Re: [wg-b] Re: Fw: Unfamous Names...

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

From: Mark Measday <measday@josmarian.ch>


> Tell me why you haven't got it wrong Harald.  A list of exclusions
> provides an insurance policy for registrars, who can't be sued for
> soemthing they haven't sold, no?

To the extent that they insert themselves into the process of picking and
choosing names for the registrants, even by exclusion, they increase their
potential liability to those whose names were not on the list.  To the
extent that they do not attempt to act as a filter for domain names, then
they have a better argument for simply doing what NSI used to do and to file
an interpleader motion in response to any suit.  That's a lot cheaper than
attempting to defend the use of list of questionable legal merit (i.e. no
legal merit).

It is a certainty that, despite the list, (a) some clever person will get a
homophonic or alternate spelling variant that will make it through and (b)
some famous mark will be left off of it, and will be registered for an
infringing use.  The failed attempt on the part of the registrars to prevent
either (a) or (b) makes them responsible for the outcome to a greater extent
than if they had been registering domain names by an automated, unfiltered
process.  We've seen this same situation occur with the differing outcomes
in cases involving Usenet newsgroup postings - only the non-engaged
administrators who did not attempt filtration emerged unsullied from those
battles.  Do we have to re-play that saga for those who were not around for
it?

And, now that you've referred to me as a "mysterious" "be-jeaned internet
rocketeer", I should assure you that I wear a suit every day in my
profession as an intellectual property attorney.  You can look me up in the
USPTO database of registered attorneys if it would help solve the mystery
for you.  My doctorate, however, is in electrical engineering, and I have
been involved with the internet in one way or another since about 1984.  It
is many of my uninformed legal colleagues who are the late-comers to that
party, though.

The scenarios for lawsuits are much richer in the presence of this mythical
list, rather than in its absence.  What are you going to say to the, as-yet
fictitious, rock band "Axe Rox" ("axe" is a slang term for a guitar), who
will be prevented from registering their stage name as a domain name because
it includes the substring "xerox" in it?  Or is your magical list going to
have some way of knowing the difference between a registrant using
axerox.foo to infringe the Xerox mark and a use which has nothing to do with
the Xerox mark?

We have seen the wisdom of the trademark "experts" in the Uniform Dispute
Resolution Policy in the "cancellation" outcome for which I have not been
able to identify the responsible "expert".  So far, the UDRP "cancelled"
domain names fibershield.net, planetrxx.com, and websterhall.com have all
been re-registered by a domain collector/speculator in Virginia who intends
to use them as a platform for demonstrating the stupidity of having legal
experts run a technical system, and who is considering transferring them
back to the original respondents in the respective UDRP proceedings.  So the
complainants spent all of that money and have gotten NOTHING out of this
"expertly" crafted UDRP.  We have also witnessed the emergence of pandering
among the UDRP arbitration providers for the title of most
complainant-friendly in their press releases which refer to "evict[ing]
cybersquatter[s]" (NAF) and "go[ing] after cybersquatters" (eResolution),
due to the built-in commercial incentive of the "complainant's choice"
structure of the UDRP.  My confidence in the ability of similarly uninformed
legal colleagues of mine, however brilliant they may otherwise be, to devise
a sensible "famous name" exclusion policy is not high.

If you want to provide an insurance policy for registrars, then you can
point them at any of the fine commercial insurance vendors who will be more
than happy to provide them with one.  If the commercial risk is perceived as
too great, then they will have to sit on their hands and let others make
their own risk/reward calculation for themselves.  This is the way that
business operates.  Ill-informed tinkering by providing an "objective" list
which is fundamentally based on several very subjective factors is not going
to help anyone, except perhaps those who crave another entry in their
curriculum vitae (or maybe just a T-shirt inscribed with "I helped screw up
both the internet and trademark law, and all I got was this lousy shirt").

John Berryhill, Ph.D. esq
Philadelphia, Pennsylvania