[registrars] Registrar Position Paper

["Michael D. Palage" <mpalage@infonetworks.com>]

SUNRISETM PLUS FIVE

Executive Summary:

The following is a proposal made on behalf of Internet registration
authorities and other interested parties to offer a potential solution to
the issues currently being studied by Working Group B (Protection of Famous
Trademarks).

The ongoing conflict between trademark owners and domain name registrants is
well known. All too often, Internet registration authorities have needlessly
been made an innocent third party in these disputes. This proposal is an
attempt on behalf of registration authorities to provide famous trademark
owners with the ability to protect their interests in an equitable and cost
efficient manner.

The key feature of this proposal is a sunrise period provision that will be
incorporated into the rollout of selected new top-level domains.  During
this sunrise period, trademark owners will be able to reserve their domain
name(s) at a discounted basis in the new top level domain before that new
domain is opened to the general public on a traditional first come first
serve basis.  This sunrise provision also will provide a means for trademark
owners to protect sub-string variations of their mark by allowing them to
register up to five (5) variations of the mark.

Statement of Background Facts:

* The domain name system was not designed as a source identifier for
consumers.
* The commercialization of the Internet domain names has resulted in certain
domain names acquiring a source identifier function associated with
traditional trademarks and service marks.
* The White Paper called for a process for protecting famous trademarks in
the generic top-level domains.
* Chapter Four of the WIPO report set forth a proposal for protecting famous
marks in connection with the domain name system.
* "[T]he goal of [the] WIPO Process [was] not to create new rights of
intellectual property, nor to accord greater protection to intellectual
property in cyberspace than that which exists elsewhere." (RFC 3, para. 32)
* Failure to adequately address the concerns of the intellectual property
community in connection with famous marks continues to be an impediment in
the rollout of new top-level domains.
* Filter based solutions to protect famous trademark interests raise
significant technical and legal liability issues for registration
authorities.

Statement of Legal Points of Law:

* Traditionally, national trademark laws exist to protect a mark in
connection with specific goods and/or services within the sovereign
territory of that nation.
* Recent expansion of certain national trademark laws has extended
protection to marks in connection with unrelated goods and services, i.e.
dilution, within the sovereign territory of that nation.
* The aforementioned forms of protection are derived in part from the Paris
Convention and the TRIPS agreement.
* The protection afforded under these collective treaties although broad, is
NOT absolute.
* Not every United Nation member is a signatory to the Paris Convention and
even fewer member states are signatories to the TRIPS agreement.
* Nothing in these treaties, either individually or collectively extend
protection to a mark in a country where it is NOT famous.
* Certain countries, specifically those in the Asian Pacific region, have
national laws that explicitly do not recognize dilution.

Proposed Solution:

The registration authorities support the creation of a narrowly defined list
of famous marks by the World Intellectual Property Organization (WIPO). This
list should be created in an expeditious manner to coincide with the rollout
of new top-level domains. Furthermore, use of this list should be limited
exclusively to the rollout of NEW generic and chartered commercial top-level
domains. Such a list is not intended to be used in connection with ccTLDs
and any new chartered, non-commercial domains such as a .PER or .NOM.

Ninety (90) days prior to any new gTLD being added to the root, the new
registry authority will begin accepting applications and discounted
registration fees from trademark owners whose marks appear on the WIPO list
through participating accredited registrars. This sunrise period is set to
last for a thirty-day (30) period. To prevent a gold rush mentality, it is
suggested that during this thirty-day sunrise period no preference should be
given to a famous trademark owner filing earlier than another famous
trademark owner in the sunrise period. Also during this sunrise period
famous trademark owners will be permitted the opportunity to request
registration of up to five additional domain names related to the core
trademark registration appearing on the WIPO list.

Not every registrar is required to participate in this sunrise period. Some
registrars may elect to participate in the registartion process only after
sunsrise period has passed. The exact amount of the discounted fee for the
domain names registered during this sunrise period is yet to be calculated.
However, it should be commensurate with the registration authorities' fixed
costs. Such a cost-based fee solution should therefore remove any perception
of this being a "forced sale."

At the conclusion of the thirty-day sunrise period any conflicting domain
name registration of the famous mark or the sub-string variations, if any,
may be referred to an appropriate administrative panel as the disputing
parties so agree, such as WIPO, to have their dispute resolved. It is
proposed that the next sixty day (60) time period prior to the top-level
domain being added to the root should be sufficient time to resolve any
potential conflicts. If any potential conflicts cannot be resolved by this
time, then the available options are to have the domain name be put on hold
or to have the domain name activated in a gateway capacity until the dispute
can be resolved.

Conclusion:

In the interest of addressing the trademark community concerns about famous
trademarks and resolving any final trademark concerns of the IP community
preventing the rollout of new top-level domains, the registration
authorities support the creation of a list of universally famous marks.
This list is to be used exclusively in connection with a sunrise period
prior to any new generic or charted commercial top-level domain name being
added to the root.