RE: [nc-udrp] UDRP Review Questionnaire

["Chicoine, Caroline G." <CCHICOINE@thompsoncoburn.com>]

I like the amended language and plan to include it in the final draft, but
what I am also trying to get at is whether Section 4(a)(i) is being
misapplied.  For example, in the walmartsucks.com case, if you just look at
this domain name in and of itself and compare it the trademark walmart, you
could say it is confusingly similar.  However, if you look beyond the domain
name and look at the "confusingly similar" factors you might come to a
different result.  Panelists appear to be interpreting this section both
ways and I would like to solicit comments on what people feel is the right
or better interpretation.
 
 -----Original Message-----
From: J. Scott Evans [mailto:jse@adamspat.com]
Sent: Tuesday, October 30, 2001 7:22 AM
To: Chicoine, Caroline G.; nc-udrp@dnso.org
Subject: Re: [nc-udrp] UDRP Review Questionnaire
Importance: High



Caroline:
 
With regard to the question below, I wonder whether it might be simpler to
revise the question into two questions such as the two questions set out in
red below.   My reasoning is two-fold.  First, the current question is long
and laborious.  Second, the question is very U.S. centric.
 

1.      (new) Section 4(a)(I) of the UDRP requires a Complainant to show
that the domain name is identical or confusingly similar to a trademark or
service mark in which the complainant has rights.  In determining whether a
domain name is confusingly similar to Complainant's trademark/service mark,
should a panelist look beyond their physical representations and consider
other factors, such as for example the similarity or dissimilarity between
the respective goods/services, the similarity or dissimilarity of
established, likely-to-continue trade channels, the conditions under which
and buyers to whom sales are made, i.e., "impulse" vs. careful,
sophisticated purchasing, the fame of Complainant's mark (sales,
advertising, length of use), the number and nature of similar marks in use
on similar goods, the nature and extent of any actual confusion; the length
of time during and conditions under which there has been concurrent use of
the domain name and Complainant's trademark/service mark without evidence of
actual confusion, the variety of goods on which the Complainant's mark is or
is not used (house mark, "family" mark, product mark), and the market
interface between Complainant and the domain name owner?  Why or why not?

 

    Section 4(a)(I) of the UDRP requires a Complainant to show that the
domain name is identical or confusingly similar to a trademark or service
mark in which the complainant has rights.  Should the UDRP be amended to
include a list of factors to assist panelists in determining when a
"confusing similarity" exists?  Why or why not?

 

    If you answered yes to Question No. *, what factors should be included
in any such list?

 

As always, thanks for your hard work in this area.

 

J. Scott Evans

----- Original Message ----- 
From: Chicoine, Caroline G. <mailto:CCHICOINE@thompsoncoburn.com>  
To: 'nc-udrp@dnso.org' <mailto:'nc-udrp@dnso.org'>  
Sent: Monday, October 29, 2001 6:22 PM
Subject: [nc-udrp] UDRP Review Questionnaire


> Sorry for the delay, but here is the most current version of the
> questionnaire.  I have taken the liberty to move some questions around but
> for the time being have kept the numbering the same so people could
> compare it against their earlier notes and versions.  (In other words, the
> numbering currently makes no sense, but just disregard) I have put in
> comments to notify you all when I changed any language or added new
> questions.  
> 
> I also believe that we need to have an introductory paragraph to the
> questionnaire a draft of which is provided below.
> 
"Pursuant to the UDRP Review and Evaluation Terms of Reference, version 2
(which can be found at
http://www.dnso.org/dnso/notes/2001.NC-tor-UDRP-Review-Evaluation.html
<http://www.dnso.org/dnso/notes/2001.NC-tor-UDRP-Review-Evaluation.html> )
the
UDRP Review and Evaluation Task Force hereby submits a questionnaire to
solicit public comment through a bottom up, consensus-building DSNO process
regarding various aspects of the existing UDRP.  The Task Force has drafted
this questionnaire with an eye towards not only identifying potential areas
of reform, but also generating useful suggestions to the extent that
modifications to the UDRP are suggested.  Therefore, to the extent that your
responses are critical to the existing UDRP, we request that your responses
also include proposed solutions. Each individual should submit only one
response to this questionnaire.   There is absolutely no advantage in
submitting multiple responses since the Task Force will not be collecting
any statistics based on the responses it receives.  Rather, it is only
interested in the merits and the substance of the comments it receives.

This questionnaire is initially being submitted in English, but Spanish and
French versions will be issued shortly. 

We thank you for your time and consideration in completing this
questionnaire.

UDRP Review and Evaluation Task Force
November 1, 2001"

> Given my delay in getting this to you, please let me have your thoughts by
> 9 am central standard time on Thursday, November 1st. Except with respect
> to the new or revised stuff, this is not the time to be asking for a major
> overhaul of the questionnaire.  You all have had this month to do that.
> Assuming no major changes or objections are raised, I plan to incorporate
> any final comments and send the questionnaire to the DNSO Secretariat for
> posting to the ICANN website, the DNSO website, the GA and the
> Constituency websites later that day on Thursday, Nov. 1.  I will also
> send a copy to Erick and Dan for translation into Spanish and French,
> respectively.  If there is anyone else that could translate the
> questionnaire any other languages, it would be greatly appreciated.
> 
> Once the questionnaire is out, we still have work to do.  First and
> foremost, we need to be reviewing results as they come in. I will check
> with the Secretariat how we will receive copies of the response and get
> back to you on that. Second, we will need to also review third party
> studies, a list of which I will provide to you shortly.
> 
If anyone has any questions, please let me know.



>  <<UDRP Review Questionnaire.DOC>>