3 WIPO flaws [WAS Re: [discuss] Notes - Names Council Meeting, SanJose - 062599]

["Michael Froomkin - U.Miami School of Law" <froomkin@law.miami.edu>]

[I've taken the liberty of adjusting the subject line...]

Randy Bush asks for some examples.  
Here are 3:

1) The WIPO draft in chapter 4 proposes an extensive set of procedures and
advantages for a new class of globally famous names.   As no one has been
able to agree to date what these names might be the definition of this
class is not required by current law.  Furthermore, the advantages that
WIPO  proposes to offer these marks are not required by current law.   Nor
are they prohibited by it.

2) The WIPO report suggests that a DN holder should have 10 days from the
date that an email notice is sent (not received) to draft and file his/her
complete defense to a claim of cybersquatting.   This is a powerful
advantage for the complainant, who has no duty to attempt to warn the DN
holder of the impending action.   Furthermore if the DN holder is on
vacation and doesn't read email for 10 days...I guess that  is it.

I would argue that this procedure is so unfair as to be unconscionable.
But I could be wrong about that.   Let's assume it is legal:  it gives the
complainant a tactic which is much more favorable than the law requires.

3) The WIPO report alleges that if a party is unhappy with the outcome of
an ADR, thy can always take the matter to court.   While it is trivially
true that an ADR can be structured to create no decision that is binding in
court, it turns out that WIPO's account of the post-ADR procedure is
missing some key elements.  In order to bring a complaint in a US court,
you must be able to allege either:
-breach of contract
-tort
-violation of a regulatory or statutory duty.

It seems to me that none of these will exist after Alice loses an ADR
initiated by Bob:

a) There is no contractual claim.  For starters, there is no contract
between Alice & bob; Alice might sue the registrar registry or
arbitrators, but under WIPO she's had to waive the right to sue any of
these parties already, so that's out.  In any case, the contract provides
for an arbitration.   Absent fraud, that's what Alice got.  the fact she
thinks a court would find differently is not a violation of the ADR
agreement -- even if she is right.

b) It's hard to see what tort exists here.  There are a few speculative
claims one might try, but as I've explained in detail elsewhere, they are
all basically doomed.

3c If Alice has no TM she probably has no statutory claims.  If Alice has
a TM she shouldn't have been in the ADR at all, since it excludes TM vs.
TM.

[Aside: a perverse aspect of WIPO RFC 3 was that it did include TM v. TM
cases; and if Alice lost she still had no remedy in a US court because
the essence of her case would have been that her Tm did not infringe Bob's
Tm.  If she was wrong she deserved to lose the ADR and the court case; if
she was right then the fact that she lost the ADR and Bob got the DN meant
that her Lanham Act claim was now baseless -- she can only win in court
by suing Bob on the theory that there *is* infringement!  This is why the
WIPO ADR really doesn't scale outside of cybersquatting!]

On Mon, 28 Jun 1999, Randy Bush wrote:

> > A dispute policy can easily grant rights greater than what the law
> > requires, although not of course greater than what the law allows.
> 
> could you give us one or two simple but interesting examples which might
> delineate some of the decisions we seem to face?
> 
> randy
> 

-- 
A. Michael Froomkin   |    Professor of Law    |   froomkin@law.tm
U. Miami School of Law, P.O. Box 248087, Coral Gables, FL 33124 USA
+1 (305) 284-4285  |  +1 (305) 284-6506 (fax)  |  http://www.law.tm
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