[ga] Re: SBA's critique of ICANN WG-B Proposal

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

Michael and all,

  I agree with you for the most part here Michael as do most of our
members.  The only place where we may differ is the end result.
For a time the large TM interests may get their way, but not indefinitely.
I say this because I believe that should a joint class action suit be
generated as a result of the desires of the large TM interests in
conjunction with ICANN/WIPO it is likely that serious changes
will occur, much as is happening with the Microsoft case now.

Michael Sondow wrote:

> This is an excellent critique of the proposal from WG-B for
> protection of famous marks. The SBA is perfectly correct that the
> WG-B proposal gives unwarranted predominance in name registration to
> special interests, and illicit authority to non-mandated agencies.
>
> Unfortunately, without clout or an equal voice on the ICANN Board -
> the only real authority in this process - neither the SBA, nor the
> Nader Organization, nor even united Internet users will be able to
> stop the trademark interests, who have an undemocratically-won
> majority on the DNSO Names Council, from putting into effect their
> anti-user, anti-public interest regulations.
>
> Only power determines policy. Petitioning your opponent for
> leniency, once you have let him have the power, means defeat. As the
> SBA and Nader will soon see, there is only one way for their voice
> to have its rightful effect: the dissociation of ICANN and the
> creation of an entity that does adhere to the principles of the
> White Paper.
>
> Without democratic process there can be no democratic and just
> regulation.
>
> > Jere W. Glover Chief Counsel for Advocacy wrote:
>
> > 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.
>
> ============================================================
> Michael Sondow           I.C.I.I.U.     http://www.iciiu.org
> Tel. (718)846-7482                        Fax: (603)754-8927
> ============================================================

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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