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RE: [nc-udrp] UDRP Review Questionnaire
I used that as an example and probably should have used walmartabc.com (to
avoid the sucks free speech issue), but the real question I was asking is
whether Section 4(a)(i) should only look at the physical appearance of the
marks or whether it also should include a likelihood of confusion analysis
like the one we use here in the U.S. I have spoken with several panelists
which take different views on this.
-----Original Message-----
From: Michael Froomkin - U.Miami School of Law
[mailto:froomkin@law.miami.edu]
Sent: Tuesday, October 30, 2001 10:33 PM
To: Chicoine, Caroline G.
Cc: nc-udrp@dnso.org
Subject: RE: [nc-udrp] UDRP Review Questionnaire
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>>
>
>
>
--
Please visit http://www.icannwatch.org
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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