>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". No, we're talking law, not Boolean algebra. WIPO meant a subset of unique marks referred to as well-known and famous marks. It provided a seven factor test for defining famous and well known marks. > >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. No, they contemplate well known marks on 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". WIPO provides a rationale for its proposal. Maybe an exclusion is a bad thing, but not because the test is for fame, as opposed to "coined and unique" which is the point I have saying all day. It is hard to discern a rationale for "coined and unique" other than a perceived tit-for-tat "I perceive your view as groundless in law so I believe the appropriate response should be groundless in law as well." > >>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. If the anti-dilution act meant unique, it would have said unique. instead it said famous.
