Dear Sirs:
On behalf of Japan Trademark Association, I sent the comments concerning
the [Second Revised] Draft Substantive Guidelines directly to iPOC on the
Japanese November 7, 1997 and thus your November &, 1997. This is one day
before the closing date. But, my E-mail did to reach it for unknown reason.
So would you please kindly transmit the following to iPOC. Thank you in
advance.
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Comments concerning the [Second Revised ]Draft Substantive Guidelines
Japan Trademark Association
(written by Kazuko Matsuo)
November 7,1997
Section IV. (c) Request for Provisional Suspension of the Domain Name
4 and 5. Under 6, the emergency ACP is required to consider, in its
determination of a request for provisional suspension, the relative harm,
and a number of examples are indicated in 5, including "adequately asserted
intellectual property rights" of the challenger. But the meaning of
"adequately" is not clear. Balancing with the domain name holder's
interests, we feel that "adequate" is in substance the extent of the
challenger's intellectual property rights as indicated in "(iii) 17 and 18.
Extent of Rights" and if such understanding is acceptable, we propose that
the extent of the rights is clearly indicated as an example. In this
connection, we feel that "Extent of Rights" should be also included in the
Request for Provisional Suspension at the time of such request in light of
the important effect on the domain name holder of such request.
Section IV.C.(c).20 (page 11) As one of the factors, at the second,
"good faith use of the domain name ?.for less than two years of continuous
use " is stated. But this factor is the factor advantageous for the domain
name holder and therefore "less that two years" sounds strange. On the
other hand, 21. stated that "continuous, good faith, two year use" can be a
rebuttable presumption of the right to continuous use of the domain name
holder.
Therefore, it seems reasonable to change this wording either to "Good
faith continuous use of the domain name by the domain name holder on the
Internet" or "Good faith use of the domain name holder on the Internet
within
two years".
Section IV.C.(d).(iii).29. Bad Faith Assertion of an Intellectual Property
Right
The second paragraph does not seem reasonable, because in this case, the
challenge is based on a bona fide assertion of an intellectual property
right, and so it will be difficult to determine that nevertheless the
challenge has been brought for the sole purpose of appropriating a domain
name involved. In this connection, an example shows "coerce", but as long
as the challenger has an intellectual property right, it may be allowed to
send a written request to the domain name holder for voluntarily canceling
or transferring the domain name. On the other hand, if "coerce" is really
serious, to appropriate, by such unlawful means, another's domain name in
the good faith use is a kind of an act of disrupting the domain name
holder's activities on the Internet stated in the next paragraph.
Thus, it seems to be a better solution to combine this paragraph with the
next paragraph in the similar nature something like;
"Where the ACP finds that the intellectual property right held by
the challenger had been obtained or maintained for the sole purpose of
challenging or appropriating the domain name in question, with the intent
of or with willful negligence of disrupting the domain name holder's
activities on the Internet, for example, the challenger does not use the
subject matter of the intellectual property right with respect to the goods
or services for which it was granted."
Section V. Petitions. A (d). Submission of Search Report
41. refers to "a recent world-wide search report from a bone fide search
firm". (VI. General Exclusions. B. Submission of Search Report. 53 also
refers to such search firm). But we do not know about such firm. If there
is, it seems advisable to make a list of such firms public.
(the end )
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■□ Kazuko Matsuo (Nakamura & Partners)
□■ E-mail: kumotori@pp.iij4u.or.jp
■◇ Phone:+81-3-3211-8741 (Office)
□■ Fax(G3):+81-3-3214-6358,6359 (Office)
■□ Phone:+81-3-3772-1282 (Home)
□■ Fax(G3):+81-3-3772-9425 (Home)