Subject: GA-DIGEST V1 #135
From: [email-masked] (GA-DIGEST)
To: [email-masked]

GA-DIGEST          Friday, September 1 2000          Volume 01 : Number 135

----------------------------------------------------------------------

Date: Fri,  1 Sep 2000 13:09:25 +0200 (MET DST)
From: "Roberto Gaetano" <[email-masked]>
Subject: Re: [ga] DNSO ICANN board member

Marc,

>
>Seems this definition is defied (is that the word?) by the facts that 
came
>to light after the recent problems with the .com zone being lost on 
four
>root-servers (posted on the nanog and domain-policy lists). They
>apparently do not get their zone files from a.root but from
>what NSI calls a "stealth" server. So there are two locations, if I
>understand these lofty matters correctly. Well, we are all supposed to
>have two for redundancy and better functioning, two eyes, ears, ... :-)

>

You may be right, but the "definition" has to do with theory, and not 
with practice ;>).
In principle, the a.root is the original, and the others are copies.

RG
- --
This message was passed to you via the [email-masked] list.
Send mail to [email-masked] to unsubscribe
("unsubscribe ga" in the body of the message).
Archives at http://www.dnso.org/archives.html

------------------------------

Date: Fri, 1 Sep 2000 12:10:05 +0100
From: "Louise Ferguson" <[email-masked]>
Subject: [ga] Re: Candidate positions

This is a multi-part message in MIME format.

- ------=_NextPart_000_016F_01C0140D.9042C840
Content-Type: text/plain;
	charset="iso-8859-1"
Content-Transfer-Encoding: quoted-printable

Perhaps we need to be clear first what a bad decision is re 'identical =
or
confusingly similar', before we start counting. If trademarks are being =
used
as the basis of this whole thing (identical or confusingly similar to an
existing trademark), then perhaps we can look at what trademark law says
about 'distinctive'. If an expression is sufficiently different from
pre-exisiting trademarks to be acceptable for registration as a word =
mark,
then its use as a domain name surely cannot be confusingly similar to an
exisiting trademark. It cannot simultaneously be acceptable as a new
trademark and unacceptable as a domain name. To take a very hypothetical
example, if 'don' is registered as a trademark, then 'snowdon' could =
still
be registered as a distinctive mark, so the domain name 'snowdon' would =
not
be confusingly similar to the mark 'don'. An argument to the contrary =
would
result n a bad decision. Tata would have lost using such a
principle. (Of course, under the national law of many countries, certain
terms can never be trademarked, regardless of distinctiveness and
pre-exisiting registered marks, a major problem for doman owners who =
wish to
protect their position...)

Where there are multiple trademark registrations for exactly the same =
word
(eg there are dozens of trademarks for London as a 'word and device' =
mark
around the world), there can be no claim of exclusivity (and in fact in =
the
UK and the US I believe such registered marks are obliged to include =
such a
rider, though in many other countries they are not). Here the trademarks
holders (any of them) cannot argue that they have any rights to prevent
anyone (including domain registrants) from using the term, as it stands =
or
within a longer expression. Their registration protects the exclusive =
use of
a device (design) which includes the non-exclusive use of the word =
within
the device, as far as I'm aware. I would call any decision that argued
otherwise
a bad decision.

Louise

- ----- Original Message -----
From: Dave Crocker <[email-masked]>
To: James Love <[email-masked]>
Cc: <[email-masked]>
Sent: Friday, September 01, 2000 7:53 AM
Subject: Re: [ga] Candidate positions on UDRP

> At 02:02 AM 9/1/00 -0400, James Love wrote:
> >the WIPO panels are making bad decisions on the issues of what is
> >"identical or confusingly similar," or if they are as concerned as I =
am
> >that WIPO panels are taking away generic names from domain holders.
>
>
> Please provide the statistical basis for claiming that there is a =
pattern
> of bad decisions.  Is it one percent out of all the
> decisions?  Two?  Ten?  fifty?
>
> d/
>
> --
> This message was passed to you via the [email-masked] list.
> Send mail to [email-masked] to unsubscribe
> ("unsubscribe ga" in the body of the message).
> Archives at http://www.dnso.org/archives.html
>
>

- ------=_NextPart_000_016F_01C0140D.9042C840
Content-Type: text/html;
	charset="iso-8859-1"
Content-Transfer-Encoding: quoted-printable

