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    Highlights of the ICANNWatch Archive
    (June 1999 - March 2001)

    Uniform Dispute Resolution Policy (UDRP) International Reputations a Requirement?
    posted by michael on Wednesday March 06 2002, @02:27AM

    mjrippon writes "I read with interest this morning the decision of the panel led by Sir Ian Barker QC in the case of the domain name Supremo.com.

    The complaint was rejected because the Complainant did not produce sufficient evidence to support its claim that the mark SUPREMO was one in which it had rights. In this case the Complainant, a substantial Belgian coffee dealer, has traded for years under the mark and was unquestionably widely known within its particular circles by that mark. It seems to me that this would be plenty to base what in the UK we know as a passing off action, and in the USA is referred to as common law rights.

    I thought it strange then that the complaint should be rejected because Supremo had not established that it had rights in the mark."

    The reasoning?
    "the evidence from the Complainant is hardly strong enough to establish a common law mark in the United States (where the Respondent is domiciled) and in other common law jurisdictions where such [an unregistered] mark is recognized."

    Since when was it necessary to establish a reputation in the Respondent's domicile for an unregistered mark. Ah, you might say, what about superfares.com, vz.com, KCTS.com, all cases where this reasoning was used to reject the claim. That's true, but those cases were all applying the test for bad faith, not the Complainant's rights in the mark.

    Now it might be that the actual evidence (to which we are not privy) to support the Complainant's contentions was inadequate or insufficient to support its contentions, but to me this decision reads as though some sort of global reputation is required, as opposed to an international reputation (if you accept that there is a difference). And in making that point, the panel is not apparently able to rely on any UDRP precendent (not that I think one should rely on UDRP precedents).

    Maybe I'm overreacting here, but are we not opening up some sort of justification for cybersquatters based in obscure jurisdictions who can say in future that the complaint fails on ground 1 because the mark is not known in their place of residence, thereby avoiding the need for a balanced consideration of the various elements that make up the third test re bad faith. Seems to me like a dangerous precedent to set...

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    Re: International Reputations a Requirement?
    by mjrippon on Thursday March 07 2002, @01:10AM (#5157)
    User #2960 Info

    No I haven't - this is exactly what it says.

    What worries me is the possibility for squatters to sidesstep the more difficult bad faith test by contesting that a complainant does not enjoy sufficiently global reputation. That's clearly what the decision implies.

    It's no good burying your head in the sand and saying this isn't a precedent. You're right - it isn't for court proceedings, but that won't stop people referring to this decision as approval for their dubious defences.

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