re-foward : [council] Overview of Comments to WG-B Formal Report

[kstubbs@digitel.net (Digitel - Ken Stubbs)]

----- Original Message -----
From: <KathrynKL@aol.com>
To: <council@dnso.org>
Sent: Thursday, May 18, 2000 2:56 AM
Subject: [council] Overview of Comments to WG-B Formal Report


> FOR DISTRIBUTION ONLY WITHIN THE NAMES COUNCIL ***
> PLEASE DO NOT REDISTRIBUTE ***
> To: Names Council
> From:   Kathryn Kleiman, Liaison to WG-B
> Re: Overview of Comments to WG-B
> Date:   May 17, 2000
>
> I have read the 80+ comments submitted in this proceeding, and have
prepared
> the following overview to assist the Names Council in its evaluation.
> Nothing in this report is, of course, designed to preempt the reading of
> comments by NC members.  However, in agencies dealing with public comment,
at
> least in the US, it is not the practice for every member of the
> decision-making body to read every single comment.  Everyone is much too
> busy.  Rather, it is the practice for an individual to provide clear
> summaries for all to use.  Traditionally, this individual is very familiar
> with the report placed on public notice and the issues it raises.
>
> I believe that it would help the NC effort if, after each Working Group
> report and its comment period, the NC chair or liaison to the WG,
summarized
> the comments received.  The NC liaison/co-chair certainly has the detailed
> knowledge of the background and issues, and I hope we can add this duty to
> his/her WG role.
>
> I consider this a working document of the Names Council and respectfully
ask
> that you NOT redistribute or repost this report.
>
> Goal of this Report:
> The goal of this report is to provide a brief overview of the main issues
> raised in the Palage Report, how those issues were responded to (in
overview
> form) by the commenters, and what additional issues were raised by
commenters
> that seem to add to the debate.  I also point out some comments that seem
to
> well represent the views of the different "sides."
>
> If your time is limited, some good comments to read:
> If you only have time to read a selection of comments, I would read the
> attachment to Palage's Formal Report (link found at the bottom of his
report
> or at http://www.dnso.org/dnso/notes/20000417.NCwgb-attachments.html). The
> attachments start with the Intellectual Property "Sunrise Plus Twenty"
> proposal plus responses and concerns raised by the US Small Business
> Administration; Richard Sexton, John Berryhill and additional signatories;
> concerns of Ellen Rony, author of the Domain Name Handbook, Nader's
Consumer
> Project on Technology, Professor Michael Froomkin (separate comments);
and
> concerns of TUCOWS, Inc. (a registrar).  I also recommend the comments of
the
> International Trademark Association (INTA), those of Raul Echeberria (NCC
> Latin America), the American Intellectual Property Law Association, and
Mark
> Chen (at fas.harvard.edu) (found in the WG-B Formal Report comment
listing).
>
> Main issues raised in WG-B's Formal Report by Chair Michael Palage:
> 1) A mechanism is needed for the protection of famous trademark interest
in
> connection with the domain name system.
> 2) There does not appear to be the need for creation of a universally
famous
> marks list at this point in time.
> 3) There appears to be a consensus that protection afforded to trademark
> owners will depend upon the type of top level domain.
> 4) Should the Intellectual Property Constituency's proposal of a sunrise
> period of preregistrations plus 20 variations be adopted?
>
> An overview of comments on each point:
>
> 1) A mechanism is needed for the protection of famous trademark interest
in
> connection with the domain name system.
>
> This issue received some inquiry in the comments.  A few commenters
> questioned whether ICANN should be playing the role of trademark police.
> Professor Froomkin and others pointed out that the situation has changed
> radically in the last few months - with the UDRP and US Cybersquatting
bill
> providing significant new protections for famous marks and are sufficient
in
> and of themselves.
>
> 2) There does not appear to be the need for creation of a universally
famous
> marks list at this point in time.
>
> In a group well known for vocal opposition to points that it disagrees
with,
> comments were remarkably quiet on this consensus point.   Of the 80
comments,
> only four addressed it on point.  The Japanese Patent Office, and