<!DOCTYPE HTML PUBLIC "-//W3C//DTD HTML 4.0 Transitional//EN">
<HTML><HEAD>
<META content=3D"text/html; charset=3Diso-8859-1" =
http-equiv=3DContent-Type>
<META content=3D"MSHTML 5.00.2314.1000" name=3DGENERATOR>
<STYLE></STYLE>
</HEAD>
<BODY bgColor=3D#e8fcd3>
<DIV><FONT face=3DArial size=3D2>Perhaps we need to be clear first what =
a bad=20
decision is re 'identical or<BR>confusingly similar', before we start =
counting.=20
If trademarks are being used<BR>as the basis of this whole thing =
(identical or=20
confusingly similar to an<BR>existing trademark), then perhaps we can =
look at=20
what trademark law says<BR>about 'distinctive'. If an expression is =
sufficiently=20
different from<BR>pre-exisiting trademarks to be acceptable for =
registration as=20
a word mark,<BR>then its use as a domain name surely cannot be =
confusingly=20
similar to an<BR>exisiting trademark. It cannot simultaneously be =
acceptable as=20
a new<BR>trademark and unacceptable as a domain name. To take a very=20
hypothetical<BR>example, if 'don' is registered as a trademark, then =
'snowdon'=20
could still<BR>be registered as a distinctive mark, so the domain name =
'snowdon'=20
would not<BR>be confusingly similar to the mark 'don'. An argument to =
the=20
contrary would<BR>result n a bad decision. Tata would have lost using =
such=20
a<BR>principle. (Of course, under the national law of many countries,=20
certain<BR>terms can never be trademarked, regardless of distinctiveness =

and<BR>pre-exisiting registered marks, a major problem for doman owners =
who wish=20
to<BR>protect their position...)<BR><BR>Where there are multiple =
trademark=20
registrations for exactly the same word<BR>(eg there are dozens of =
trademarks=20
for London as a 'word and device' mark<BR>around the world), there can =
be no=20
claim of exclusivity (and in fact in the<BR>UK and the US I believe such =

registered marks are obliged to include such a<BR>rider, though in many =
other=20
countries they are not). Here the trademarks<BR>holders (any of them) =
cannot=20
argue that they have any rights to prevent<BR>anyone (including domain=20
registrants) from using the term, as it stands or<BR>within a longer =
expression.=20
Their registration protects the exclusive use of<BR>a device (design) =
which=20
includes the non-exclusive use of the word within<BR>the device, as far =
as I'm=20
aware. I would call any decision that argued<BR>otherwise<BR>a bad=20
decision.<BR><BR>Louise<BR><BR>----- Original Message -----<BR>From: =
Dave=20
Crocker &lt;<A =
href=3D"mailto:[email-masked]">[email-masked]</A>&gt;<BR>To:=20
James Love &lt;<A =
href=3D"mailto:[email-masked]">[email-masked]</A>&gt;<BR>Cc:=20
&lt;<A href=3D"mailto:[email-masked]">[email-masked]</A>&gt;<BR>Sent: Friday, =
September=20
01, 2000 7:53 AM<BR>Subject: Re: [ga] Candidate positions on=20
UDRP<BR><BR><BR>&gt; At 02:02 AM 9/1/00 -0400, James Love wrote:<BR>&gt; =
&gt;the=20
WIPO panels are making bad decisions on the issues of what is<BR>&gt;=20
&gt;"identical or confusingly similar," or if they are as concerned as I =

am<BR>&gt; &gt;that WIPO panels are taking away generic names from =
domain=20
holders.<BR>&gt;<BR>&gt;<BR>&gt; Please provide the statistical basis =
for=20
claiming that there is a pattern<BR>&gt; of bad decisions.&nbsp; Is it =
one=20
percent out of all the<BR>&gt; decisions?&nbsp; Two?&nbsp; Ten?&nbsp;=20
fifty?<BR>&gt;<BR>&gt; d/<BR>&gt;<BR>&gt; --<BR>&gt; This message was =
passed to=20
you via the <A href=3D"mailto:[email-masked]">[email-masked]</A> list.<BR>&gt; =
Send mail=20
to <A href=3D"mailto:[email-masked]">[email-masked]</A> to=20
unsubscribe<BR>&gt; ("unsubscribe ga" in the body of the =
message).<BR>&gt;=20
Archives at <A=20
href=3D"http://www.dnso.org/archives.html">http://www.dnso.org/archives.h=
tml</A><BR>&gt;<BR>&gt;<BR><BR></FONT></DIV></BODY></HTML>

- ------=_NextPart_000_016F_01C0140D.9042C840--

- --
This message was passed to you via the [email-masked] list.
Send mail to [email-masked] to unsubscribe
("unsubscribe ga" in the body of the message).
Archives at http://www.dnso.org/archives.html

------------------------------

Date: Fri,  1 Sep 2000 13:18:37 +0200 (MET DST)
From: "Roberto Gaetano" <[email-masked]>
Subject: RE: [ga] DNSO ICANN board member

Simon,

>
>"An Alternative Root is a DNS root zone containing both ICANN 
administered 
>Top Level Domains and additional non-ICANN administered Top Level 
Domains."
>
>Dave has the concept right. But, in order for the DNS root not to 
fragment, 
>the ICANN root has to act as the baseline as that is the lowest common 

>denominator. You mileage may vary with time.

