[wg-b] Preliminary Questions

["Michael D. Palage" <mpalage@infonetworks.com>]

Listed below are some initial questions that I believe this working group
should address. This is not meant to be an exhaustive list, but only a
preliminary list for this group to begin discussions.

For the benefit of those participants that do not have Chapter 4 of the WIPO
readily handy, it can be accessed online at the following location.
http://wipo2.wipo.int/process/eng/final/FinalReport_4.html#CH4

 Both Jonathan Cohen and myself will be in Santiago, Chile next week. Anyone
else from this working group that will be there please notify either
Jonathan or myself so that we can possibly arrange an informal meeting.

Several new participants have joined this working group in the last couple
of days. For the benefit of the rest of the group, it would be helpful if
you would post a brief biography to the list. In addition, the working group
is looking to diversify the composition of the participants to include
individuals from outside of North America.

Best regards,

Michael D. Palage


Question #1:

Should any exclusion be granted indefinitely, or should it have finite terms
with renewal fees/procedures? Please refer to Paragraph 276 of the WIPO
report:

An exclusion would be granted in respect of either some or all open gTLDs
and would be granted indefinitely.

Comments:
I believe it is not proper to grant an indefinite exclusion for famous marks
from the root, as any trademark owner may lose their rights over time.  For
example, under US trademark law there are fixed renewal periods and costs
for a trademark registration, even for famous trademarks. [Any comment on
trademark renewal procedures/periods outside the US would be welcome].
Although there is currently a mechanism by which a third party could
challenge an exclusion from the root, all costs associated with this
challenge must be borne by the third party.  I believe it is unwise to allow
a trademark owner to reap this substantial benefit for in essence a one time
administrative fee. Perhaps a fixed renewal period should be used.

Question #2:

Should the cost in challenging an exclusion be borne solely by the
challenging party?

Please refer to Paragraph 276 of the WIPO report:

In the case of applications brought by third parties to cancel an exclusion,
it is suggested that the costs of the procedure be borne by that third
party.

Comments:
Further to my comments contained in Question #1, it is not prudent to grant
a trademark owner an indefinite exclusionary right for what in essence
amounts to a one-time administrative fee. Although there needs to be
safeguards to protect a trademark owner from having to defend frivolous
challenges, I believe that good faith challenges may be chilled if the third
party challenger must bear the entire cost of the proceedings. I believe
that an apportionment of costs, perhaps 50/50 with a provision awarding cost
in frivolous cases, is the most equitable solution.

Question #3

What is the scope of the following clause contained in Paragraph 276 of the
WIPO report:

The exclusion would be granted only in relation to a string that is
identical to the famous or well-know mark.

Comments:
Does the use of the term "string" instead of domain name suggest that
registration authorities will be required to install logical filters instead
of just employing a black list of prohibited domain names. For example, if
the trademark WIDGET was granted exclusionary status would this
automatically prohibit the registration of the following SLDs: USED-WIDGETS,
WIDGETFORSALE; REFUBISHEDWIDGETS, etc.  If the answer to this question is
yes, then this raises serious concerns regarding trademark fair use under US
law.  Any comment on other countries law with regard to fair use of another
trademark greatly welcomed.

Question #4

Should WIPO serve as the centralized administrative authority to handle the
exclusion of famous and well-known marks from the root?

See Paragraph 279 of the WIPO report.

... it is considered that there are distinct advantages in centralization of
the administration mechanism for obtaining and enforcing exclusions for
eligible famous and well-known marks.

WIPO would, consistent with its mandate, be available to provide the
centralized administration of the mechanism.

Comments:
I believe that any centralized administration must reside within the ICANN
organization, preferably as a DNSO standing committee.  This ICANN entity
would be tasked with selecting qualified candidates from among the various
accredited dispute providers.

Question #5

How does the non-retroactivity provision contained in Paragraph 276 effect
transfers between third parties?

Finally, exclusions that are granted under the mechanism would not have any
retroactive effect, i.e. if a party had registered a string as a domain name
in relation to which an exclusion is later granted to another party, the
first party's domain name would remain unaffected by the exclusion

Comments:
Would this exclusion be transferable? Or would this retroactive effect only
apply only to the original registrant. This needs to be clarified.

Question #6

Is the evidentiary presumption contained in Paragraphs 288 through 291
necessary?

Comments:
This presumption on its face appears to be unnecessarily extending the
rights of trademark owners to the detriment of Internet users.  This
provision appears to be a melding of trademark infringement and dilution
principles that, under US law, extends the rights of trademarks owners well
beyond existing law.


Question #7

Where does the ultimately responsible rest in making sure that an excluded
domain name is not registered? With the registry or the registrar?