[ga] Re: I beg to differ ... RE: SBA betrays small business interests

[Jeff Williams <jwkckid1@ix.netcom.com>]

Judith and all,

  Yes, this is my understanding from Eric directly on several conversations
on the phone that he and I have had in the not to distant past.

Judith Oppenheimer wrote:

> I think SBA's Advocacy makes it clear in these comments, below, that it is
> challenging the TM lobby, not being complicit with it ...
>
> Judith Oppenheimer
>
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> 684-7210
>
> The Office of Advocacy of the U.S. Small Business Administration has the
> following comments on a proposal under consideration of Working Group B on
> the Internet Corporation for Assigned Names and Numbers ("ICANN"), which is
> tasked with the project of determining famous mark protection. Advocacy has
> serious concerns regarding the proposal and wishes to work with the Working
> Group to address them. We fear that the proposed protections for famous
> marks would preclude small businesses from using common, everyday words,
> like apple, ford, fox, and bell, as well as common family names like Hoover,
> McDonald, and Warner as domain names on the Internet.
>
> To our understanding, the current proposal contains the following elements:
> (1) The World Intellectual Property Organization ("WIPO") would create a
> famous mark list using the criteria below, which were put forth in its
> report on the subject last year:
>
> (a) degree of knowledge or recognition of the mark in the relevant sector of
> the public; (b) duration, extent and geographical area of any use of the
> mark; (c) duration, extent and geographical area of any promotion of the
> mark; (d) duration and geographical area of any registrations of the mark;
> (e) the record of successful enforcement of the rights in the mark; (f)
> value associated with the mark; and (g) evidence of registration of domain
> names that are the same or misleadingly similar to the mark.
>
> (2) Marks that are on the list would have the option of registering names
> during a "sunrise period" whenever a new general Top Level Domain ("gTLD")
> is added to the Internet. The sunrise period would be a brief period of time
> before the new domain is available for the general public to register.
>
> (3) During this sunrise period, famous marks could register the domain name
> identical to the famous mark and either five or 10 variations of the famous
> mark.
>
> (4) The owner of the famous mark would have to pay for each registration.
>
> (5) Once registration is opened to the general public, famous marks do not
> receive any further benefit. There would be no use of filters on domain name
> registrations.
>
> (6) The sunrise period would be inapplicable to gTLDs designated for
> personal and non-commercial use.
>
> Advocacy questions the need for the famous marks proposal, because the 1999
> Anticybersquating and Consumer Protection Act passed by the U.S. Congress
> last year and the Uniform Dispute Resolution Process already address much of
> what the proposal is attempting to rectify. In addition, Advocacy questions
> the legal basis for a supra-legal process. Therefore, we recommend that
> Working Group not adopt at this time a mechanism that would create or
> enforce additional protections for famous marks. Advocacy's position is
> focused on the following concerns.
>
> First, ICANN effectively is delegating policy-making authority to WIPO,
> which will expand that organization's responsibility beyond its treaty-based
> duties. WIPO is a private body, its decisions are not subject to oversight
> or review, and its role by treaty is advisory. However, this proposal will
> give WIPO quasi-governmental decision-making authority, which will
> substantively affect a trademark holder's rights by expanding the rights of
> those considered "famous" and contracting the rights of those who are not.
> What is proposed is seriously flawed. Any process that is adopted must be
> subject to checks and balances.
>
> Furthermore, Advocacy questions whether ICANN has the mandate and authority
> to defer to a third party on this issue. A WIPO panel of intellectual
> property attorneys deciding which names are available for domain name
> registrations is far removed from the bottom-up consensus process envisioned
> by the Commerce Department's White Paper. Democratic participation must play
> a role in formulation of rights of stakeholders in the Internet. ICANN
> cannot delegate the task given to it without insuring that the principles
> under which ICANN operates are met.
>
> Second, assuming any protection is given to famous marks, that protection
> must be limited to the segment of industry in which the mark is famous.
> Advocacy recommends that the Working Group define the scope of the industry
> in terms of the classes of goods and services associated with the mark.
> Classes should be based upon the International Classification of Goods and
> Services.
>
> Although the degree of prominence in the relevant market sector was one of
> the criteria that WIPO enumerated, Advocacy notes that the "sunrise" period
> allowing famous marks to pre-register will allow a mark to be registered