How would you call a root that does not use the ICANN root as baseline?
(BTW, I assume that you cannot make sure that an alternate root does not
 point to different name servers for the TLDs that are also in ICANN's 
root)

Regards
Roberto
- --
This message was passed to you via the [email-masked] list.
Send mail to [email-masked] to unsubscribe
("unsubscribe ga" in the body of the message).
Archives at http://www.dnso.org/archives.html

------------------------------

Date: Fri, 1 Sep 2000 12:28:34 +0100
From: "Louise Ferguson" <[email-masked]>
Subject: Re: [ga] Candidate positions on UDRP

bad decisions?
The other thing that trademark registrars look at is the international class
of goods and services. As far as I know, Tata is an industrial company,
making trucks, cars and similar stuff. Anyone would still be able to
register 'tata' as a trademark for other classes of goods and services not
registered by Tata, and in countries where Tata has not registered, so why
not a domain name including that string? Or are trademark lawyers trying to
argue that trademark owners should have more rights over domain names than
they have over trademarks?

Maybe we should all now queue up at the Tunisian TM registry (I'm told
they're very fast) before registering domains? Perhaps some small island tax
haven should consider introducing a fast-track TM service for impatient
internet entrepreneurs. Then we could all file an electronic copy of our
Bermuda TM with our domain registration and solve all our problems. Although
there seems to be nothing in the UDRP to prevent one trademark owner from
filing against another.......

Louise Ferguson

- --
This message was passed to you via the [email-masked] list.
Send mail to [email-masked] to unsubscribe
("unsubscribe ga" in the body of the message).
Archives at http://www.dnso.org/archives.html

------------------------------

Date: Fri, 01 Sep 2000 12:55:33 +0200
From: Jefsey Morfin <[email-masked]>
Subject: Re: [ga] new TLDs

Simon,
I would be interested to know how you avoid a land
rush. I enjoyed documenting to the ICANN what
our brave today world will do with this: it is
tremendously fun. Experts, consulting, special
programs, tv shows and games, domain names
lotteries and chases, film scenarios, books, etc...
and lawyers decades. Last year it was Y2K, it will
the "C3" (the ".COM clones century'). Probably
only a few will sue the ICANN and NSI for failing
to organize the protection of their rights, but then
probably for millions, but private TLDs will bloom
around only to reproduce the fun!!!
Jefsey

At 11:26 01/09/00, you wrote:
>At 11:26 PM 8/31/00 -0400, [email-masked] wrote:
>
>Thanks for sharing Otho. This is old news. And it doesn't have to happen 
>this way.
>
>May I point out that the get-rich-quick crowd (CORE demonstrated this 
>mentality to us in 1997) subscribe to this doctrine. Others, like myself, 
>who have more concern for the stability of the internet, know how to 
>introduce new TLDs without the land rush.
>
>The problem is we don't know if ICANN is serious this time around (this is 
>the third time around for me), or whether it's just a money raising 
>exercise @ $50,000 per application with no guarantees, while selling out 
>to special interests behind the scenes.
>
>The amount of money is much less important than the stability of the 
>application process. Without some kind of assurance, the application 
>process can only be perceived as unstable.
>
>>OK.  I rarely post to this list, but I have something to say.
>>I have received several emails recently that basically said
>>everybody will immediately register everything in any new TLD
>>that is put up.  I don't know if this is good or not.  Yes, I am
>>in the IP group, but I am independent and I thought I should
>>share this observation.
>>Otho Ross
>
>
>Best Regards,
>
>Simon Higgs
>
>--
>It's a feature not a bug...
>
>--
>This message was passed to you via the [email-masked] list.
>Send mail to [email-masked] to unsubscribe
>("unsubscribe ga" in the body of the message).
>Archives at http://www.dnso.org/archives.html

- --
This message was passed to you via the [email-masked] list.
Send mail to [email-masked] to unsubscribe
("unsubscribe ga" in the body of the message).
Archives at http://www.dnso.org/archives.html

------------------------------

Date: Fri, 1 Sep 2000 13:57:16 +0200
From: "Alf Hansen" <[email-masked]>
Subject: RE: [ga] DNSO ICANN board member

Roberto,

> -----Original Message-----
> From: [email-masked] [mailto:[email-masked]]On Behalf Of Roberto
> Gaetano
> Sent: 1. september 2000 13:19
> To: [email-masked]
> Cc: [email-masked]; [email-masked]; [email-masked]; [email-masked]
> Subject: RE: [ga] DNSO ICANN board member
...
>
> How would you call a root that does not use the ICANN root as baseline?
> (BTW, I assume that you cannot make sure that an alternate root does not
>  point to different name servers for the TLDs that are also in ICANN's
> root)

I would say that even if the systems using this alternate root are using
internet technology, they are not part of The Internet. They do not follow
the rules they have to follow to be part of the global Internet family,
which is based on cooperation.

