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Re: 3 WIPO flaws [WAS Re: [discuss] Notes - Names Council Meeting, San Jose - 062599]

Michael and all,

Michael Froomkin - U.Miami School of Law wrote:

> [I've taken the liberty of adjusting the subject line...]
> Randy Bush asks for some examples.
> Here are 3:
> 1) The WIPO draft in chapter 4 proposes an extensive set of procedures and
> advantages for a new class of globally famous names.   As no one has been
> able to agree to date what these names might be the definition of this
> class is not required by current law.  Furthermore, the advantages that
> WIPO  proposes to offer these marks are not required by current law.   Nor
> are they prohibited by it.

  Indeed the WIPO Report does offer this.  After rereading it closely I find
several problems with this recommendation.  But in general there is one single
overriding concern that I have.  This proposed new class  would likely not be
defined in any realistic time frame, and even if it were there could be several

problems in it's implementation as how it might retroactively effect existing
registration classes and transfer to this new class.

> 2) The WIPO report suggests that a DN holder should have 10 days from the
> date that an email notice is sent (not received) to draft and file his/her
> complete defense to a claim of cybersquatting.

  This is terribly inadequate, as has been pointed out before.  This is
known as a time restraint legal trap.

> This is a powerful
> advantage for the complainant, who has no duty to attempt to warn the DN
> holder of the impending action.   Furthermore if the DN holder is on
> vacation and doesn't read email for 10 days...I guess that  is it.


> I would argue that this procedure is so unfair as to be unconscionable.
> But I could be wrong about that.   Let's assume it is legal:  it gives the
> complainant a tactic which is much more favorable than the law requires.

  And therefor extralegal.  As such it is difficult that under appeal it
would hold up on legal technical grounds.

> 3) The WIPO report alleges that if a party is unhappy with the outcome of
> an ADR, thy can always take the matter to court.   While it is trivially
> true that an ADR can be structured to create no decision that is binding in
> court, it turns out that WIPO's account of the post-ADR procedure is
> missing some key elements.  In order to bring a complaint in a US court,
> you must be able to allege either:
> -breach of contract
> -tort
> -violation of a regulatory or statutory duty.
> It seems to me that none of these will exist after Alice loses an ADR
> initiated by Bob:

  Exactly!  And This also have been pointed out by myself and several others
as well.

> a) There is no contractual claim.  For starters, there is no contract
> between Alice & bob; Alice might sue the registrar registry or
> arbitrators, but under WIPO she's had to waive the right to sue any of
> these parties already, so that's out.  In any case, the contract provides
> for an arbitration.   Absent fraud, that's what Alice got.  the fact she
> thinks a court would find differently is not a violation of the ADR
> agreement -- even if she is right.

  Again right, an this is a catch22 type situation for Alice.

> b) It's hard to see what tort exists here.  There are a few speculative
> claims one might try, but as I've explained in detail elsewhere, they are
> all basically doomed.
> 3c If Alice has no TM she probably has no statutory claims.  If Alice has
> a TM she shouldn't have been in the ADR at all, since it excludes TM vs.
> TM.

  However this does not exclude the likely situation of ALice only having FILED

for a TM but not yet been approved.

> [Aside: a perverse aspect of WIPO RFC 3 was that it did include TM v. TM
> cases; and if Alice lost she still had no remedy in a US court because
> the essence of her case would have been that her Tm did not infringe Bob's
> Tm.  If she was wrong she deserved to lose the ADR and the court case; if
> she was right then the fact that she lost the ADR and Bob got the DN meant
> that her Lanham Act claim was now baseless -- she can only win in court
> by suing Bob on the theory that there *is* infringement!  This is why the
> WIPO ADR really doesn't scale outside of cybersquatting!]
> On Mon, 28 Jun 1999, Randy Bush wrote:
> > > A dispute policy can easily grant rights greater than what the law
> > > requires, although not of course greater than what the law allows.
> >
> > could you give us one or two simple but interesting examples which might
> > delineate some of the decisions we seem to face?
> >
> > randy
> >
> --
> A. Michael Froomkin   |    Professor of Law    |   froomkin@law.tm
> U. Miami School of Law, P.O. Box 248087, Coral Gables, FL 33124 USA
> +1 (305) 284-4285  |  +1 (305) 284-6506 (fax)  |  http://www.law.tm
>                     -->   It's hot here.   <--


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