[ga] Weikers position on UDRP

["Ronald N. Weikers" <rnw@software-law.com>]

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
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