>
> Regards
> Roberto
> --
> This message was passed to you via the [email-masked] list.
> Send mail to [email-masked] to unsubscribe
> ("unsubscribe ga" in the body of the message).
> Archives at http://www.dnso.org/archives.html
>

It is therefore of vital importance to set up the formal Root Server
Contracts, where all the (13?) root servers are listed and identified.

Best regards,
Alf H

- --
This message was passed to you via the [email-masked] list.
Send mail to [email-masked] to unsubscribe
("unsubscribe ga" in the body of the message).
Archives at http://www.dnso.org/archives.html

------------------------------

Date: Fri, 1 Sep 2000 14:11:31 +0200 (MEST)
From: Marc Schneiders <[email-masked]>
Subject: Re: [ga] DNSO ICANN board member

On Fri, 1 Sep 2000, Louise Ferguson wrote:

[...]
> With the UDRP, there now seem to be implied terms in these contracts that
> should be written up front, for everyone to see. If (a) I have to accept the
> UDRP when I sign the
> contract and (b) every registrar for gTLDs includes the UDRP in their
> contract and (c) under the UDRP I am providing evidence of  bad faith
> registration or use if I try to resell for greater than purchase price, then
> maybe the contract should state that it is forbidden to transfer for more
> than purchase price.

In the UDRP your number (c) is somewhat differently worded and only
applies to intended TM infringements with an intent to sell to the TM
holder. Selling iitself is not forbidden.. This is the theory of course,
as in real life trying to make a profit is deemed to be bad faith. Only
with domain names, not with stocks, land, art, whatevever. I suggest we
direct our efforts against the unjust *interpretation* (if it is that) of
the UDRP by WIPO. Not against UDRP itself.

- -- 
Marc Schneiders ------- Venster - http://www.venster.nl
 [email-masked] - [email-masked] - [email-masked]

- --
This message was passed to you via the [email-masked] list.
Send mail to [email-masked] to unsubscribe
("unsubscribe ga" in the body of the message).
Archives at http://www.dnso.org/archives.html

------------------------------

Date: Fri, 1 Sep 2000 14:13:19 +0100
From: "Louise Ferguson" <[email-masked]>
Subject: Re: [ga] DNSO ICANN board member

No, selling is not forbidden. But offering for sale - on a domain sales web
site for eg, ie to anyone - is interpreted by most panellists as evidence of
bad faith.

Agreeing to send a business plan when requested, to someone who subsequently
turned out to represent a company which is a subsidiary of the complainant,
that complainant having > 1,000 trademarks registered in Spain, of which two
included the generic word of the domain in a longer string, was also found
to be bad faith in WIPO case 505 (although the panellist admitted that the
domain had never been offered for sale to anyone). In case 505 a profit
motive was also deemed to be bad faith, as was the existence of any material
of any description on the web site.

If I respond to any e-mail offer to buy one of my domains, or to invest in
my projects, without first checking the exact trademarks owned by that
person in every country, I am immediately putting myself in a potential bad
faith position, and my domains are not for sale on any web site.

The breadth of  these 'interpretations' can be traced back to the UDRP.
Because it just gives a few examples of what bad faith may be, but fails to
draw any line between bad faith and good faith, panellists are free to set
those limits themselves. The UDRP, if it is to remain, should clearly state
that certain things are not to be interpreted as bad faith. We cannot modify
the way trademark lawyers acting as panellists think. But if the UDRP were
changed, we might at least be able to limit the field of damage. And perhaps
ICANN needs to rethink whether trademark lawyers should be panellists.

I think a list of items that would be termed attempted reverse hijacking
should also be included, just to even up the scales. For eg, filing
trademark applications for the domain owner's company name immediately prior
to filing a complaint; approaching the domain owner with an offer to invest
in the domain project immediately prior to filing a complaint; filing
trademark applications identical to domain names belonging to 3+ third
parties immediately prior to filing the complaint; filing multiple trademark
applications for expressions identical to domain names that the organisation
cannot legally register; doctoring documents presented as evidence; making
false claims disproved by the evidence (including statute law) before the
panellist (all these examples are from a single case).