> representatives of JPNIC and Hitachi Techno-Info Services Ltd thought WIPO
> should play a role in protecting famous marks.  Raul Echeberria (NCC Latin
> America) and Seann Hallisky of Chrotensen O'Commor Johnson & Kindness PLLC
> thought it should not.  Most commenters accepted this consensus point and
> moved on to points they felt were in active contention (see #4).
>
> 3)  There appears to be a consensus that protection afforded to trademark
> owners will depend upon the type of top level domain.
>
> Again, in a group well known for its opposition, this point appeared to
> receive no opposing views that I found.
>
> 4)  Should the Intellectual Property Constituency's proposal of a sunrise
> period of preregistrations plus 20 variations be adopted?
>
> By far the most contentious issue in the comment period was the Sunrise
> Proposal of the Intellectual Property Constituency.  In this proposal,
(the
> most recent to be introduced into WG-B-- about 2 days before the writing
of
> Palage's report), the IPC supports roll out of new gTLDs provided there is
a
> registration by all trademark owners of their mark plus 20 variations. It
is
> this report that yielded the vast majority of comments to the comment
server.
>
> These comments generally fell into two categories:  strong support and
strong
> opposition.  The strong support came from large and well-known
corporations,
> including the New York Times Company, JC Penny's, 3M, and Proctor and
Gamble.
> It also came from intellectual property associations such as the American
> Intellectual Property Law Association, the International Trademark
> Association, and individual committee and subcommittee chairs.
>
> The strong opposition came largely from small businesses, individuals, the
> noncommercial community and academia.   Opposing commenters included the
US
> Small Business Administration, Chelsea Data, Inc., Fuisz Technologies,
Inc.,
> Creative CompuSec, Ellen Rony, Richard Sexton, John Berryhill, Professors
> Milton Mueller, Michael Froomkin and Jonathan Weinberg, and the Consumer
> Project on Technology.
>
> Many of the comments were submitted individually; some had large numbers
of
> signatures.  All told, the support and opposition was quite evenly
balanced
> (with about forty names/companies/individuals taking each of the two
opposing
> sides).
> One repeated complaint was that the Sunrise proposal was so new to WG-B
that
> it had not been adequately vetted within the WG structure.  Among the many
> other arguments, supporters often pointed out that the Sunrise Proposal
would
> make registering of marks by trademark owners much easier.  Opponents
pointed
> out that the preregisartion plus 20 would hurt those newcomers to the
domain
> name space who were seeking additional places to register domain names
others
> pointed out that the protection might be overbroad ("The sunrise proposal
is
> inherently inequitable, operationally impractical, internally
inconsistent,
> and nonconforming with the tenets of trademark law.")   Ellen Rony
reminded
> the Names Council:  "A 1996 comment of Jon Postel bears repeating: 'The
> domain name system should provide for the needs of the many rather than
> protecting the privileges of the few.'"
>
> Perhaps surprisingly, there were a few parties who strayed from the strict
> party line.  In the large commercial community, Intel Corporation
indicated
> it would be willing to accept a Sunrise Period with only the primary
> trademark registration, not the 20 variations.  In the small business
> community, the US Small Business Administration indicated that it might
> support preregistration of a trademark registration within the confines of
a
> chartered gTLD where the trademark corresponded to the class of industry
or
> service served by the charter.
>
> 5) Other issues
> The commenters raised a few other issues.  Three commenters (US  Small
> Business, Chelsea Data and Loh Shin Shion) endorsed the NCC call for
> protection of famous marks via a gTLD especially for famous marks
(sometimes
> called .TMK or .FAME).
>
> YJ Park, in her paper on the Asian Perspective on new gTLDs raised some
> important concerns from the perspective of developing countries.
>
> Somewhat tangentially to the famous marks issue, there was a discussion
about
> .WEB, and a concern about the NSI proposal.
>
> Conclusion:
> I look forward to our important discussion on this topic on Friday.  I
hope
> this report provides some assistance in your review of the comments.