Re: [ICANN-EU] Re: WIPO

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

Dear Wolfgang:

 

We earlier discussed reasonable solutions to domain conflicts

like links to the other site, disclaimers "This is not the site of

the registered TM ..., using sub domains, shared domain usage,

etc.

 

The DNS conflict space is a conflict between two different legal areas: Trademark Law and Human Rights. Both sides have good arguments which have to be respected. It makes no sense to play one worldwide acknowledged legal system against another worldwide acknowledged legal system. The two legal branches are partly compatible and partly conflicting by nature. The only way to settle disputes is to balance the different values behind the two conflictiung legal systems on a case by case basis.

"Case by case" does not help here. It lacks security

for regustrars as well as TM holders.

Thatswhy UDRP concentrates on "bad faith". It is always the "intention" behind the use of a name which will decide concrete cases (although I recognize that there are a lot of stupid and one-sided looking courts who do NOT balance TM vs. HR).

 

That is based on the assumption, that everybody is open about their intentions

or that a court successfully finds out what everybodies intentions were, are

and will be. I doubt that this concept works.

The "classical case" I use in my lectures is the "kroening.de" case. A man named "Bernhard Kroenung" had registered his personal name for a peronal website but was challenged by the German coffeemaker Jacobs who has a famous anbd protected Coffeesort "Jacob`s Kroenung". The coffeemaker argued that Bernhard Kroenungs use of "kroenung.de" would lead to consumer confusion and block Jacobs to use its prtoctd brand name for own businesses. The court rejected this argument because Bernhard Kroenung used his website for personal reasons only. Bernhard is very careful to avoid any linkage to "coffee" and he evends avoids to refer to "milk" oder "sugar". The decision would have been different if Bernhard would have opend an eCoffeeshop" or somethin like that.  

 

To make sure, I just looked up the registration file of the coffemaker.

Kroenung is only registerd for coffee, coffee extract and coffee surrogates.

There is no registration for publishing or any service.

So unless Mr Kroenung sells any of the protected products he is safe.

 

If Kroenung was known by at least 33% of the world population

- I don't believe so - or at least 33% of the German speaking population

- including the German speaking people abroad I doubt it -

there would be a legal base to protect Kroenung against what is called

watering down or exploitation. But than the company would have to

prove such brand awareness.

 

BTW, where do you lecture and what subject?

I think it would make sense to work on a definition for "good faith" from the Human Rights perspective to give courts (or UDRP service providers) a "guideline" when they have to reject complains by trademark owners  as they have today, as a result of UDRP, a vague guideline what is "bad faith" from the Trade Mark perspective. 

There is little need for new TM laws. Courts only have apply existing ones properly.

 

Good or bad faith is based on cultural values.

IMHO, it is impossible to define those values equally worldwide.

The world is still struggling to agree about human rights. Trying to

get them to agree upon a unanimous definition of good and bad

sounds unreasonable to me.

 

Best regards,

 

Andreas Fuegner