Louise

- ----- Original Message -----
From: Marc Schneiders <[email-masked]>
To: Louise Ferguson <[email-masked]>
Cc: <[email-masked]>
Sent: Friday, September 01, 2000 1:11 PM
Subject: Re: [ga] DNSO ICANN board member

> On Fri, 1 Sep 2000, Louise Ferguson wrote:
>
> [...]
> > With the UDRP, there now seem to be implied terms in these contracts
that
> > should be written up front, for everyone to see. If (a) I have to accept
the
> > UDRP when I sign the
> > contract and (b) every registrar for gTLDs includes the UDRP in their
> > contract and (c) under the UDRP I am providing evidence of  bad faith
> > registration or use if I try to resell for greater than purchase price,
then
> > maybe the contract should state that it is forbidden to transfer for
more
> > than purchase price.
>
> In the UDRP your number (c) is somewhat differently worded and only
> applies to intended TM infringements with an intent to sell to the TM
> holder. Selling iitself is not forbidden.. This is the theory of course,
> as in real life trying to make a profit is deemed to be bad faith. Only
> with domain names, not with stocks, land, art, whatevever. I suggest we
> direct our efforts against the unjust *interpretation* (if it is that) of
> the UDRP by WIPO. Not against UDRP itself.
>
> --
> Marc Schneiders ------- Venster - http://www.venster.nl
>  [email-masked] - [email-masked] - [email-masked]
>

- --
This message was passed to you via the [email-masked] list.
Send mail to [email-masked] to unsubscribe
("unsubscribe ga" in the body of the message).
Archives at http://www.dnso.org/archives.html

------------------------------

Date: Fri, 1 Sep 2000 17:12:32 +0200 (MEST)
From: Marc Schneiders <[email-masked]>
Subject: Re: [ga] DNSO ICANN board member

Agreed. We may quarrel over details perhaps. I presume we agree on two
basics:

1. Some form of mandatory arbitration is not bad;
2. The present functioning of the UDRP is unfair, even unjust in a number
of cases. 

Who to blame, ICANN or WIPO is not a very important question, I
think. ICANN approved of WIPO doing the cases. So ICANN should monitor
them. And thoroughly review, as it promised, the UDRP. 

We must be careful not to let the issue of UDRP review on ICANN's agenda
disappear or be handled badly through too much attention for the new
gTLDs. That will not be easy, esp. since they are related...

The very positive way in which the UDRP and the way it worked, was
mentioned in Yokohama, esp. by Ms Dyson (twice within an hour), gives
cause for some anxiety and alertness.

- --
Marc Schneiders ------- Venster - http://www.venster.nl 
 [email-masked] - [email-masked] - [email-masked]

On Fri, 1 Sep 2000, Louise Ferguson wrote:

> No, selling is not forbidden. But offering for sale - on a domain sales web
> site for eg, ie to anyone - is interpreted by most panellists as evidence of
> bad faith.
> 
> Agreeing to send a business plan when requested, to someone who subsequently
> turned out to represent a company which is a subsidiary of the complainant,
> that complainant having > 1,000 trademarks registered in Spain, of which two
> included the generic word of the domain in a longer string, was also found
> to be bad faith in WIPO case 505 (although the panellist admitted that the
> domain had never been offered for sale to anyone). In case 505 a profit
> motive was also deemed to be bad faith, as was the existence of any material
> of any description on the web site.
> 
> If I respond to any e-mail offer to buy one of my domains, or to invest in
> my projects, without first checking the exact trademarks owned by that
> person in every country, I am immediately putting myself in a potential bad
> faith position, and my domains are not for sale on any web site.
> 
> The breadth of  these 'interpretations' can be traced back to the UDRP.
> Because it just gives a few examples of what bad faith may be, but fails to
> draw any line between bad faith and good faith, panellists are free to set
> those limits themselves. The UDRP, if it is to remain, should clearly state
> that certain things are not to be interpreted as bad faith. We cannot modify
> the way trademark lawyers acting as panellists think. But if the UDRP were
> changed, we might at least be able to limit the field of damage. And perhaps
> ICANN needs to rethink whether trademark lawyers should be panellists.
> 
> I think a list of items that would be termed attempted reverse hijacking
> should also be included, just to even up the scales. For eg, filing
> trademark applications for the domain owner's company name immediately prior
> to filing a complaint; approaching the domain owner with an offer to invest
> in the domain project immediately prior to filing a complaint; filing
> trademark applications identical to domain names belonging to 3+ third
> parties immediately prior to filing the complaint; filing multiple trademark
> applications for expressions identical to domain names that the organisation
> cannot legally register; doctoring documents presented as evidence; making
> false claims disproved by the evidence (including statute law) before the
> panellist (all these examples are from a single case).
> 
> Louise
> 
> ----- Original Message -----
> From: Marc Schneiders <[email-masked]>
> To: Louise Ferguson <[email-masked]>
> Cc: <[email-masked]>
> Sent: Friday, September 01, 2000 1:11 PM
> Subject: Re: [ga] DNSO ICANN board member
> 
> 
> > On Fri, 1 Sep 2000, Louise Ferguson wrote:
> >
> > [...]
> > > With the UDRP, there now seem to be implied terms in these contracts
> that
> > > should be written up front, for everyone to see. If (a) I have to accept
> the
> > > UDRP when I sign the
> > > contract and (b) every registrar for gTLDs includes the UDRP in their
> > > contract and (c) under the UDRP I am providing evidence of  bad faith
> > > registration or use if I try to resell for greater than purchase price,
> then
> > > maybe the contract should state that it is forbidden to transfer for
> more
> > > than purchase price.
> >
> > In the UDRP your number (c) is somewhat differently worded and only
> > applies to intended TM infringements with an intent to sell to the TM
> > holder. Selling iitself is not forbidden.. This is the theory of course,
> > as in real life trying to make a profit is deemed to be bad faith. Only
> > with domain names, not with stocks, land, art, whatevever. I suggest we
> > direct our efforts against the unjust *interpretation* (if it is that) of
> > the UDRP by WIPO. Not against UDRP itself.
> >
> > --
> > Marc Schneiders ------- Venster - http://www.venster.nl
> >  [email-masked] - [email-masked] - [email-masked]
> >
> 

