[wg-b] Pay for it

[Milton Mueller <mueller@syr.edu>]

I agree that the case for some kind of special policy is much stronger with coined and unique names that are globally famous. Indeed, domain names that are identical to uniquely coined names are the only cases for which exclusions are even conceivable, in my opinion.

I cannot however escape the nagging sense that concepts of fame are culturally specific and often merely local. I have never heard of Perrier-Jouet; I have no idea what it is. I suspect that emerging economies will lose out badly in any exclusions process. Statements, such as the one below, that "all of you will have instantly recognized" this or that assume a knowledge of English and participation in Western culture and are, I am afraid, a bit parochial in their application. The fact that 90% of the people on this list are from North America only
reinforces my point.

All of this becomes a lot more rational if anyone applying for an exclusion is required to pay, on an annual basis, something approximating the economic value of an exclusion. I do not just mean the so-called "cost" of the process of determining whether it is "AUFM," and not just the operational costs imposed on registries, but also the opportunity cost of the exclusion itself. By that I mean something approximating the market value of a global domain name reservation across all TLDs. I cannot conceive of this being below the high six-figures, annually.
It is an extraordinarily valuable right. It confers economic benefits that may or may not have been earned by the mark holder's fame.

Paying for the privilege (it cannot be considered a right, for there is no universally applicable law) reduces greatly the chances of abuse. Applicants for exclusions will have a much more rational economic calculation to make. The right of exclusion, if it is to exist at all (and I am not convinced that it should) must be rationed by price.

--MM

peter.weiss@chanelusa.com wrote:

> As my first contribution to this stimulating debate, let me say that defining what constitutes a famous trademark is neither the easiest nor the most difficult task in the world. I believe with Fred Mostert that "a common set of principles, in effect a ius gentium, has developed around famous and well-known marks, which can serve as a basis for a harmonized global approach in conformity
> with the needs of contemporary commerce." Anyone wanting to know what that common set of principles is needs only to do a quick run through the 700 pages of Fred's encyclopaedic work. (Mostert, Famous and Well-Known Marks, Butterworths, 1997).
>
> I am not particularly intrigued by the difference between famous and well-known marks or, for that matter, marks of high repute, but I suggest that, for our purposes, we might look at a fourth category, i.e. absolutely unique famous marks (AUFMs). Here's a quick and totally non-exhaustive list: COCA-COLA, PEPSI-COLA, MERCEDES BENZ, CHANEL, PERRIER-JOUET, KODAK, EXXON, TEXACO, THENEWYORKTIMES. All of you will instantly have recognized what these marks have
> in common: The fact that no one could possible have a valid good faith claim against any of them. Oh sure, somebody could legitimately claim COLA or MERCEDES
> (a woman's surname and a town in Uruguay) or PERRIER (a different product), but not COCA-COLA, PEPSI-COLA, MERCEDES BENZ or PERRIER JOUET. So a WIPO type exclusionary policy does not seem to me to be either unfair or unworkable with respect to AUFMs. Individual Registrars, of course, should not be saddled with the problem of deciding what is and what isn't an AUFM; that could be done by a group of experts appointed by WIPO, who shouldn't have to spend more than a day and half coming up with a preliminary list, including one reception and two lunches.
>
> This, of course, does not mean that other famous marks which lack the quality of
> absolute uniqueness should not be entitled to protection. We all know about MCDONALDS, TIME, FORD, WARNER, MOBIL and other famous marks with multiple meanings. Those, I would suggest, should benefit from UDR, notification and whatever else we or the ultimate decision makers may come up with. In the meantime, the lives of present and future Registrars could be made a little easier by the adoption of an AUFM approach.
>
> Do I have any thoughts on how to reach consensus? Not today, thank you. That's a
> really difficult problem. Peter Weiss
>
> ______________________________ Reply Separator _________________________________
> Subject: [wg-b] Famous Trademarks Author:  mpalage@infonetworks.com at INTERNET
> Date:    9/24/99 2:40 PM
>
> I will be the first to admit that defining what constitutes a famous
> trademark is not an easy task. But I do not believe that it is impossible.
> I encourage people to look at Section 1205 of the Trademark Manual of
> Examining Procedure -Refusal on Basis of Matter Protected by Statute or
> Convention (available at http://www.uspto.gov). This sections contains a
> list of marks that have been protected under US Federal Statutes and those
> already the subject of international agreements in force, (e.g., "Red Cross"
> and emblems protected by the Geneva Convention of August 12, 1949).
>
> In addition, the Japanese government has recently enacted legislation
> recognizing "famous marks." If you go to the Japanese web site they provide
> a web enabled search engine to look through all 700+ famous trademarks. Yes
> I was surprised that there were this many famous marks in Japan. And yes
> there were several marks in the first few that I paged through that I did
> not recognize. But then again I have only been to Japan once.
>
> I just thought that this was some additional useful information to be
> considered by all participants involved.
>
> Has anyone been able to follow up with the Brazilian NIC concerning their
> policy on protecting famous marks. I believe the information provided by
> Judith on the 800 number was beneficial, and I would like to continue the
> investigative process to make sure that we leave no stone unturned.
>
> Thanks again,
>
> Mike