RE: [wg-b] Attached please find the IPC Position Paper Submission

["Hartman, Steve" <HartmanS@Nabisco.com>]

Does your proposal address the standard to be used to determine whether a
domain name sought to be registered is sufficiently close to a mark that has
been deemed famous so as to prevent registration of the domain name?

Steve Hartman
Nabisco, Inc.

> -----Original Message-----
> From:	Michael D. Palage [SMTP:mpalage@ipwarehouse.com]
> Sent:	Wednesday, December 08, 1999 3:34 PM
> To:	wg-b@dnso.org
> Subject:	[wg-b] Attached please find the IPC Position Paper
> Submission
> 
> * Intellectual Property Constituency ("IPC") Submission on Working Group B
> *
> 
> 
> In recognition of the consensus emerging from WG-B's study of Famous Marks
> and Chapter 4 of the WIPO Report, which clearly favors providing a
> mechanism
> for the protection of well-known marks, the IPC expresses its support for
> the efforts and conclusions to date of WG-B's endeavors, and submits to
> WG-B
> for its consideration, the following preliminary recommendations in
> connection with the implementation of a procedure for the protection of
> famous and well-known marks.
> 
> 1)	The IPC recommends the use of the provisions which were adopted by
> the
> WIPO Standing Committee on the Law of Trademarks, Industrial Designs and
> Geographical Indications (SCT) at its Second Session, Second Part, for the
> protection of famous and well-known marks, and which were approved by
> consensus by the General Assembly of WIPO and the Assembly of the Paris
> Union in September 1999.
> 
> WIPO has engaged in a lengthy study of the issue over a number of years,
> involving a significant number of experts from both the government and the
> private sector. The resulting criteria for determining whether a mark is
> famous or well-known, that are contained within the above mentioned
> provisions, are thus the result of extensive international consultation.
> While there is arguably room for further discussion, it is neither
> practical
> nor possible for WG-B to undertake the task of duplicating WIPO's work.
> Accordingly, it is recommended that full possible use be made of the
> considerable effort expended by WIPO to collect and incorporate
> international expert input into its criteria, and that hereinafter the
> focus
> of our efforts should be on formulating a procedure that effectively
> implements the WIPO SCT criteria.
> 
> 2)	The IPC recommends that WIPO or another qualified organization be
> asked
> to consult with the international intellectual property community and
> establish guidelines for the creation of an independent Panel or Panels
> for
> making determinations based on the SCT criteria.
> 
> The IPC does, however, note that WIPO is already known to have the
> requisite
> expertise, willingness, and equally importantly, the financial resources
> and
> existing administrative infrastructure to implement such a process.  WIPO
> could be charged with maintaining the central list of famous and
> well-known
> marks and regularly transmitting, or otherwise making available, the
> panels'
> findings to the appropriate authorities (registrars, registries, ICANN,
> etc.).
> 
> 3)	The IPC recommends that the cost of initiating and carrying through
> the
> process that results in a famous or well-known mark determination should
> be
> borne by the applicant, and that this cost, while not set prohibitively
> high, should be high enough [500 - 1000 USD minimum] in order to prevent
> frivolous and superfluous applications.  The cost of third party
> challenges
> to such determinations are properly borne by the challenger, and should be
> subject to similar considerations.
> 
> 4)	The IPC recommends that consideration be given to the situation that
> results where an applicant successfully registers a famous or well-known
> mark before the Panel has made a determination regarding the respective
> string.  One possible way to avoid this situation could be a requirement
> that new gTLDs may not be introduced until the Panel(s) have had a
> specific
> period of time to consider well-known mark applications, after the
> announcement of intent to add the gTLD(s).
> 
> 5)	The IPC recommends the following mechanism for determination of
> famous
> or well-known status:
> a)	Applicant submits a request  for an exclusion in specified
> gTLD(s), accompanied by appropriate payment, to a Panel.
> b)	Panel(s) meet(s) from time to time on a regular basis (by
> e-mail / telephone) to consider a series of requests.  Determinations of
> the
> Panels shall be based on the WIPO SCT criteria and shall be made, and the
> applicant notified thereof,  within a reasonable amount of time.
> 
> c)	The determination of the Panel in each case shall be posted
> for a specific period on a website administered by WIPO or another
> qualified
> organization for the purpose of opposition by third parties.  Opponents
> shall be required to present evidence to the Panel in support of the
> opposition claim and which is contrary to the Panel's determination.  If
> no
> opposition is made within the specified period, the requested exclusion is
> granted.
> 
> d)	If the requested exclusion is granted, WIPO or another
> qualified organization shall submit the string in question to ICANN, who
> in
> turn shall submit it to the registries.  The registries shall submit same
> to
> the registrars.  A current list of such strings shall be maintained on a
> website administered by WIPO or another qualified organization for this
> purpose.
> 
> If the request is denied, the applicant shall have the right
> to appeal.  The appellate body shall consist of experts gathered by WIPO
> or
> another qualified organization.  None of the panelists on the appellate
> body
> shall be the same as those who sat on the original panel.  The decision of
> the appellate panel shall be final.
> 
> e)	Applications by third parties to register as domain names, strings
> which
> have been granted an exclusion and posted on the current list will
> automatically receive a response to that effect.
> f)	If a third party can demonstrate valid rights in the words
> making up the excluded string and those rights do not unfairly dilute the
> rights of the famous or well-known mark owner, that third party may appeal
> the denial to register the excluded string as a domain name.   The
> appellate
> body shall consist of experts gathered by WIPO or another qualified
> organization.  None of the panelists on the appellate body shall be the
> same
> as those who sat on the original panel.  The decision of the appellate
> panel
> shall be final.
> 
> 
> Submitted by the IPC to WG-B on December 8, 1999.
> 
>