipo.int>