Re: [wg-b] Preliminary Questions

[eileen kent <eileenk@enteract.com>]

Some initial responses to Milton's post. It was thought provoking.
eileen

At 07:08 PM 8/22/99 -0400, Milton Mueller wrote:

>Here are a few thoughts. My comments focus on the economics
>of the exclusion concept--a perspective that is badly needed
>but often ignored in these discussions.
>
>Michael D. Palage wrote:
>
>> Question #1:
>> Should any exclusion be granted indefinitely, or should it have finite
terms
>> with renewal fees/procedures?
>
>Of course it should have finite terms 

Why "of course?" Famous trademarks do not become "un-famous" overnight.
Perhaps "indefinite" is not ideal but if there is a finite term it should
be a -long- one. One should always be able to challenge an exclusion but to
force companies to re-apply every year or so is to promote bureaucracy and
needless expense.


>and of course there should be
>fees--fairlyhigh ones, capable of recovering the full cost of implementing
the
>exclusions and reflecting in some way the opportunity cost imposed
>upon other domain name holders.

I agree that the fees for registering exclusions should fully cover the
cost of implementation.
>
>Indeed, the WIPO report itself advocated as "best practice"
>the following: "that domain name registrations be for a limited period and
>subject to
>the payment of a re-registration fee, and that failure to pay the
>re-registration fee within the time specified in a second notice or reminder
>should result in the cancellation of the registration."
>
>What's good for the goose is good for the gander.
>
>An exclusion is just a variety of domain name registration.
>It reserves a string across all TLDs, albeit without "using" it.
>The DNS doesn't really care whether or how a string is used.
>It just cares whether it's available as a unique string for a new
>address.
>
I hadn’t thought of it in quite this way. The famous mark holders should
have to re-register their domains the same as everyone else. Is there is
really no difference between a domain name registration and an exclusion?
If there's no difference why bother to introduce exclusions? 
>> Question #2:
>>
>> Should the cost in challenging an exclusion be borne solely by the
>> challenging party?
>
>This question could be mooted by my previous suggestion thatthe fees for an
>exclusion be fairly high. If applicants pay something
>close to the true opportunity cost of getting an exclusion, then
>there is no basis for challenging them, any more than their
>domain names could be challenged if they had individually
>registered all the excluded names in all TLDs.
>
>Indeed, one could even allow exemptions to occur by means
>of side payments to the holder of an exclusion. In other words,
>you're a Greek restaurant named Nike and
>you want to get Nike to allow you to register <nike.food>
>Nike says, "fine, we'll sublet you the name for $50 a year."

Nike is a famous mark but shouldn’t it be restricted to the appropriate
trademark categories? Is the I.P. constituency insistent that exclusions be
registered across all new tlds as well as the existent? I can see making an
exclusion across the board for existent open gTLDs because com, net and org
are generic. When you talk about "Nikes" you’re talking about shoes. But if
you opened up the gTLDs and added one called "food" I don’t see how Nike
could be allowed to bar someone with a legitimate interest (such as your
restaurateur) from registering in that category. 
>
>A high fee for exclusion also has the beneficial property of
>imposing a natural limit on overuse of the concept.
>
>If the exclusion fee is low, or if there is no significant,
>recurring fee, then the requirement that the cost of a challenge
>be borne by the challenger is tantamount to the elimination
>of the possibility of any challenge.
I thought that "requirement that the cost of a challenge be borne by the
challenger" was still in contention. Shouldn't the courts provide the
model--award the court costs accordingly rather than arbitarily? 
>
>Look at the simple economics here. Domain name
>registrations are cheap, and if ICANN does its
>job properly, there will be many new TLDs.
>
I'm not sure how ICANN doing its job properly equates to many new TLDs. 

>For most registrants who are likely to bump up against the
>exclusions, the cost of entering a challenge will not compare favorably to
>the cost of seeking out an alternative form of  registration
>that may be less desirable but acceptable.
>
>E.g. the Cadillac Junior High School in Cadillac Michigan wants a
>domain name with Cadillac in it, are they going to register
><cadillac-jhs.newtld>, <cjhs.newtld> or are they going to hire a
>lawyer, convene a WIPO or ICANN proceeding, and pay $X0,000
>to try to get <cadillac.newtld>, perhaps unsuccessfully?
>
Aside: if I were searching for a site devoted to Cadillac cars, I would
search for Cadillac. Cadillac Car is redundant. When you talk about a
Cadillac, you’re not talking about a school in Michigan. If I were to
search for the school, I would search for Cadillac School. That’s a hip
pocket test for whether a trademark deserves to be called famous.
Sometimes, classification comes into it; when you talk about a "Playmate"
it’s possible that you’re talking about a portable cooler or about a
"Playboy Playmate." But if a mark is really famous it means one thing to
most people. Rollex means watch, Rolladex means a circular card file, Nike
is a shoe and Cadillac is a car. 


