Re: [ICANN-EU] trademark vs. domain / legal aspect

["Andreas Fügner" <Andreas.Fuegner@lizenz.com>]

Dear Marc:

>Address conflicts? Barcelona.com and address conflict? ICANN cannot break
>laws, no. WIPO can and does, by introducing elements into UDRP which are
>not there, like "moore legitamate owner".



I said earlier, unfortunately not every arbitrator/mediator or cout always
applies the law. Therefore, the legal system has courts of appeal.



>ICANN does create laws, in the practical sense of the word anyway.
>What else is the UDRP?


UDRP is not a law. It is a system of mediation and arbitration.
Which means it is a volontary attempt of disputing parties
to find a solution before going to court. The two
magic words here are volontary and before going to court.



>Yes, let this be so (though I would not accept Die Zeit claiming all
>domains with Zeit in it, let alone, time, tijd, temps etc.),


They cannot. There are various types of trademarks.
There are word trademarks, picture trademarks and combinations.
A lot of words (like times, Zeit, etc) one cannot register as a
word trademark.


>what does this mean for Barcelona.com? Or Corinthians.com?
>Is the city of Barcelona into publishing? Is a Brazilian soccer/football
team
>into publishing?


The question is, whether the trademark is registered for publishing. And
I am pretty sure, that the city of Barcelona is publishing more than one
paper,
for instance for tourists, to attract new investores, etc. The soccer club
most
certainly has a fanclub magazin and other publications.



>No, but they are into money making. So they want the .com. UDRP gives them
>a cheap way to get it. So they try. And WIPO is very helpful.



UDRP gives both parties a cheap way to ask a so called expert.
If one does not like the ruling, one can still go to court.
And, Marc, trying is not illegal.



>Have you ever wondered, why the city of Barcelona or the Brazilian
>Corinthians did not go after the .org names? They would seem to be much
>more appropriate for them, if they must have a gTLD. They already have a
>ccTLD of course...

I don't know their reasons. As you mentioned above, both are
organizations and money making businesses.

In the Barcelona case I found a flaw. The former owner of
Barcelona.com registered it as a trademark years ago.
According to trademark law, the city of Barcelona and others
at that time had a three months period to object to the registration
of Barcelona.com as a trademark. Obviously they did not. On those
grounds, the city of Barcelona should loose any case.

Andreas Fuegner