The fact that Mr. Lovell did not have my original post (or more
importnatly, the series of posts I was responding to) may have led him to
beleive that we are less in agreement than we are:
In summary:
This thread began with a domain name owner complaining that leaving dispute
resolution to full civil litigation left her at a disadvantage to large
companies.
Other posters argued that the lack of precedent made mandatory dipsute
resolution for DN conflicts unpracticable
I pointed out that in the US, likelihood of confusion naalysis is fleshed
out. In response to Mueller I add that likelihood of confusion analysis is
fleshed out in every country that has opposition or cancellation
proceedings (pretty much every trademark jurisdiction). The law does not
vary so much from country to country that at the preliminary level, that
outcomes would drastically vary from jurisdiction to jurisdiction (the fact
that we are dealing exclusively with word vs. word dipsutes here removes a
lot of the nuances between jurisdictions).
As I've stated in previous posts, I would view expedited dispute resolution
as being the equivalent of a preliminary injunction proceeding, where the
complainant had a high threshold - that it was very likely to prevail. The
clear winners in one country tend to be the clear winners in other
countries. It's the cases in the middle where outcomes may vary - and I've
argued that an XDR tribunal would toss out the close cases (for a civil
court to decide if the complainant chose).
As for Mr. Lovell's comments on NSI, I have repeatedly stated that NSI's
dispute resolution proceeding works an injustice because it performs no
likelihood of confusion analysis. It does not have the expertise to take
advantage of the developed caselaw - we would not have had a juno.com
situation if it did. I believe that the NSI experience is not an argument
against alternated dispute resolution, it is an argument against
incorrectly executed administered dispute resolution - don't force
registries and registrars to be judges.
As for ICANN not having the experience to administer XDR, I would assume
that part of is mandate to deal with intellectual propeorty issues in the
DNS (see the White Paper and the Coop Agreement) would involve making
arrangements to hire that expertise - maybe it would be arrangements with
local trademark offices, I don't know - I do not automatically think it
should be WIPO. One of the ICANN Board members should be someone with
trademark dispute resolution expertise - soemone like a former head of a
trademark office.
I agree with Mr. Lovell that ultimately, if ICANN does not quickly gain the
confidence of the stakeholders, then the issue of the DNS will be
ultimately resolved by international treaty.
>At 09:45 PM 1/21/99 -0500, you wrote:
>>Case law in the USA, not in the entire world. As I recall, the law varies a
>bit
>>from country to country, no?
>>--MM
>>
>>Martin B. Schwimmer wrote:
>>
>>> I would argue that the case law for likelihood of confusion analysis is
>>> completely fleshed out. An entry level examiner at the US Patent and
>>> Trademark Office is competent to render a preliminary opinion when
>>> comparing two marks and their intended goods and services. Absence of
>>> precedent is certainly not an issue if the DN steps forward and indicates
>>> the area of intended use (as every tradmeark applicant in the world has
to
>>do).
>
>Responding to this post rather than directly to Mr. Schwimmer's post since I
>seem
>not to have it, this is what I have just argued in the 9th Circuit:
>
>"A more appropriate mode of operation for NSI (soon to be taken over by the
>Internet
>Corporation for Assigned Names and Numbers, "ICANN") would be to register
>domain
>names not otherwise taken and then leave the registration intact until a
court
>of
>competent jurisdiction tells it otherwise."
>
>While the theory suggested by Mr. Schwimmer looks good on its face, having
seen
>NSI deal with trademark issues I continue to hold with another view I have
also
>
>expressed, in less polite terms:
>
>"NSI and ICANN should stay entirely out of areas that are quite beyond their
>competence and leave that to those who are competent, i.e., to the United
>States Patent and Trademark Office and analogous bodies in other countries."
>
>As I also previously argued in a response to the NTIA paper (available on the
>web
>but I don't have the URL at the moment," the U. S. Code of Federal
Regulations
>has provisions within it for "arbitration" of trademark disputes very similar
>to what
>are called interference proceedings as to patents, wherein two parties have
>invented
>the same thing and the USPTO determines from the evidence who has priority.
>The field of use would be relevant in a trademark case and could be
competently
>
>addressed in the USPTO; ICANN will simply not have the expertise.
>
>As to the case law being "fleshed out," if that were true (e.g., as to NSI) I
>would
>not this very day be starting out on my third year in this one litigation --
>ISS v.
>Epix. Inc. And Dr. Mueller is quite correct in saying that the case law
varies
>from country to country -- what the USPTO resolves in the U.S. might have
>been decided differently in another country, especially those that employ a
>registration rather than a public use theory concerning how a trademark is
>acquired. The best approach anywhere thus leaves different solutions around
>the world, but as we all know, since the Internet encompasses the entire
>world, there can only be one solution, whatever legal theory may be adopted.
>The only way to get that "one solution" is through international treaty
adopted
>and adhered by COUNTRIES, not insular, pretentious little bureaucracies, in
>the manner of a GATT or NAFTA, a WPO or the like. It is then that the little
>bureaucracies set up the technical means and push around the paper.
>
>Bill Lovell
>.
>
>
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