Re: [wg-b] Creation of Famous List

["John Berryhill Ph.D. J.D." <john@johnberryhill.com>]

From: Roeland M. J. Meyer <rmeyer@mhsc.com>
To: <KathrynKL@aol.com>; <wg-b@dnso.org>
>
> The issue is to not make new law. This would tend to support the prime
facie
> conclusion that our work is done and perforce, inconclusive. Here is a
> Registry strategy that will probably be used;
>
> 1) Allow any and all registrations.
> 2) When two entities collide in law, point them to the nearest court of
> comptetent jurisdiction.
> 3) Await results and follow court orders exactly, meanwhile ... business
as
> usual.

That is the first reasonable thing I've seen in this discussion.

Please forgive my ignorance, but can anyone who understands this "registrar
liability in the absence of a WIPO list" please explain to this obviously
dull-witted lawyer exactly how having a note from WIPO, as opposed to a note
from UNICEF, MENSA, or any other thoroughly non-relevant-to-the-Lanham-Act
organization, is supposed to have the magic power to ward off evil
litigators?

I'm a TM holder who is not on the WIPO list.  Somebody registers my TM in
some new TLD through you, the registrar.  I sue you.  You see how that
works?  What did the WIPO list do for you?

Or

I'm a TM holder who is on the WIPO list.  Somebody registers the equivalent
of my TM in the Urdu language through you, the registrar.  I really sue you
something fierce.  What did the WIPO list do for you?

Is there anyone who can provide a single example where some WIPO list would
have any significance or relevance to an action in a U.S. court under the
Lanham Act?

I realize that WIPO is now recognized as some kind of authority in trademark
law, now that the WIPO policy  has transferred the "fibershield.net" domain
name from a Canadian company having the legal name Fiber Shield Ltd. to a
domain name collector/speculator having the legal name "Russell" in
Virginia... but is that the kind of trademark expertise anyone wants to
protect them from liability?  You must be joking.

If any registrar believes that there is too great a liability risk inherent
in offering new TLDs, then that registrar has the option of sticking to .com
.net and .org, and simply not offering the new TLDs.  What's difficult about
that?  Every new business venture is fraught with litigation risk.  Taking
risks in business is commensurate with potential rewards.

If the registrars absolutely need some kind of protection, then it makes
infinitely much more sense to do something that would actually be relevant
to a lawsuit, rather than getting a note from WIPO, or even from mommy...
Do the same thing that was done by and for the ISPs and webhosts in the
Digital Millenium Copyright Act, and provide an express statutory carve-out:

"It shall be a defense to all actions arising under this Title that the
complained-of act consisted solely of domain name registration services for
a domain name in an authoritative root server of the Internet."

Get Al Gore on the job.  He invented it, he can fix it.

Get the TM owners and the AIPLA to get this one through.  Good gosh,
everybody's having too wonderful a time on NASDAQ to worry about whether
there might be a bump in the e-commerce road.  It will be a faster and more
efficient process than tediously poring over a mountain of evidence required
in connection with every TM on the planet to determine which ones are famous
and which aren't - for the sole purpose of coming up with a list that does
not accomplish the intended objective.

But, really, how is a registrar rendered immune from suit, or even
marginally protected from suit, by acting in accordance with a WIPO famous
trademark list?