Re: [ga] Weikers position on UDRP

[Marc Schneiders <marc@venster.nl>]

On Fri, 1 Sep 2000, 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.

And I was gradually starting to develop a dislike of lawyers. Seems there
are good ones :-)

There are some questions though, the detailed response (for which many
thanks) raises for me.

1. What is this "preponderance of evidence"? Not everyone is in the USA,
and speaks English from day one... 

2. Would your proposals mean that the complainant has to proove that there
was no website up at a certain date? Now it seems to be the reverse. I
would presume it is rather difficult to proove by either party, unless
there was a well-known site about which visitors can testify.

3. Would you not agree that there must be added somewhere (in the light of
WIPO decisions) that the registration of a domain with the primary purpose
of selling it to an interested party, does *not* *in itself* constitute
bad faith?
 
4. Pending TMs have no weight (your 7th). Would it not be better to extend
this a little to any TM filed for after the (first) registration of the
domain? This to avoid any reverse-hijackings by TMing.

5. I have no problem that domain owners have to pay costs who acted in bad
faith without any doubt whatsoever. However, in the face of the developing
lawfinding process now on its way, owners might out of uncertainty of the
outcome (there is absolutely no certitudo juris whatsoever thanks to WIPO)
be forced to give in out of fear that they may loose and have to pay the
legal costs, which they may very well not able to do. I think I would just
have to do that: give in. I do not want to go bankrupt. (I would at the
same time make a lot of noise to be sure. There is no law against that,
is there?)

6. There are over 200 countries in this world, each with their own TM
system. This provides some difficulty to anyone registering a name. One
cannot be expected to check it all over the world. In some (many?) places
it is quite expensive too to check if a name is trademarked.
So when I register bodacious-tatas.net (still free), should I check
whether someone in Bangladesh sells shoes under the mark Boda or Tata? And
if I do not, should I loose the domain name?
 
Thank you for your time!

--
Marc Schneiders ------- Venster - http://www.venster.nl 
 marc@venster.nl - marc@bijt.net - marc@schneiders.org

> 	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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