Re: [wg-b] Preliminary Questions

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

>>to me, a lay person, the idea of protecting 'famous' names seems utterly
>>unfounded.  could someone please explain why the internet should be offering
>>protections to coca cola which go beyond what they currently have in the
law?
>Famous marks are protected by the Paris convention and the TRIPS agrement; 
>international law recognizes them, so it's a question of setting up 
>mechanisms to protect the rights they already have.
>
>However, in the absence of any ruling by any legal body anywhere that a 
>certain trademark is "internationally famous", I think it's preposterous 
>that ICANN or any body associated with it should take on the role of 
>deciding, FOR THE FIRST TIME IN HISTORY, whether a trademark is 
>"internationally famous" or not.
>
>I think we have an *excellent* excuse for delay and inaction on this issue, 
>and that ICANN should grab that excuse eagerly.
>

The following is not intended to be a defense of the WIPO exclusion process
- but an attemtp to clear up what I believe as some erroneous factual
assumptions.  

As acknowledged by the first poster, protection of famous marks is a treaty
obligation of signatories to the TRIPS agreement (and that's your country
and mine).

Existing law is always being applied to new fact patterns - I would not
characterize this process as "the internet ofering protection . . .beyond
what they currently have in the law", but as the application of existing
law to the Internet.  I think the burden should be on those who wish to
argue why the domain name process SHOULDN'T be in accord with international
law.  Because it's difficult to apply isn't a good reason - we have had
complex multi-jurisdictional fact patterns since the first Phoenician had a
dispute with the first Greek (or perhaps it was a shady Polynesian in an
outrigger), and the law has adapted to resolve such disputes.

As for whether a body has ever decided that a mark is internationally
famous, that is actually often a holding in a famous mark case.  A tribunal
will make a two-part finding - that the mark has an international
reputation, and that that reputation has extended to the jurisdiction in
question such that the mark should be protected.  So a tribunal would not
be making decisions for the first time in history in all caps.

As for the argument in favor of delay and inaction - I understand that you
probably did not intend to be interpreted literally - but no, arguments
against famous mark exclusion are arguments against the exclusion - they
are not arguments in favor of delay and inaction. If you want to vote no,
vote no.

As for delay and inaction, bear in mind the interplay between working
groups A, B and C.  There is a posting today in WG-C which states one view
quite clearly - if there are adequate safeguards against piracy, then the
number of new gTLDs becomes less important.  If there aren't adequate
safeguards, then the number of new gTLDs should be zero.

I concur in that view.




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