[comments-wgb] Comments on the WG-B (Famous and Well-known Marks) Report

[azkubo@interlink.or.jp]

Comments on the WG-B (Famous and Well-known Marks) Report

0.  Introduction

This document summarizes the result of a local discussion on the WG-B
report (Famous Marks).  Five persons in Japan participated in the
discussion.
These comments are not the result of summing up opinions of a specific
organization or standpoints but are the result of discussing the
wholesome development of the Internet from divergent views.

1.  Comment on the report as a whole

We wish to express our respect for the efforts made to compile this
report in a short time.  Nonetheless, we cannot but say the report has
inadequacies; it lacks consistency required of a final report and
transparency of the process.

For instance, the following points require further and persuasive
explanations:

(1) The report talks about "Consensus Items" and "Point of Agreement,
but not Consensus".  Each category needs to be defined clearly. What
is called "consensus" and what is called "agreement"?  Their meanings
seem to differ from the usual senses of the words.

(2) The process of drawing up the report is not clear.  We strongly
doubt that the report properly reflects opinions of various parties
and sectors.  For example, the report does not describe how and why
the position paper of the IPC Constituency submitted in the last
minute has become the consensus of the WG-B.

(3) The report confuses "large trademark owners" with "famous
trademark owners" in several places.  Protection of famous trademarks
is an issue that should be discussed regardless of whether trademark
owners are large or not.


2.  Scope of trademark protection

This report proposes that the scope of protection be extended to
include any trademark in general.  However, giving priority to any
trademark in general will cause serious problems:

(1) Trademarks of all the nations worldwide, whether registered or
not, would receive priority treatment.  This is not a realistic
solution because it will raise the following problems:

(a) Registries, registrars and other institutions have no practical
means to judge whether each applicant for a domain name registration
has the rights or legitimate interests in the trademark to be properly
protected.  For example, only a few countries presently have online
trademark search or retrieval systems.
(b) If somebody fallaciously registers a trademark in a country where
obtaining a registration is quite easy, this trademark owner
immediately becomes able to apply for a domain name registration. Such
an activity will in effect deviate from the purpose of trademark
protection.

(2) It threatens that we unfairly prioritize trademark rights in the
domain name space. We can easily predict that the space open to domain
names without trademark rights will be significantly narrowed if
priority is given to an entire set of trademarks in all the countries
of the world.

For the above reasons, we should get back to our original aim and
establish a system to protect globally famous trademarks only.

3.  Sunrise period

We guess that adoption of a sunrise period may be the only way to
protect any trademark in general. However, as mentioned earlier, there
are no realistic means to judge if each domain name applicant is
eligible to enjoy protection in the domain name space.  This might
cause no protection afforded to the registration and use of proper
domain names, whether they are for commercial or noncommercial use.
In this case, a legitimate or proper trademark owner will fear that
the desired domain name may be taken by a "trademark pirate" who has
no ground for his right.  A domain name registrant will fear that a
"trademark pirate" may enjoy priority, setting an obstacle to the
registration of proper domain names, which are not confused in the
public with any existing trademarks．

Although applications in a sunrise period entail the above problems,
the WG- B report does not propose any suitable measures for these
problems.

While preventing cybersquatting that violates the right of famous
trademarks well acknowledged in each country, the WG-B should discuss
systems for registering and managing gTLDs, whether commercial or
noncommercial, so that careful attention will be given to protecting
the fair registration and use of domain names.  The compromise sought
after in the report seems to give priority to any trademark owner in
general, which not only unreasonably narrows the space for domain name
users who do not hold trademarks, but also neglects the protection of
famous trademarks in noncommercial gTLDs.


4.  Types of gTLDs in which famous trademarks are to be protected

We disagree with the WG-B report as to the types of gTLDs in which
famous trademarks are to be protected.  We think that famous
trademarks should be protected from malicious cybersquatting in all
gTLDs.  For example, in a chartered noncommercial TLD, it is not
feasible to create a mechanism for eliminating people who maliciously
register domain names that contain strings identical with or similar
to famous trademarks and use them for commercial purposes.  Thus,
limiting the types of gTLDs will not solve the problem of
cybersquatting.  For this reason, it is meaningless to change the
level of trademark protection between the commercial and noncommercial
categories of gTLDs.


5.  Definition of famous trademarks, evaluation criteria and a list of
    globally famous trademarks

In the course of our discussion, we have fully recognized the
difficulty of the compilation of a list of globally famous trademarks.
Yet we find the compilation of a globally famous trademarks list
indispensable for the protection of globally famous trademarks and the
wholesome and substantial development of domain name registration.

ICANN's task is to keep a proper balance between fair domain name
registration and famous trademark protection and prepare gTLD systems
that can eliminate cybersquatting as much as possible.  ICANN must
also consider the feasibility of these systems designed for the
protection of trademark rights and good faith domain name
registration. ICANN, who owes the responsibility to manage globally
open gTLDs, may not renounce this responsibility.  On the other hand,
compilation of a famous trademarks list is not a task for ICANN.
It should be assigned to an appropriate institution, such as WIPO.
Therefore, ICANN should discuss with WIPO this issue regarding the
feasibility described in Chapter 4 of WIPO's Final Report.

6.  Our proposal

Based upon the above discussions, we propose the following:

(1) A mechanism should be established to protect globally famous
trademarks only.
(2) Along with (1), further evaluation should be made to judge whether
to implement a sunrise period or advance filtering.
(3) A complete list of all strings of variations to be protected, if
any and appropriate, with regard to the globally famous trademarks
must be compiled and served. For example, the list must contain not
only the identical string of a trademark but also its plural form, if
appropriate.
(4) The level of famous trademark protection should not differ with
the types of gTLDs.
(5)  The task of compiling a famous marks list should be assigned to an
appropriate institution, such as WIPO.


Kozo YABE (Attorney-at-law; Task Force for the domain name dispute
policy, JPNIC)
Tsugizo KUBO (Domain Name Working Group, Task Force for the domain
name dispute policy, JPNIC)
Atsuo TORII (Hitachi Techno-Information Services, Ltd.)
Naomasa MARUYAMA (Domain Name Working Group, Planning/International
Working Group, Task Force for the domain name dispute policy, JPNIC)
Hiro HOTTA (NTT; Planning/International Working Group, JPNIC)