RE: [nc-udrp] UDRP Review Questionnaire

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

FWIW it was the unanimous opinion of the panel of experts in the WIPO
proceeding that of course the proposed rules would never cover a 'sucks'
case since there was no way this could be confused with the mark.

Indeed, I still find it amazing that anyone can say it's *confusingly*
similar.   Thus I fail to see the tension here.

On Tue, 30 Oct 2001, Chicoine, Caroline G. wrote:

> 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>> 
> 
> 
> 

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