- --
Marc Schneiders ------- Venster - http://www.venster.nl 
 [email-masked] - [email-masked] - [email-masked]

- --
This message was passed to you via the [email-masked] list.
Send mail to [email-masked] to unsubscribe
("unsubscribe ga" in the body of the message).
Archives at http://www.dnso.org/archives.html

------------------------------

Date: Fri, 01 Sep 2000 10:04:42 -0400
From: James Love <[email-masked]>
Subject: [ga] Re: Weikers position on UDRP

Thanks to Ronald Weikers for this detailed and informative response.  

  Jamie

"Ronald N. Weikers" wrote:
> 
> James Love asked:
> 
> >do these candidates believe ... that the UDRP has gone too far in
> >protecting trademark owners ...?
> 
>         Ron responded:
> 
>         Yes.
> 
>         Changes should be made to the UDRP to require a balancing of interests,
> which is found in trademark law.  The following changes will resolve most
> consumers groups' very valid concerns, and still uphold trademark law.
> 
>         First, we should give panelists the discretion to award the prevailing
> party their attorney's fees and costs from the non-prevailing party (like
> the U.S.'s Anticybersquatting Consumer Protection Act), in order to deter
> reverse domain name hijacking.  In particular, panelists may (but are not
> required to) award costs when a complainant is found to have abused the
> administrative process, or when a respondent is found to have acted in bad
> faith and to have no legitimate interests.  Read further to see why only a
> true, hard-core cybersquatter-respondent might be subjected to this.
> 
>         Second, in the case of inherently distinctive marks -- i.e., suggestive
> marks (involving a creative association between the mark and the
> good/service, such as "Apple-A-Day" for vitamins), arbitrary marks (common
> words used for uncommon purposes, such as "Apple" for computers) and
> fanciful marks (coined words, such as "Xerox") --, the UDRP should put the
> burden of proof by "a preponderance of evidence" of the respondent's bad
> faith (UDRP section 4.b.) upon the complainant, and should not put the sole
> burden of proof upon the respondent to prove its own good faith, which has
> often been the case in UDRP decisions.  In addition, in the case of
> inherently distinctive marks, the UDRP should put the burden of proof by a
> preponderance of evidence of the respondent's lack of legitimate interests
> (UDRP section 4.c.) upon the complainant, and should not require solely the
> respondent to prove a presence of legitimate interests, again, which has
> often been the case in UDRP decisions.
> 
>         Third, in the case of descriptive marks -- i.e., weak marks that require
> secondary meaning (i.e., distinctiveness in commerce, measured by the
> extent to which it has become identified in the public mind with the
> particular source of the goods/services) for protection, such as
> "Tom-Apple" for tomato-apple juice -- the same changes should be made to
> UDRP sections 4.b. and 4.c., except that the complainant should bear the
> additional burden of proving by a preponderance of evidence that the mark
> has acquired secondary meaning by some commonly used factors, such as the
> length and exclusivity of the complainant's mark's use, sales volume of the
> good/service using the mark, promotional efforts that focus on linking the
> mark and the source of the good/service, etc.
> 
>         Fourth, in the case of generic marks -- i.e., common words used for common
> goods/services, such as "Apple" for apples --, and in the case of
> geographic regions, the first to register the domain name should have the
> right of ownership.
> 
>         Fifth, in the case of personal names, complainants must be required to
> show by "clear and convincing evidence" that their name is famous
> worldwide.  Otherwise, personal names should be on a first-come,
> first-served basis.
> 
>         Sixth, we should build into the UDRP an appeals process, in the event that
> the non-prevailing party cannot afford/does not want to pay for litigation
> (UDRP decisions are not binding on courts of law).  The parties would also
> have the right to make the appellate decision binding (both must agree,
> however), in order to make the process cost-effective.
> 
>         Seventh, in the balancing of interests process, common law (unregistered)
> marks owned by complainants should be given whatever weight they may have
> acquired by secondary meaning.  The fact that a trademark application is
> pending should, by itself, be given no weight.
> 
>         Eighth, and finally, we should have no lists of protected names or marks,
> as proposed by WIPO, because the organization that assumes the
> responsibility for maintaining such directories would be required to make a
> preliminary determination whether the foregoing burdens of proof can be met
> (like preliminary mini UDRP decisions).  Assuming that myriad
> entities/people would seek to register their marks and names, such a task
> would be logistically impossible.  Instead, case-by-case UDRP proceedings
> should be relied upon to resolve such disputes.  It will be cheaper in the
> long run, and more effective.
> ====================================
> Ronald N. Weikers
> Weikers & Co., A High Technology Law Firm
> 226 West Highland Avenue
> Philadelphia, Pennsylvania  19118
> Telephone:     215.242.5333
> Facsimile:       215.248.4647
> http://software-law.com

