RE: [wg-b] 800 Telephone Scenario

["Martin B. Schwimmer" <martys@interport.net>]

What are the deadlines for this group and what is expected other than
votebot results?


 No registry or related agency is
>voluntarily going to undertake the notification process, to either the
>trademark owner or domain name registrant, because of various legal and
>technical problems associated with it (see NSI's position in the WorldSport
>case where the court wanted NSI to install filters). Therefore, domain name
>registrants will never be able to receive the neutral type of notification
>that was discussed on the list. 

The contents of the fame claim would be very non-neutral but they would be
clearly identified as originating with the TM owner - I don't see why the
claim cannot be accompanied by a cover email from the list administrator
that says "We are passing this along to you for informational purposes
only.  We are not responsible for its contents and specifically have not
and do not verify the accuracy of its contents.  Seek competent legal
advice.  See the following list of links for more information from a
variety of sources.  Drive safe."  <--- this is not intended to be a draft
for discussion purposes, only to illustrate that it is possible for the
cover letter from a neutral party to indicate that party's neutrality.  


The only notification will come in the form
>of a cease and desist letters that some attorney will write after his/her
>client has been notified either through its own efforts or through the
>services of a third party that will monitor the root for specific
>sub-strings. So in this case we have come full circle and we are back to
>square one. The compromise in the idea that I proposed yesterday involved an
>affirmative act by a trademark owner to qualify their mark as famous and
>then grant them a right a first refusal in the new gTLD space that could be
>challenged by a third party.

If Nike passes on nike.art and then someone uses nike.art to sell sneakers,
will there be prejudice agaisnt Nike for having passed in the first place?
Does Nike then not pass on nike.art for that reason?  

>
 Other ccTLDs have enacted safeguards for famous
>trademark owners so I fail to see why this group of participants (with
>impressive credentials) cannot reach an intelligent well thought out
>compromise.

Can you please post links or other info regarding these policies?

>
>To follow-up on an issue raised by Dennis with regard to the group's focus
>on protecting trademarks above religions, etc. I guess the question is
>rather simple. On a global basis, reaching a consensus on economic issues is
>much easier to do than on religious ones. I believe this fact is evidenced
>by the large number of signatories to the various international treaties
>regarding intellectual property.

I think the answer is simpler still.  The COCA COLA tradmark is an asset of
Coca Cola and it makes economic sense for it to protect it.  The name of a
decentralized (and even a centralized) religion is not viewed as an
economic asset and it is not organized to protect it in trademark like
fashion.  I think it's not that there wouldn't be consensus - there's no
organizaed entity pushing for such protection (although as Dennis pointed
out such protection is certainly warrnated.  Incidentally, TM statutes
around the world do have provisions barring the registration of various
religious terms.

As you are likely aware, interim drafts fo the WIPO report had intended the
UDRP to protect rights  nominally outside of intellectual property
protection, such as the right to publicity/privacy/personality.  In my view
the limitation of the UDRP to "abusive registration" in the final report
arose more from a desire to be conservative about a new procedure, than
from a firm view as to whether such rights desire such protection (it is
hard to see why the registration of [celebrity's name].com is less
piractical than other instances of cyber-piracy).

There are other categories of "reserved words."  WIPO maintains a list -
for example medicine names are barred from TM registrations - is it in the
public interest that there be no penicillin.com?  WIPO considered proposing
this and backed off.  DNSO may well wish to consider this.