> without limitation across all market sectors, thereby substantially
> expanding the famous mark holder's substantive rights under the mark. For
> example, if "McDonald's Hamburgers" is considered a famous mark under the
> proposal, the McDonald's Corporation would have the opportunity to
> pre-register the word "McDonalds" (as a variation of "McDonald's
> Hamburgers") in every new gTLD. Even if non-commercial and individual gTLDs
> were exempted, no person named McDonald could use their own name for a small
> business's domain name, regardless of the type of industry and even if such
> party's goods or services were totally unrelated to fast food goods and
> restaurant services. It is Advocacy's position that any protection for
> famous marks must be limited to a particular mark's industry sector.
>
> Third, the criteria for determining a famous mark are too vague and easily
> could result in a countless number of famous marks on the list. The proposal
> does not specify the degree of proof needed to be considered a famous mark
> and gives too much discretion to the WIPO. Advocacy believes that the
> standard must be set very high. Furthermore, Advocacy believes that
> additional criteria are needed, such as a requirement that the famous mark
> must be arbitrary for its scope of business, and it must be a mark that
> other persons do not have a legitimate right to use (e.g., a surname, a
> generic, or a descriptive term). For example, "apple" is a generic term but
> is arbitrary when it is referring to computer hardware and software.
>
> Advocacy believes that under the proposal, WIPO will have no constraints to
> limit the number of famous marks. Rather, it will be under immense and
> continual pressure to add marks, thereby diluting the meaning of "famous"
> designation and ex-propriating for famous mark holders exclusive use of a
> substantial proportion of available domain names. A vast number of trademark
> holders would consider their marks famous and would apply for this special
> status. There are slightly less than 1 million "live" registered trademarks
> in the United States. If just 25 percent of these apply, and only 25 percent
> of those are approved, that is approximately 62,500 famous marks from the
> United States. This number is just a fraction of the total number of global
> trademark registrations. With the apparent ease of application and the
> benefits given, the Advocacy believes that the number of marks on the list
> will likely mushroom not to just 1,000 or even 10,000 but to hundreds of
> thousands. The expansion of famous marks will create a barrier of entry to
> new businesses, both large and small, joining the Internet. If a famous
> marks proposal is to be implemented, the number of famous marks must be
> limited to a small number of truly famous marks.
>
> In sum, Advocacy believes that the compromise proposal does not contain
> enough checks to prevent extensive abuse, will result in wholesale
> disenfranchisement of individuals and small businesses, and, furthermore,
> maybe unnecessary. Advocacy recognizes that these are complex issues and
> does not have ready-made solutions. It does not enjoy being a nay-sayer who
> does not contribute to the solution. Therefore, we will work with you to
> identify workable alternatives to address these issues and achieve a
> satisfactory result.
>
> Jere W. Glover Chief Counsel for Advocacy
>
> -----Original Message-----
> From: Owner-Domain-Policy [mailto:owner-domain-policy@internic.net]On
> Behalf Of Gordon Cook
> Sent: Friday, April 07, 2000 12:57 PM
> To: DOMAIN-POLICY@LISTS.INTERNIC.NET
> Subject: SBA betrays small business interests Fwd: Famous Trademark
> Protection Roundtable Agenda
>
> >From: Eric.Menge@sba.gov
> >Subject: Famous Trademark Protection Roundtable Agenda
> >Date: Fri, 7 Apr 2000 10:55:21 -0400
> >MIME-Version: 1.0
> >
> >Roundtable Discussion on Small Business Impact
> >
> >of Famous Trademark Protection
> >
> >April 10, 2000
> >
> >Agenda
> >
> >Introduction
> >2:00  p.m.
> >Eric Menge, Assistant Chief Counsel
> >Office of Advocacy, U.S. Small Business Administration
> >
> >Overview of U.S. Trademark Law
> >2:10 p.m.
> >Jonathan Pawlow, Assistant Chief Counsel
> >Office of Advocacy, U.S. Small Business Administration
> >
> >Overview of Working Group B Proposals
> >        2:25 p.m.
> >Michael Palage, Chair of Working Group B
> >
> >Break
> >2:50 p.m.
> >
> >Open Discussion
> >3:00 p.m.
> >All participants
> >
> >Concluding Remarks
> >3:50 p.m.
> >Eric Menge, Assistant Chief Counsel
> >Office of Advocacy, U.S. Small Business Administration
> >
> >--
> >Eric Menge
> >Office of Advocacy
> >U.S. Small Business Administration
> >(202) 205-6949; eric.menge@sba.gov
> >www.sba.gov/advo
>
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Regards,

--
Jeffrey A. Williams
Spokesman INEGroup (Over 95k members strong!)
CEO/DIR. Internet Network Eng/SR. Java/CORBA Development Eng.
Information Network Eng. Group. INEG. INC.
E-Mail jwkckid1@ix.netcom.com
Contact Number:  972-447-1894
Address: 5 East Kirkwood Blvd. Grapevine Texas 75208


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