- -- 
James Love  mailto:[email-masked] http://www.cptech.org
Consumer Project on Technology, P.O. Box 19367, Washington, DC 20036
voice 1.202.387.8030  fax  1.202.234.5176
- --
This message was passed to you via the [email-masked] list.
Send mail to [email-masked] to unsubscribe
("unsubscribe ga" in the body of the message).
Archives at http://www.dnso.org/archives.html

------------------------------

Date: Fri,  1 Sep 2000 17:29:40 +0200 (MET DST)
From: "Roberto Gaetano" <[email-masked]>
Subject: RE: [ga] new TLDs

Alf,

IMHO, the only reason for adding TLDs is to add diversity of models.
- - Chartered vs. open
- - with trademark protection / UDRP vs. without
- - for-profit vs. not-for-profit Registry
and so on (see http://www.chez.com/rgaetano/TLD-e.htm).

If the models are diversified, it will make no sense (and in some cases 
it will be practically impossible) to re-register in the new TLDs the 
SLDs already registered as .com.

If, OTOH, the ICANN Board selects just some clones of .com (like .firm, 
biz, or whatever), I agree that we are in trouble.
But why should they?

BTW, may I assume that you, as Director, would not? ;>)

Regards
Roberto

>Hi,
>
>If this is the result of new gTLDs, we have lost.
>
>A TLD should really mean something. The policy for each TLD should be 
clear
>and well published, and give the registrant a clear idea about which 
TLD he
>should registrer under.
>
>This scheme is for the best of the consumer, and also for the provider.

>
>Best regards,
>Alf H
>
>
>> -----Original Message-----
>> From: [email-masked] [mailto:[email-masked]]On Behalf Of
>> [email-masked]
>> Sent: 1. september 2000 05:27
>> To: [email-masked]
>> Subject: [ga] new TLDs
>>
>>
>> OK.  I rarely post to this list, but I have something to say.
>> I have received several emails recently that basically said
>> everybody will immediately register everything in any new TLD
>> that is put up.  I don't know if this is good or not.  Yes, I am
>> in the IP group, but I am independent and I thought I should
>> share this observation.
>> Otho Ross
>> --
>> This message was passed to you via the [email-masked] list.
>> Send mail to [email-masked] to unsubscribe
>> ("unsubscribe ga" in the body of the message).
>> Archives at http://www.dnso.org/archives.html
>>
>
>--
>This message was passed to you via the [email-masked] list.
>Send mail to [email-masked] to unsubscribe
>("unsubscribe ga" in the body of the message).
>Archives at http://www.dnso.org/archives.html
>
>
>
>
- --
This message was passed to you via the [email-masked] list.
Send mail to [email-masked] to unsubscribe
("unsubscribe ga" in the body of the message).
Archives at http://www.dnso.org/archives.html

------------------------------

Date: Fri, 1 Sep 2000 16:16:02 +0100
From: "Louise Ferguson" <[email-masked]>
Subject: Re: [ga] DNSO ICANN board member

> Agreed. We may quarrel over details perhaps. I presume we agree on two
> basics:
> > 1. Some form of mandatory arbitration is not bad;
> 2. The present functioning of the UDRP is unfair, even unjust in a number
> of cases.

Yes
>
> Who to blame, ICANN or WIPO is not a very important question, I
> think. ICANN approved of WIPO doing the cases.

I'm playing devil's advocate here, but it seems ICANN structure, resources
etc meant that it pretty much had to hand over to WIPO.

So ICANN should monitor
> them. And thoroughly review, as it promised, the UDRP.

