[ga] Re: Weikers position on UDRP

[James Love <love@cptech.org>]

Thanks to Ronald Weikers for this detailed and informative response.  

  Jamie

"Ronald N. Weikers" wrote:
> 
> James Love asked:
> 
> >do these candidates believe ... that the UDRP has gone too far in
> >protecting trademark owners ...?
> 
>         Ron responded:
> 
>         Yes.
> 
>         Changes should be made to the UDRP to require a balancing of interests,
> which is found in trademark law.  The following changes will resolve most
> consumers groups' very valid concerns, and still uphold trademark law.
> 
>         First, we should give panelists the discretion to award the prevailing
> party their attorney's fees and costs from the non-prevailing party (like
> the U.S.'s Anticybersquatting Consumer Protection Act), in order to deter
> reverse domain name hijacking.  In particular, panelists may (but are not
> required to) award costs when a complainant is found to have abused the
> administrative process, or when a respondent is found to have acted in bad
> faith and to have no legitimate interests.  Read further to see why only a
> true, hard-core cybersquatter-respondent might be subjected to this.
> 
>         Second, in the case of inherently distinctive marks -- i.e., suggestive
> marks (involving a creative association between the mark and the
> good/service, such as "Apple-A-Day" for vitamins), arbitrary marks (common
> words used for uncommon purposes, such as "Apple" for computers) and
> fanciful marks (coined words, such as "Xerox") --, the UDRP should put the
> burden of proof by "a preponderance of evidence" of the respondent's bad
> faith (UDRP section 4.b.) upon the complainant, and should not put the sole
> burden of proof upon the respondent to prove its own good faith, which has
> often been the case in UDRP decisions.  In addition, in the case of
> inherently distinctive marks, the UDRP should put the burden of proof by a
> preponderance of evidence of the respondent's lack of legitimate interests
> (UDRP section 4.c.) upon the complainant, and should not require solely the
> respondent to prove a presence of legitimate interests, again, which has
> often been the case in UDRP decisions.
> 
>         Third, in the case of descriptive marks -- i.e., weak marks that require
> secondary meaning (i.e., distinctiveness in commerce, measured by the
> extent to which it has become identified in the public mind with the
> particular source of the goods/services) for protection, such as
> "Tom-Apple" for tomato-apple juice -- the same changes should be made to
> UDRP sections 4.b. and 4.c., except that the complainant should bear the
> additional burden of proving by a preponderance of evidence that the mark
> has acquired secondary meaning by some commonly used factors, such as the
> length and exclusivity of the complainant's mark's use, sales volume of the
> good/service using the mark, promotional efforts that focus on linking the
> mark and the source of the good/service, etc.
> 
>         Fourth, in the case of generic marks -- i.e., common words used for common
> goods/services, such as "Apple" for apples --, and in the case of
> geographic regions, the first to register the domain name should have the
> right of ownership.
> 
>         Fifth, in the case of personal names, complainants must be required to
> show by "clear and convincing evidence" that their name is famous
> worldwide.  Otherwise, personal names should be on a first-come,
> first-served basis.
> 
>         Sixth, we should build into the UDRP an appeals process, in the event that
> the non-prevailing party cannot afford/does not want to pay for litigation
> (UDRP decisions are not binding on courts of law).  The parties would also
> have the right to make the appellate decision binding (both must agree,
> however), in order to make the process cost-effective.
> 
>         Seventh, in the balancing of interests process, common law (unregistered)
> marks owned by complainants should be given whatever weight they may have
> acquired by secondary meaning.  The fact that a trademark application is
> pending should, by itself, be given no weight.
> 
>         Eighth, and finally, we should have no lists of protected names or marks,
> as proposed by WIPO, because the organization that assumes the
> responsibility for maintaining such directories would be required to make a
> preliminary determination whether the foregoing burdens of proof can be met
> (like preliminary mini UDRP decisions).  Assuming that myriad
> entities/people would seek to register their marks and names, such a task
> would be logistically impossible.  Instead, case-by-case UDRP proceedings
> should be relied upon to resolve such disputes.  It will be cheaper in the
> long run, and more effective.
> ====================================
> Ronald N. Weikers
> Weikers & Co., A High Technology Law Firm
> 226 West Highland Avenue
> Philadelphia, Pennsylvania  19118
> Telephone:     215.242.5333
> Facsimile:       215.248.4647
> http://software-law.com

-- 
James Love  mailto:love@cptech.org http://www.cptech.org
Consumer Project on Technology, P.O. Box 19367, Washington, DC 20036
voice 1.202.387.8030  fax  1.202.234.5176
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