>(I hope no one is seriously advocating that an exclusion policy
>would also apply to "dash-level domains" or to any domain
>that contains the string. That's just beyond the pale.)
>
>The only case I can think of when challenges might be
>feasible is when a developing-country business becomes
>"famous and well known" in its region and bumps up against
>an exclusion obtained by a western multinational,
>granted before the developing country business became famous.
>
>In that case, ICANN may need to rethink eligibility for the
>exclusion. Again, who should pay the cost for the challenge may
>be less important than making it possible for the contestants to
>enter into bargains among themselves.

Interesting notion. Is it legal? Is it fair? 
>
>
>> Question #3
>> 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.
>
>Very important question. I simply cannot conceive that anyonewould seriously
>advocate that an exclusion be applied to all
>appearances of a string in anywhere in a domain name.
>That would be a monstrous distortion of trademark principles.
>

I’m concerned about this one. So Rollex (for example) would register an
exclusion for rollex.com and one for rollexwatch.com and one for
rollextimepiece.com? Someone could conceivably register myrollex.com
without any problem. Isn't that rather a gaping loophole?

Some "strings" are more problematic than others. Say you determined that
PETA was a famous trademark and it received an across the board exclusion--
what would happen to someone registering boycottgraPETAskforce? (Sorry for
the tortured example--but you know what I mean.) If a logical filter were
employed, they would be refused their -right- to register the name. They
should be able to challenge the refusal at no cost. But the other danger is
that they would not bother to challenge (as you noted). That makes the
process subject to capture and could chill free speech. And what about
parody--another important aspect of free speech?

 This is a typical "damned if you do and damned if you don’t." What gets
excluded--the string or just the self-contained string?

>> Question #4
>> Should WIPO serve as the centralized administrative authority to handle the
>> exclusion of famous and well-known marks from the root?
>
>I agree that ICANN is a more suitable home for the exclusionprocess, because
>there would have to be tight integration between
>DNS administration, registrars, registries, and the exclusion process
>to make the exclusions effective.
>
>This approach flows logically from my view of exclusions
>as nothing more than a class domain name registration
>for which a high price would be charged. ICANN is in the
>domain name administration business, WIPO is not.
>WIPO's role, at most, is to rule on what names qualify as
>"famous."
>
I believe the major consideration as to who arbitrates is a matter of cost.
Could WIPO take on the role cost efficiently? I heard it discussed in
Santiago whether the market could dictate price for arbitration. Does the
list have thoughts on that?

>> Question #5
>>
>> How does the non-retroactivity provision contained in Paragraph 276 effect
>> transfers between third parties?
>> Comments:
>> Would this exclusion be transferable? Or would this retroactive effect only
>> apply only to the original registrant. This needs to be clarified.
>
>Yes, it does need to be clarified. I think as a practical matterthe
>grandfathering needs to be perpetual, because too many
>companies have non-transferable equity in domain names.
>
>> Question #6
>>
>> Is the evidentiary presumption contained in Paragraphs 288 through 291
>> necessary?
>
>It dangerously undercuts the attempt to limit ADR to "abusive
registrations."We
>know from prior trademark-domain name litigation that aggressive
>TM holders can and do construe any similarity as damaging.
>
>Furthermore, the whole idea that famous mark holders need to be
>"protected" from "damage" done by domain names that are close
>misspellings, is based on the false assumption that domain names
>are a primary tool for navigating the net. They are not, and their
>use in this capacity will continue to decline.
>
>
I believe that domain names are a primary tool for navigating the net. 

>> 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?
>
>Another good question. Here we need to consult with
>people in the industry who are more familiar with the practical
>issues.
>
>Michael's comments point toward ways of making an exclusion policy
>more reasonable and have much to commend them.
>One should not construe my comments upon Michael's statements
>to mean that I accept either the necessity or the legality of DNS exclusions.
>
Well taken. I’m not quite sure where I stand on the necessity or legality
of DNS exclusions—there’s an awful lot to consider. And one of the biggest
considerations is whether exclusions end up being meaningless because of
the need to protect free speech. I heard the statement made in Santiago
that INTA (among others presumably) would stand in the way of new gtlds
unless famous marks were satisfactorily protected and presumably that means
exclusions must be given. Does INTA have that much influence in this
process? I’m curious about that. 

For the record, I favor protecting famous marks on the Internet but I am
cynical about how that can be accomplished. Similarly, I favor trying to
insulate children from exposure to the worst elements in society but I'm
cynical about using filters to accomplish that. There are principles to be
upheld but pragmatically, just how do we do that?


eileen kent
http://www.eileenkent.com