[comments-wgb] Objection to "Sunrise Plus Twenty" proposal

[Mark Chen <markchen@fas.harvard.edu>]

Dear ICANN,

When the new top-level domains are rolled out, what sorts of protection,
if any, should be given to owners of "famous" names? 

Under the Intellectual Property Constituency's so-called Sunrise Proposal,
which is described in Working Group B's formal report, all owners of
trademarks and service marks would have the right of first refusal to
names within a new top-level domain before the general public. As a number
of responses have pointed out (included in attachments #2-#8), the overly
broad protection has the drawback of (1) not being grounded in trademark
law; (2) going well beyond the proper scope of ICANN's mandated authority;
and (3) unfairly disadvantaging many thousands of businesses worldwide
that either do not currently hold trademarks or have not held a trademark
for a long enough period of time.

But perhaps more importantly, the proposal appears to be deeply flawed
from a practical standpoint. First of all, it may extend companies'
trademark protection into lines of commerce other than those to which the
original trademark protections applied. Blanket trademark protection,
especially in the case of unrestricted gTLDs, could very well result in
increased confusion among internet users.

Second, the proposed registration process does not appear to be
operationally feasible. IPC proposes that the holder of a trademark or
service mark have the right to register up to an additional 20 variations
of their mark. Who is to judge what constitutes an acceptably close
variation of a mark? If that duty were to rest with the registrars, then
they would be required to decide--fairly, on a case-by-case basis, and
within the 30-day sunrise period--whether each of perhaps millions of
names around the world was an acceptable variation given the mark(s) of
the applicant. This hardly seems realistic given the myriad of possible
combinations of names, trademarks, and country trademark laws.

Third, as the Working Group B Report acknowledges, the latest IPC proposal
does not appear to ensure that registrars for the new names would be
protected from lawsuits. The reason for this is that while registrars
would not be obligated to protect trademark holders WHEN names are
registered, they will essentially be obligated to protect mark holders
AFTER the names are registered. The IPC proposal states that "Registrars
would be under no obligation to check the information contained in an
application to register a domain name submitted during the Sunrise Period"
but that registrars would be "obligated to promptly 'take down' any domain
name" when it was brought to their attention that the registration was
improper. For this procedure to be internally consistent, registrars would
have to be able to quickly and accurately verify hundreds of thousands of
trademarks around the globe on the basis of "take down" objections.
Failure to perform this function correctly would thus again expose
registrars to the risk of being sued.

If the prospect of creating a famous marks list is too controversial and
unpalatable to contemplate further, then we should rely on trademark laws,
ICANN's Uniform Dispute Resolution Policy (UDRP), and the U.S.
anti-cybersquatting laws to protect famous trademarks. But ICANN should
not push through a policy that was hastily conceived, inherently unfair,
and unfounded in trademark law. Given that the explicit purpose of Working
Group B was for studying the issue of famous names protection, granting
the right of first refusal to all marks would be a particularly glaring
instance of overkill.

Sincerely,

Mark A. Chen




"Most of the things we decide are not what we know to be the best. We
say yes, merely because we are driven into a corner and must say
something."       -- Frank Crane