The review is due November. November is also when she leaves, so with the
changeover at the top, this whole process may end up getting pushed back
>
> We must be careful not to let the issue of UDRP review on ICANN's agenda
> disappear or be handled badly through too much attention for the new
> gTLDs. That will not be easy, esp. since they are related...
>
> The very positive way in which the UDRP and the way it worked, was
> mentioned in Yokohama, esp. by Ms Dyson (twice within an hour), gives
> cause for some anxiety and alertness.

I've already written to her to express my views, in very moderate but firm
language, and I hope others do too.

Louise
>
> --
> Marc Schneiders ------- Venster - http://www.venster.nl
>  [email-masked] - [email-masked] - [email-masked]
>
> On Fri, 1 Sep 2000, Louise Ferguson wrote:
>
> > No, selling is not forbidden. But offering for sale - on a domain sales
web
> > site for eg, ie to anyone - is interpreted by most panellists as
evidence of
> > bad faith.
> >
> > Agreeing to send a business plan when requested, to someone who
subsequently
> > turned out to represent a company which is a subsidiary of the
complainant,
> > that complainant having > 1,000 trademarks registered in Spain, of which
two
> > included the generic word of the domain in a longer string, was also
found
> > to be bad faith in WIPO case 505 (although the panellist admitted that
the
> > domain had never been offered for sale to anyone). In case 505 a profit
> > motive was also deemed to be bad faith, as was the existence of any
material
> > of any description on the web site.
> >
> > If I respond to any e-mail offer to buy one of my domains, or to invest
in
> > my projects, without first checking the exact trademarks owned by that
> > person in every country, I am immediately putting myself in a potential
bad
> > faith position, and my domains are not for sale on any web site.
> >
> > The breadth of  these 'interpretations' can be traced back to the UDRP.
> > Because it just gives a few examples of what bad faith may be, but fails
to
> > draw any line between bad faith and good faith, panellists are free to
set
> > those limits themselves. The UDRP, if it is to remain, should clearly
state
> > that certain things are not to be interpreted as bad faith. We cannot
modify
> > the way trademark lawyers acting as panellists think. But if the UDRP
were
> > changed, we might at least be able to limit the field of damage. And
perhaps
> > ICANN needs to rethink whether trademark lawyers should be panellists.
> >
> > I think a list of items that would be termed attempted reverse hijacking
> > should also be included, just to even up the scales. For eg, filing
> > trademark applications for the domain owner's company name immediately
prior
> > to filing a complaint; approaching the domain owner with an offer to
invest
> > in the domain project immediately prior to filing a complaint; filing
> > trademark applications identical to domain names belonging to 3+ third
> > parties immediately prior to filing the complaint; filing multiple
trademark
> > applications for expressions identical to domain names that the
organisation
> > cannot legally register; doctoring documents presented as evidence;
making
> > false claims disproved by the evidence (including statute law) before
the
> > panellist (all these examples are from a single case).
> >
> > Louise
> >
> > ----- Original Message -----
> > From: Marc Schneiders <[email-masked]>
> > To: Louise Ferguson <[email-masked]>
> > Cc: <[email-masked]>
> > Sent: Friday, September 01, 2000 1:11 PM
> > Subject: Re: [ga] DNSO ICANN board member
> >
> >
> > > On Fri, 1 Sep 2000, Louise Ferguson wrote:
> > >
> > > [...]
> > > > With the UDRP, there now seem to be implied terms in these contracts
> > that
> > > > should be written up front, for everyone to see. If (a) I have to
accept
> > the
> > > > UDRP when I sign the
> > > > contract and (b) every registrar for gTLDs includes the UDRP in
their
> > > > contract and (c) under the UDRP I am providing evidence of  bad
faith
> > > > registration or use if I try to resell for greater than purchase
price,
> > then
> > > > maybe the contract should state that it is forbidden to transfer for
> > more
> > > > than purchase price.
> > >
> > > In the UDRP your number (c) is somewhat differently worded and only
> > > applies to intended TM infringements with an intent to sell to the TM
> > > holder. Selling iitself is not forbidden.. This is the theory of
course,
> > > as in real life trying to make a profit is deemed to be bad faith.
Only
> > > with domain names, not with stocks, land, art, whatevever. I suggest
we
> > > direct our efforts against the unjust *interpretation* (if it is that)
of
> > > the UDRP by WIPO. Not against UDRP itself.
> > >
> > > --
> > > Marc Schneiders ------- Venster - http://www.venster.nl
> > >  [email-masked] - [email-masked] - [email-masked]
> > >
> >
>
> --
> Marc Schneiders ------- Venster - http://www.venster.nl
>  [email-masked] - [email-masked] - [email-masked]
>
>

- --
This message was passed to you via the [email-masked] list.
Send mail to [email-masked] to unsubscribe
("unsubscribe ga" in the body of the message).
Archives at http://www.dnso.org/archives.html

------------------------------

End of GA-DIGEST V1 #135
************************