>From:	owner-wg-b@dnso.org [mailto:owner-wg-b@dnso.org] On Behalf Of eileen
>kent
>Sent:	Tuesday, September 21, 1999 10:17 AM
>To:	wg-b@dnso.org
>Subject:	Re: [wg-b] 800 Telephone Scenario
>
>I have to agree with Milton on many points. In particular, the right of
>first refusal for a stand alone string seems pretty marginal. It injects
>bureaucracy and expense into a process that is essentially a nod to the
>i.p. community without much substance.
>
>I thought we were kind of on track here with an automatic notification to
>both sides of any incidence of a string within a registration that
>replicates a famous name (definition to come). I believe Randy Bush came up
>with some palatable language for a machine generated notification. If the
>trademark owner has a problem with the registration, he can go immediately
>into dispute resolution.
>
>I commend Michael for continuing to think of creative solutions and for
>bringing such disparate (but civil) voices together. And thanks, Michael,
>for the vote bot. I think we may need to vote on what we're going to vote
>for, though.
>
>eileen
>
>p.s. I got a letter from a company called "enic" offering to sell me
>eileenkent.cc. What's up with that?
>
>
>
>At 10:33 PM 9/20/99 -0400, Milton Mueller wrote:
>>Michael:
>>
>>I cannot reject it out of hand at this point, but I have great difficulty
>accepting
>>the proposal to create a "right of first refusal" in new gTLDs, for the
>following
>>reasons.
>>
>>1. It would be useful to know why the US FCC did not create such a right
>in the 877
>>number space, after it did so in the 888 space. Perhaps others can provide
>more
>>information here, but my impression was that the whole issue of confusion
>was not
>>perceived to be a serious problem, especially with more than two toll-free
>number
>>spaces. There is no evidence that the absence of first refusal in the new
>space has
>>caused any problems.
>>
>>2. Implementing a first refusal right implies that no new names can be
>registered
>>under a gTLD until we have a list of "famous" names. We can't have such a
>list
>>without a defined procedure--which we don't have yet.We would also need to
>sift
>>through hundreds, perhaps thousands of applications for famous status.
>This implies a
>>delay of several months, perhaps even years, before new gTLDs can come on
>line. This
>>is Not Good.
>>
>>3. Does "first refusal" really add that much protection to a UDRP? Put
>another way,
>>is the marginal increment of protection offered by first refusal worth the
>associated
>>increase in bureacracy, complexity, delay, and new possibilities of abuse
>by TM
>>holders? I don't think it is.
>>
>>4. The analogy between slow, "controlled" growth in the number space and
>in the
>>domain name space is not valid. Economically, there is no comparison
>between the two.
>>The telephone number space is highly restricted. There are only a few
>codes available
>>that can be used. The domain name space, in contrast, is virtually
>unlimited.
>>Technically, there could be thousands of new TLDs, although no one
>probably wants to
>>operate that many.
>>
>>Expansion of the 800 number space has been driven by the fact that we are
>literally
>>running out of available numbers; i.e. exhaustion of supply. Expansion of
>the domain
>>name space is driven by the desire of users and some suppliers for new and
>unique
>>names; i.e. by the differentiated demand.
>>
>>The radically different supply situation creates a quite different policy
>problem.
>>
>>
>>> > In trying to keep what we do in this working group as close to the real
>>> > world as possible consider the following history lesson. When the
>toll-free
>>> > telephone exchange expanded from 800 to 888, the FCC granted existing
>800
>>> > customers a right of first refusal to secure their same telephone
>number in
>>> > the new 888 exchange. This right of first refusal was not extended to
>>> > existing customers when the 877 exchange was recently added. I would
>like to
>>> > thank Marilyn Cade and her colleagues from AT&T for verifying this
>>> > information for me.
>>> >
>>> > Using this history lesson as a starting point, could a right of first
>>> > refusal for those marks deemed famous coupled with the currently
>proposed
>>> > domain name dispute policy work to protect the interests of  individual
>>> > domain name holders, small business owners, and large multinational
>>> > corporations? Any proposed right of first refusal would be limited to
>the
>>> > exact famous trademark itself, no sub-strings for the rather long list
>of
>>> > technical and legal issues already reiterated on the list.
>>> >
>>> > Positive - There are no per se exclusions from the root.
>>> > Negative - A famous trademark owner would still have the potential
>ability
>>> > to abuse the system by initially securing valuable new domain name
>space in
>>> > the root in gTLDs outside their natural zone of expansion that did not
>in
>>> > fact dilute their famous mark.
>>> > Positive - But this would only happen after a showing that a mark is
>famous
>>> > (we will worry about the definition latter).  If doing so protects
>consumers
>>> > from confusion, is this necessarily a bad thing? Plus any third party
>would
>>> > be able to challenge this right of first refusal if they feel that
>they have
>>> > a legitimate or superior claim to the domain name.
>>> > Positive - Perhaps the IP community would be willing to waive their
>right of
>>> > first refusal for domain name registrations in purely non-commercial
>domains
>>> > and rely solely on the dispute policy to resolve alleged
>infringements? If a
>>> > pattern of abusive domain name registrations surfaces in these new
>>> > non-commercial domains, we could always active the right of first
>refusal
>>> > mechanism.
>>> > Positive - This mechanism will allow for the controlled growth of the
>name
>>> > space, similar to the controlled growth of the toll free exchanges, as
>we
>>> > fine tune the rules to meet circumstances which we could not even
>>> > contemplate if we tried.
>>> >
>>> > I believe the recent decisions in the clue.com and avery.net decisions
>that
>>> > I posted to the list last week shows that it is in our best interest to
>>> > reach a compromise among ourselves. I do not believe that costly
>litigation
>>> > is in anyone's best interest.
>>> >
>>> > I will be the first to admit that this possible solution is NOT
>perfect, but
>>> > I believe it is one of the best solutions to date that would meet the
>>> > minimal threshold requirements for all participants. I believe this is
>as
>>> > close to a consensus compromise as possible based upon the rather
>diverse
>>> > viewpoints of the participants. What we as a group must realize is that
>>> > until we enact some reasonable/workable safeguards, the likelihood of
>ANY
>>> > new gTLDs being added are doubtful.
>>> >
>>> > The votebot will be operational by the end of the week. I will hold a
>sample
>>> > vote for all participants to become familiar with it.
>>> >
>>> > As always I welcome the groups comments - both positive and negative :)
>>> >
>>> >
>>> >
>>
>>
>>
>>--
>>m i l t o n   m u e l l e r // m u e l l e r @ s y r . e d u
>>syracuse university          http://istweb.syr.edu/~mueller/
>>
>>
>>
>>
>
>
>

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