At 04:51 PM 5/7/99 , Martin B. Schwimmer wrote:
>>>The very fact that the terms are not precise makes clear why the WIPO
>>exclusion List criterion must be something other than those terms.
>>Otherwise, we will see a sad replay of the old NSI problems where two
>>like-named companies come into conflict that would not have existed but for
>>the policy mistake. Prince sporting goods will argue that its name
>>"prince" is famous and/or well-known, and thus that it is entitled to be on
>>The List. The result will be that all other companies named Price (and
>>there are dozens of others) suddenly cannot get domain names that are
>>"prince.foo".
>>
>>Can you answer this point, please? Isn't it true that allowing non-unique
>>marks onto The List will lead to conflicts?
>Is this a serious question?
>Yes, allowing a non-unique mark onto a list of unique marks is a bad thing,
>which is why WIPO gave seven criteria for what is unique mark. Famous and
>well-known is a description of the finding, not a description of the
>criteria.
The word "unique" is quite clear and unambiguous and it is only one word
long. If WIPO had meant that only unique marks were permitted on the List,
WIPO would surely have said so. Instead, having not said so, WIPO
evidently contemplates that there will be non-unique marks on the List.
And this is the very thing you admit would be "a bad thing".
But a careful rereading of Annex VI shows that the seven criteria are
criteria for being "well known", not for uniqueness. It is clear that WIPO
contemplates non-unique marks being admitted to the List.
>SO I maintain my position that "coined and unique" has no discernable
>advantage to the a multi-factor test derived from the existing body of law
>relating to famous and well-known marks (and we know from our personal
>experience that famous marks such as CADILLAC, CHANEL, MARLBORO and JOHNNIE
>WALKER (BLACK and RED LABEL) are famous and well-known marks, but are not
>coined.
What you keep missing is that WIPO is proposing to create a remedy (an
ability to block registration of a domain name *per se*, that is, in a way
that is unrelated to goods or services or conduct) that cannot be found in,
and goes far beyond, anything in "the existing body of law". If a remedy
is to be given that goes far beyond anything in the existing body of law,
it should not be at all suprising, and should in fact be expected, that the
criterion for such a remedy would likewise be a criterion not found in "the
existing body of law".
>Incidentally, when he filed his meta-tagging suit, Oppedahl alleged that
>the mark OPPEDAHL AND LARSEN was a famous mark. Coined?
So far as I am aware, the firm name "Oppedahl & Larson" is in fact unique,
and that was one of our criteria for selection of the firm name, years ago
when the firm was founded. In case it is of interest, we have a US
trademark registration for that name.
