At 10:33 AM 5/7/99 , Martin B. Schwimmer wrote:
>You hadn't made it clear that you were asking ICANN to adopt your own
>personal proposal for criteria, rather than follow the world's famous mark
>practice.
There is no "world's famous mark practice". The US has a vague list of
eight non-binding factors which is a judge is free to use or ignore as the
judge sees fit in deciding whether to consider a mark "famous". After
that, the judge figures out whether the accused diluter is actually
diluting and then may grant the cease-and-desist relief set forth in the US
FTDA.
In a few other countries of the world are similarly vague laws that have
only the slipperiest definition of "famous", and a mark owner who manages
to qualify as "famous" might get any of a varieties of remedy depending on
the country.
But most of the countries of the world have only infringement-based
remedies, not dilution-based or famousness-based remedies.
And the usual remedy for infringement or dilution, worldwide, is at most
cease-and-desist relief, not a transfer-of-property relief.
The WIPO report recommends yet another intellectual property right, that of
placement on the exclusionary List. There are two ways to get on the List,
one is to be "famous" and the other is to be "well-known". In either case
one is placed on the List, and the results are that (1) no other like-named
company or trademark can ever be placed on the List (think about it), (2)
the lucky company whose mark gets on the List gets to block anybody else,
even a like-named company or a company with a like-named product or
service, from obtaining a matching domain name, and (3) the lucky company
gets to use the challenge procedure to harass the similarly-named company
or a company with a similarly-named product or service with extremely
strong evidentiary and substantive presumptions in favor of the lucky company.
And WIPO report recommends that the available relief include
transfer-of-property relief, which goes far beyond any country's
substantive law (nearly all of which are limited to cease-and-desist
relief). This despite the fact that there might well be other like-named
companies or companies with like-named products, that are no less deserving
to own the sought-after domain name.
What I am suggesting is that such a plum should be given only to the
company that can establish that its mark is coined and unique. And that
as a general matter the remedies available to WIPO's tribunals ought to be
limited to cease-and-desist relief, with transfer-the-property relief
limited to cases in which it is demonstrated that the mark is unique.
>OK, let's not adopt Mr. Oppedahl's personal criteria of "coined and
>unique", as it is a marked departure from the existing case law, and would
>not grant protection to JOHNNIE WALKER, CADILLAC, NIKE, MARLBORO, CARTIER,
>CHANEL, DISNEY or many other of the world's famous marks.
>
>I am cross-posting this to the WIPO list, as this is a proper discussion
>for that list.
>
>At 09:31 AM 5/7/99 -0600, you wrote:
>>At 09:03 AM 5/7/99 , Martin B. Schwimmer wrote:
>>>
>>>Without commenting on the proposed 'exclusionary" practice itself, I note
>>>that Mr. Oppedahl impliedly misstates the standard for being a famous mark.
>>> It is not "coined and unique." Non-coined marks which are famous include
>>>JOHNNIE WALKER, CADILLAC and NIKE.
>>
>>>Demonstrably unique (or more to the point, demonstrably famous) is a
>>>different concept from "coined and unique" and should not be confused.
>>
>>No, I have misstated nothing. It seems you are conflating several quite
>>distinct questions. One question is:
>>
>>A. What standard does WIPO propose as the criterion for the honor of being
>>added to the exclusion List?
>>
>>B. What additional requirement does Carl Oppedahl propose limiting
>>eligibility for addition to the exclusion List?
>>
>>C. What are the dictionary meanings of "famous" and "well-known"?
>>
>>D. What is the definition of "famous" under the US Federal Trademark
>>Dilution Act?
>>
>>Mr. Schwimmer seems to be proposing discussions as to C, or D, or perhaps
>>A. I was doing nothing more than expressing my view as to B. They are not
>>the same questions at all.
