[comments-wgb] Response to Working Group B Formal Report

[Ellen Rony <erony@marin.k12.ca.us>]

This response to the Formal Report of Working Group B is endorsed by the following individuals:

€  Ellen Rony, Co-author, The Domain Name Handbook; Member WG-B
€  Michael Froomkin, Professor of Law, University of Miami
€  Milton Mueller, Associate Professor, Syracuse University School of Information Studies; Member WG-B
€  Christopher Ambler, Founder, Image Online Design, Inc.
€  Judith Oppenheimer, President, ICB Inc.; Member WG-B
€  Mikki Barry, President, Domain Name Rights Coalition; Member WG-B
€  Gordon Cook, Publisher, The Cook Report
€  Jay Fenello, New Media Strategies
€  M. Hope Aguilar, Esq., Gazillion Interactive
€  Donald R. Mitchell, Dunn Loring, VA
€  Leah Gallegos, Owner, Creative CompuSec and J&L Enterprises
€  David Schutt, IS Manager, Speco, Inc.
€  Peter Rony, Co-author, The Domain Name Handbook
€  Rod Dixon, Visiting Assistant Professor of Law, Rutgers University School of Law
€  Harold Feld, Esq., Member WG-C
€  Jonathan Weinberg, Professor of Law, Wayne State University
€  Greg Skinner, Programmer

Working Group B was created in Berlin last summer explicitly to address Chapter Four of the Final Report of the WIPO Internet Domain Name Process, "The Problem of Notoriety: Famous and Well-known Marks". The WIPO Report, published April 30, 1999, recommended that a mechanism be established for granting exclusions to famous and well-known marks when new gTLDs are introduced. This has been the focus of the discussion in Working Group B for nearly nine months.

The Formal Report of Working Group B, written by the Chair, identifies two consensus conclusions:
1)  The creation of a universally famous marks list does not appear to be needed at this point in time.
2)  There appears to be a consensus that protection afforded to trademark owners will depend upon the type of top level domain.

The report also insinuates support for a Trademark Sunrise+20 Proposal submitted on deadline by the Intellectual Property Constituency. Regrettably, too much attention is devoted to this strawman proposal, which was not vetted at all by members of Working Group B. Recommending a sunrise exclusion for ALL trademarks exceeds both the scope of WGB and ICANN's charter as the technical coordinator of Internet administration. The sunrise proposal is inherently inequitable, operationally impractical, internally inconsistent, and nonconforming with the tenets of trademark law.

Domain names possess characteristics that cannot be inferred to marks. They are extraterritorial and require no contextual association. And they are unique. The ISP Sunrise+20 on-deadline proposal thus fails to present a substantive solution to the problems confronting the holders of famous marks. Instead, it represents a wish list for two constituencies who have the most to gain.

The numbers tell the real story 

According to the US Patent and Trademark Office, the US alone has more than one million active registered marks. Sunrise+20 variations therefore represents a potential set-aside of TWENTY MILLION domain names before a single, markless individual, association, organization, foundation, cause or event gets even one. This proposal gives trademark owners their top choice of domain names without competition against other legitimate users, the general public. And the registrars get an immediate, potential windfall of 20 million registrations, which would add in excess of $200 million to their coffers. Of course, they will support such an immediate financial opportunity. 

The WGB Formal Report comments, "This compromise would eliminate the need for Registries to filter out domain names that potential infringe a trademark on an ongoing and permanent basis". This is a red herring. It has been well-established that registries have *no* obligation to engage in such filtering on behalf of the trademark owners.

"Nothing in trademark law requires that title to domain names that 	
incorporate trademarks or portions of trademarks be provided to 
trademark holders. Instead, the law simply prevents others from making
use of a company's trademarks in a manner likely to confuse the 
consuming public."
--Washington Speakers Bureau, Inc. v. Leading Authorities Inc., 51 
USPQ2d 1478, (E.D. Va. 1999)

The Sunrise+N (any number of variations) proposal does not address how multiple owners of identical marks determine which one gets the most desirable domain names. Nor does it consider when the choice of a variation becomes an unreasonable stretch of the imagination. And while trademark offices in more than 130 countries follow the same International Classification standard for goods and services, the application requirements, examining procedures, processing time and legal protections vary from one country to the next. Thus, this proposal will encourage trademark forum shopping and, perhaps drive-by, 48-hour turnaround trademark certifications.

In the trademark-centric view of the Internet, a domain name alone gives rise to a "chance of confusion". Yet, with so many creative variations of any word or mark by adding prefixes and suffixes, plurals, numbers and dashes, the days when people merely guess at a domain name to find a particular site are over. If a domain name alone gives rise to a chance of confusion, then the trademark owners that register 20 variations will be the greatest source of such confusion.
The meta question here is what justifies giving owners of trademarks or even "famous" marks" a preemptive right to register any domain names or any variations. Why should trademark owners receive preferential treatment in a publicly accessible, global communications medium? 

One of the tenets of the Department of Commerce Statement of Policy, a.k.a. the White Paper, is, "the new corporation should operate as a private entity for the benefit of the Internet community as a whole." A sunrise proposal for trademarks or famous marks provides an unsupportable pre-emptory bias to the commercial sector of the Internet over all other legitimate uses of the same or similar character strings. Indeed, this proposal condones corporate hoarding of a significant percentage of domain names before a single non-commercial user is allowed to select an online moniker.


Registering 20 variations of a mark will not make the task of policing marks disappear. But it will lead to stuffing the registry database with redundant domain name registrations and a multi-million set-aside of names which have scant association to the registered marks. 

While people have sympathy for companies and individuals who face true infringement and misappropriation of their marks, these are not new problems to the intellectual property community, and strong legal sanctions already exist in the U.S, and elsewhere to address such concerns. 

Instead of providing pre-emptory registration rights for one segment of the Internet community, encourage ICANN to establish a new, chartered top level domain, .TMK. Bid adieu to the sunrise proposal, to exclusion, preemptive variations and take downs. Bid adieu, too, to those who want to exploit the goodwill developed in those marks. Let ..TMK be an exclusive sandbox only for those who possess a trademark registration certificate. 

In summary:

1)  There are sufficient existing protections for trademarks, including federal law and statutes, the UDRP and monitoring mechanisms. Preemptive exclusions or a sunrise proposal are unnecessary.
2)  A famous marks list used for exclusionary registrations creates new preemptive rights that do not exist in law. 
3)  A sunrise period is not likely to reduce the number of cybersquatters nor diminish the trademark owners concerns over policing the use of their marks
4)  Introduction of a top level domain solely for registered owners of trademarks is the most efficient way to assure that users find the sites associated with those marks and limit the value of cybersquatting. 

See http://www.domainhandbook.com/wgbreport.html for the current list of endorsers.