[wg-b] Submission from noncommercial community

[KathrynKL@aol.com]

Michael:
Attached please find our response to Working Group B's call for comments.
Thank you for providing this opportunity to provide input.
- Kathy Kleiman

PROPOSAL TO DNSO WORKING GROUP B
ON DOMAIN NAMES AND FAMOUS MARKS

We, the Undersigned from the Noncommercial Domain Name
Holder's Subcommittee on WG-B, submit the following proposal
which we believe balances the rights of all domain name holders in
the ICANN process --  large and small, noncommercial and
commercial --  with those companies who claim famous mark status
on their trademarks.  
 
Given that:

1. Domain names are the addresses which label the communication
and expression of noncommercial and commercial users (and are
used by those both providing and seeking information online);

2.  The right of open communication for noncommercial and
commercial speech is protected by treaties on human rights and
open communications and ensconced in the founding documents of
the United Nations [1];  

3.  ICANN is a private corporation designed for the technical
management of the domain name system[2],  not for the creation of
new law or policy in the trademark/domain name arena; [3]

4.  While famous marks are set out for protection by the Paris
Convention for the Protection of Industrial Property, this treaty has
not been signed or entered into by some countries who use the
Internet.  Further, its famous mark provisions are not enforced by
some countries who have signed the treaty for lack of a consensus
on and definition of "famous mark" within the treaty; [4]

5.  That the famous mark protection extended by the Paris
Convention is a protection for "industrial property," also known as
commercial property,  and does not speak to the delicate balance
between noncommercial and commercial speech on the Internet;
and

6.  The recognition of Famous Marks in domain names can
impinge on freedom of communication by denying the use of said
famous marks in domain names for political, personal and parody
speech, criticism, and non-trademark use (such as normal use of
last names, generic use of a commodity name, and noncommercial
use).
 

We, the undersigned from the Noncommercial Domain Name
Holder's Subcommittee on WG-B, request that Working Group B
report to the DNSO Names Council and ICANN Board that:  

1. ICANN cannot define what does not exist, namely, ICANN
cannot create the universal definition of a famous mark; the
development of the famous mark definition and protection must be
created by and evolve through sovereign law, treaties, and case law
(courts);

2. ICANN cannot police marks for the commercial community;
ICANN should not create conflict within the Internet community
by adopting broad powers of policing marks which will create a
liability for the private registries and registrars and amount to
taking sides between the noncommercial and commercial
community as to who has better rights to a basic word;  

3.  ICANN cannot administer broad exclusionary policies which
effectively remove common names and words from the root server
databases and deny them, up front, to domain name registrants who
seek to use them for purposes never proven to be confusing or
diluting; and 

4.  As a fiduciary of the Internet Community, ICANN must protect
current and future generations from monopolization of the domain
name space by existing users.

We, the Undersigned, Call Upon Working Group B, the DNSO
Names Council and the ICANN Board to:  

1. Continue registration of domain names on a first-come, first-
served basis;

2.  Provide that trademark owners should continue to be
responsible for policing their industrial property (trademarks and
service marks), in the communication medium of the Internet; 

3.  Decline to impose a new international law of industrial property
and famous marks on the countries which are part of the Internet,
but not a signatory to the industrial property treaties on famous
marks; 

4.  To address the concerns about famous marks with a new and
uniquely technical solution:   the creation of a space in cyberspace
for marks deemed to be famous.   Subject to discussion, this could
be a new gTLD or a second or third level domain attached to an
appropriate international organization (such as WIPO); and 

5. To allow the appropriate international representative of countries
and corporations, to create the criteria for registrations of domain
names within this unique space, and to develop procedures for
resolving the conflicts between marks claiming the same string in
different countries or different specialties of goods and services. 
 
The solution of a special domain name space reserved for famous
marks has additional advantages that we look forward to discussing
with WG-B, the Names Council, ICANN Board, and the public.  It
utilizes the semantic structure of the domain name system to aid
people in navigating the Internet, creates an area that can be
branded and marketed for famous marks, makes famous mark
recognition a positive sum rather than a zero-sum name, and 
provides   without creating new international law   recognition
which companies will find very useful when submitting evidence
in court of "famousness."
  
In summary, we believe our proposal presents a strong option for
WG-B, and one that is consistent with the balance of interests in
the Internet Community and the limited technical scope of ICANN. 
Our proposal also grants special rights and opportunities to the
holders of famous marks and famous domain names.

Mark Perkins
Librarian (acting)
Secretariat of the Pacific Community Library
BP D5, 98848 Noumea Cedex
New Caledonia, South Pacific
Tel: 00 687 262000  Fax: 00 687 263818
email: markp@spc.org.nc / web: http://www.spc.org.nc

Kathryn A. Kleiman, Esq. 
Internet Matters
601 Madison Street, Suite 200
Alexandria, Virginia 22314 USA
KathrynKl@aol.com

Dr. Milton Mueller
Associate Professor,
Syracuse University School of Information Studies
Syracuse NY USA

Dori Kornfeld
Policy Analyst
U.S. Association for Computing Machinery
Washington, DC USA

ENDNOTES

[1] The United Nation's Universal Declaration of Human Rights,
of 1948, adopted a right of communication so broad and
encompassing that its words clearly include the communications
medium of the Internet:  "Everyone has the right to freedom of
opinion and expression; this right includes freedom to hold
opinions without interference and to seek, receive and impart
information and ideas through any media and regardless of
frontiers." Article 19.

With the same vision, the European Human Rights Convention,
written in 1950 and signed by over 21 European countries,
establishes a set of "Fundamental Freedoms which are the
foundation of justice and peace in the world." Chief among these
Freedoms is the right to impart information and ideas: "Everyone
has the right to freedom of expression. This right shall include
freedom to hold opinions and to receive and impart information
and ideas without interference by public authority and regardless of
frontiers. This Article shall not prevent States from requiring the
licensing of broadcasting, television or cinema enterprises." .
Section I, Article 10.

[2] Scope of ICANN, from the MoU between US Dept. of
Commerce and ICANN, November 28, 1998,
http://www.ntia.doc.gov/ntiahome/domainname/icann-memorandu
m.htm: "On June 5, 1998, the DOC published its Statement of
Policy, Management of Internet Names and Addresses, 63 Fed.
Reg. 31741(1998) (Statement of Policy). The Statement of Policy
addressed the ** privatization of the technical management of the
DNS ** in a manner that allows for the development of robust
competition in the management of Internet names and addresses."
[emphasis added.]

[3] An issue constantly kept in mind by the Uniform Dispute
Resolution Policy Ad Hoc Committee was that in drafting the anti-
cybersquatting policy and rules,  we (ICANN and community)
**must not create new laws.** It was agreed that ICANN is not
empowered to create new law, that sovereign countries would
resent the creation of new law by the Corporation, and that courts
would overturn it.  Our success, we felt, lay in applying existing
law to the cybersquatting circumstances.  The same standards and
reasoning would appear to apply even more strongly to the still-
new and fast-changing legal environment around famous marks.
[Note: Kathryn Kleiman, signatory above and a representative to
the Names Council from the Noncommercial Constituency served
on the UDRP Ad Hoc Committee.]

[4]  J. Thomas McCarthy, MCCARTHY ON
TRADEMARKS(West Group, 1999), Sec. 29:62 (noting: "Article
6 bis is not an anti-dilution provision and does not extend to
service marks.  Because the treaty does not define a famous mark,
some countries have been hesitant to enforce protection. If
protection is afforded, the scope of protection may be inconsistent
from one country to another.")