Re: [nc-udrp] DRP Trademarks?

["J. Scott Evans" <jse@adamspat.com>]

John:

While many may find this type of advertising distasteful, I do not think the
WIPO would have a trademark claim provided the information listed in the
advert is true.  Under US law, a third party may use another party's mark to
identify the product/service/entity that the mark is used to identify.
There are some limitations on this type of "nominative fair use" (as coined
by the 9th Circuit); however, my review of the information you have provided
seems to fall within the parameters of fair use.

J. Scott
----- Original Message ----- 
From: "John Berryhill Ph.D. J.D." <john@johnberryhill.com>
To: <nc-udrp@dnso.org>
Sent: Thursday, January 16, 2003 4:53 PM
Subject: [nc-udrp] DRP Trademarks?


>
>
> We had discussed the issue of DRP's potentially claiming copyright in UDRP
> decisions (results - no: eRes, WIPO, CPRADR;  indeterminate/no response:
NAF,
> ADNDRC), but I wonder if any of the DRP's claim or police their trademarks
in
> connection with advertising by third parties.
>
> For example, anyone who has been on the internet long enough to remember
the
> seminal "Green Card Lawyer" Usenet spam, will certainly get a kick out of
> this recent spam posted to a usenet newsgroup:
>
> ---------------
> From: "Andrew Mansfield" <mansfield@pobox.com>
> Newsgroups: alt.domain-names.disputes
> Subject: DOMAIN NAME LAWYER
> Date: Thu, 09 Jan 2003 10:00:49 GMT
>
> I am an attorney specializing in domain name disputes.  I currently serve
as
> an arbitrator for WIPO but I am available to represent clietns.  See my
> website at http://www.mendolaw.com.
>
> Andrew Mansfield
> -------------
>
> I suppose the word "but" is intended to dispel the quaint notion that
someone
> might otherwise think that a neutral is impaired from representing others
in
> the same forum in which he or she is engaged as a neutral.
>
> Upon visiting the spamvertised website, prospective "clietns" are
informed:
>
> ---------
> http://www.mendolaw.com/intellectualprop.html
> Mr. Mansfield is a domain name arbitrator for the World Intellectual
Property
> Organization (WIPO).  Put one of the arbitrators in the complex field of
UDRP
> disputes to work for you.  Prior to his work for WIPO, Mr. Mansfield
served
> as a domain name arbitrator for another ICANN accredited institution,
> eResolution.
> Domain Name Cases are Handled on a Flat Fee Basis.  Call for a free
> consultation and quote.
> --------
>
> Presumably the statement "Put one of the arbitrators in the complex field
of
> UDRP disputes to work for you" is intended to suggest that the status of
> accredited UDRP panelist [1] confers a relevant advantage of some kind in
> undertaking matters of the kind solicited in this advertisement.
>
> Do any of the DRP's have a policy on the use of their trademarks in
attorney
> advertising?
>
> I note for other enterprising panelists, that wipopanelist.com and
> nafpanelist.com are currently available for registration.
>
> John  Berryhill
>
> [1]   I am unaware of administrative proceedings under the UDRP having
been
> elevated to the legal status of arbitrations, and every court to consider
the
> issue has expressly rejected applying principles of review of arbitration
> awards.
>
>