[comments-wipo] http://www.icann.org/dnso/new-gtlds-01apr00.htm

[maruyama@nic.ad.jp]

Here are our comments.

-- Naomasa Maruyama

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Comments on the WG-B report (famous trademarks)

0.  Introduction
     This document describes opinions of a group of an interested
group from JPNIC (Japan Network Information Center) who discussed the
DNSO WG-B's report on the protection of famous trademarks with respect
to the domain name registrations.  The following summarizes our
opinions:

* Famous trademarks should be protected by some means in addition to UDRP.
* The following methods should be used to protect famous trademarks:
  - Use a list of famous trademarks.  In this case, a complete list of
    all the concerned strings must be compiled.

  - Two protection mechanisms are possible-filtering and setting of a
    sunrise period.  We should thoroughly compare the two mechanisms
    to study their merits and demerits for trademark owners, domain
    name registrants, registrars and registries.

    This document summarizes comments made by an interested group
within JPNIC and represents neither the policy of all members of JPNIC
nor their policy as an organization. These comments were made in our
effort to discuss the wholesome development of the Internet from
various points of view, not from the standpoint of ccTLD.


1.  Should famous trademarks be protected?
     We find it necessary to protect famous trademarks with respect to
the domain name registrations.  The trademark protection aims to
prevent confusion that will occur when end users, or consumers,
mistake a certain domain name for a trademark that is owned by another
party than the domain name holder.

     ICANN has the uniform dispute resolution policy (UDRP) as a
method of solving such trouble.  However, UDRP is applicable only
after disputes have occurred due to consumers' misunderstanding of a
certain domain name.  To prevent misunderstanding and confusion in
advance, famous trademarks should be excluded in the domain name
registration from other parties than the trademark holder.  We think
the exclusion is necessary in addition to UDRP.

     In our discussion, some members agreed with the idea of trademark
protection but think that protection schemes are unrealistic because
it is not possible to automate the exclusion process and compile a
complete list of famous trademarks.  They think that famous trademarks
can be protected solely by UDRP.

2.  How to protect famous trademarks
     Use of a list may be suggested during discussions on the
protection of famous trademarks in the domain name space.  In this
case, a complete list of all concerned strings must be compiled.  For
example, the list must contain not only the string of a certain
trademark but also its plural form to protect both strings.

     Two protection mechanisms are possible-filtering and setting of a
sunrise period.  When the filtering mechanism is applied, names
perfectly identical with strings contained in the list are filtered
out.  When a sunrise period is set, the owner of a trademark that is
identical with a string in the list is given priority to register the
string as their domain name during the sunrise period.

     The two mechanisms should be thoroughly compared to determine
their merits and demerits for trademark owners, domain name
registrants, registrars and registries.  In our discussion, we did not
reach a conclusion and decide which method is superior.


Naomasa MARUYAMA (Domain Name Working Group, Planning/International Working
Group, Task Force for the Domain Name Dispute Policy, JPNIC)
Tsugizo KUBO (Domain Name Working Group, Task Force for the Domain Name
Dispute Policy, JPNIC)
Hiro HOTTA (Planning/International Working Group, JPNIC)
Toshi TSUBO (Domain Name Working Group, Planning/International Working
Group, Task Force for the Domain Name Dispute Policy, JPNIC)
Kozo YABE (Task Force for the Domain Name Dispute Policy, JPNIC)
Takashi ARANO (Planning/International Working Group, IP Address Working
Group, JPNIC)
Yumi OHASHI (JPNIC Secretariat)
Makiko MATSUMARU (JPNIC Secretariat)
Akiko KUSABA (JPNIC Secretariat)

----
Naomasa Maruyama (Vice President of JPNIC)
maruyama@nic.ad.jp

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