browse comments: Comments in response to WIPO RFC-3

Comments in response to WIPO RFC-3
hlatimer@wrf.com
Tue, 23 Feb 1999 11:46:12 -0500

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1. Resort to Litigation in National Courts Should be Discouraged

In paragraph 115 of WIPO's Interim Report, it is recommended that any
dispute-resolution system that may be adopted for domain name disputes
should not deny the parties to the dispute access to court litigation.
Paragraph 165(iii) of the Report makes this even clearer by recommending
that either party to a dispute should have the ability to go to the
national courts to initiate litigation even after completion of the
administrative procedure. In other words, even after selecting the
administrative procedure, a complaining party may initiate litigation in a
national court after completion of the administrative procedure, and,
conversely, the domain name applicant, although initially required to
submit to the administrative procedure (paragraph 141), is free to go to a
national court if dissatisfied with the results of the administrative
procedure.

On its face, this open-ended approach to sanctioning litigation in
national courts is counterproductive. It would appear to concede that the
nearly universally desired dispute-resolution procedure for resolving
domain name disputes (on a less expensive, more consistent and more
expeditious basis) would become a mere preliminary proceeding in most, if
not all, significant cases. While the Interim Report does express the
"hope" that, over time, parties will resort less and less to litigation as
the administrative decision-making process builds up credibility (paragraph
140), it is recommended that the Final Report contain a much stronger
statement to the effect that, with time and experience, there is every
expectation that the dispute resolution procedure will become the final
arbiter of most domain name disputes. The National Advertising Division
(NAD) of the Council of Better Business Bureaus in New York provides a
relevant model. Even though totally voluntary, the NAD has become a
leading (if not the prime) arbiter of false advertising disputes in the
United States. The parties consistently abide by the NAD's "voluntary"
rulings and resort to court litigation after an NAD determination is almost
non-existent. This has occurred because (1) the advertising industry has
supported it and (2) the NAD publishes well reasoned and detailed opinions
supporting its rulings. Finally, the NAD process provides for an appeal to
a Review Board, a panel of which is selected by the Chair to serve as the
review panel. This appeal procedure also has provided credibility to the
NAD and a centralized appeal process, as proposed in paragraph 188 of the
Interim Report, would be equally beneficial.

2. Confusion Concerning Famous Marks

In Chapter 4 of the Report, a mechanism for the exclusive use of
famous and well known marks by the owners thereof is properly recommended.
With respect to the non-exhaustive criteria set forth in paragraph 227
which are to be considered in determining whether a mark is well known, it
is recommended that even more weight, and indeed, an evidentiary
presumption, be given to a finding by a national court that a mark is
"famous." Conversely, the holder of a mark which has been found not to be
famous by a national court should have a much heavier burden in
establishing the right to any exclusion with respect to domain names. In
the United States, court decisions interpreting the Federal Trademark
Dilution Act of 1995 have stressed the rigorous standards for finding a
mark famous, limiting the category of such famous marks to so-called
"Supermarks." I.P. Lund v. Kohler Co., 163 F.3d 27, 46 (1st Cir. 1998).
With these high standards for fame, at least in the United States, it would
appear to be appropriate to give presumptive weight to such a finding by a
court.

The Interim Report properly recommends that a mechanism for exclusion
of famous marks should extend beyond the use of a challenged domain name on
similar goods or services to use on other goods and services. However, the
Report (paragraph 235) would limit such an extension to instances in which
the use of the domain name on other goods or services "would indicate a
connection between those goods or services and the owner of the famous mark
. . . ." U.S. law does not require that the use of a similar mark be such
as to indicate any such "connection" between the respective goods or
services of the parties. It is recommended that the use of a similar mark
in connection with any other goods and services, without more, is
sufficient to invoke an exclusion.

The Interim Report also correctly recommends the introduction of an
evidentiary presumption in favor of the holder of an exclusion for a famous
or well known mark in an administrative proceeding brought against the
holders of domain names that were "allegedly identical or confusingly
similar" (paragraph 237). The Report goes on to specify that the holder
of such a famous mark would be required to show "(i) that a domain name was
identical to, confusingly similar with, or dilutes the mark that is the
subject of the exclusion; and (ii) that the domain name was being used in a
way that was likely to damage the interests of the owner of the mark that
was the subject of the exclusion." In the context of U.S. law, this
passage confuses trademark infringement and trademark dilution in several
ways. First, trademark dilution, unlike trademark infringement, provides
protection in the absence of consumer confusion. Second, recent U.S. court
decisions interpreting the Federal Trademark Dilution Act have held that
the mere use of a famous mark, without more, constitutes unlawful dilution.
See I.P. Lund v. Kohler Co., 163 F.3d at 50 (the pertinent inquiry for
establishing dilution is "whether target customers will perceive the
products [i.e., the marks] as essentially the same."); Jet, Inc. v. Sewage
Aeration Systems, 1999 WL 2469 *5 (6th Cir. 1999) ("The purpose of
anti-dilution laws is to provide a narrow remedy when the similarity
between two marks is great enough that even a noncompeting, nonconfusing
use is harmful to the senior user."). Thus, the showing recommended by the
Report in part (i), above, should not refer to "confusingly similar" but
only to a mark that is "essentially the same." Further, the reference in
part (i) to a domain name that "dilutes the mark" is unnecessary and
uninformative since dilution is not defined. Once a showing is made that
the challenged domain name is "essentially the same," dilution has been
established and the trademark holder should be entitled to the presumption.
Similarly, part (ii) of the showing recommended by the Report is
unnecessary since any use of a mark which is "essentially the same,"
without more, would be "likely to damage" the interests of the trademark
holder.

Accordingly, it is recommended that the showing required for an
evidentiary presumption be limited to one in which the holder of the famous
mark establishes that the challenged domain name is identical to or
essentially the same as the famous mark. A similar simplified test is set
forth in paragraph 283 of the Interim Report for extending exclusions for
famous and well known marks to non-commercial domains. It should be
equally applicable here.

Hugh Latimer
Wiley, Rein & Fielding
Washington, DC