[wg-b] ICANN - Working Group B (UPDATE)

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

Please read this e-mail in its entirety as it contains important information
regarding Working Group B's mission. Included in this e-mail are proposed
issues that should be addressed in the position/comment  papers and the
timeline for this Working Group's event milestones.

First I would like to welcome all the new participants on the Working Group
B list. The list now has over 80 participants. As the list continues to grow
in size and in diversity of viewpoints I strongly encourage everyone to
continue to act in a professional manner.

As a result of a large influx of multi-national corporations and
intellectual property attorneys from the LA meetings, I am currently working
with representatives from the US Small Business Administration, Eric Menge
and Terry Biddens to increase participation from small businesses both in
the US and from abroad.  I believe that the legitimacy of this Working Group
is dependent upon input from a true cross-section of the Internet community.
I encourage everyone to continue to find individuals and/or organizations
that may not adequately have their interests currently represented.

Listed below are several issues that I believe participants might want to
address in their position papers.  This list is not meant to be exhaustive,
but was complied after several people commented that they did not have the
time or the resources to prepare detailed position papers. This list is
intended to function as a check list of hot button issues that an
individual/organization could respond to with a one or two paragraph reply.
The purpose, as always, is to increase participation and gauge true
consensus.

At the end of this list  I have included a list of milestones for this
Working Group's activity. November 17th is the proposed cut-off date for
position papers.


Issue #1:
Should the factors used in determining what constitutes a famous mark be (1)
objective, i.e. trademark registrations in X number of countries, X number
of documented cybersquatting incidents, etc. (2) subjective, i.e. the
criteria as currently contained in the WIPO report or (3) a combination of
both objective and subjective criteria.

In LA there appeared to be rough consensus to use the combination approach.

Issue #1-A
If you agree that X documented number of cybersquatting incidents can be
proof of a famous mark, how many alleged infringements must be documented,
hundreds, thousands? Moreover, should there be a sliding scale as more gTLDs
are added to the root?

Issue #1-B
How many country trademark registrations would you suggest is indicative, of
a famous mark?

For those large multi-national corporations participating on the list could
you please provide the number of countries that you have your core
trademarks registered in?

I encourage the large multinational corporations to provide as much detail
as possible in connection with the alleged number of cybersquatter incidents
and the number of countries which you have sought trademark protection. What
this information allows "us" to do is to evaluate the issues with some
baseline of information, instead of the abstract vacuum that we are
currently operating in.

Issue #2
Should there be sub-string protection? See my original Question #3 contained
in my Preliminary Questions post:
http://www.dnso.org/wgroups/wg-b/Archives/msg00021.html. There has been
extensive discussion on the list with regard to the Pandora's Box of legal
and technical issues that are created with sub-string protection. I
encourage all participants (new and old) to review the previous posts
contained at http://www.dnso.org/wgroups/wg-b/Archives/ for this rather
detailed discussion.


Issue #2-A
If you support sub-string protection for famous marks please focus on the
potential fair use and First Amendment issues that this would raise. For
example, if a sub-string filter was deployed for the mark Olympic, how would
you handle a potential registration for StopOlympicFraud.com?

(Note #1: As Amadeu always reminds me fair use and the First Amendment have
little meaning outside the US. If there are any non-US trademark attorneys
participating on this list, any insight on this issue from a non-American
viewpoint it would be greatly appreciated)

(Note #2: Dave Wilson who is a participant on this list represents the US
Olympic Committee. I used this example neither to advocate nor condone the
USOC's position in the working group, but because it shows the complexity of
the issues before us. Dave has informed me that that USOC has had to defend
over 5000 domain name disputes involving the Olympic trademarks. This legal
activity has diverted funds from the USOC's primary focus, training
athletes. Any proposed projectionist mechanisms must be carefully thought
out to properly conduct a cost benefit analysis.)

Issue #2-B
If you support a neutral third party notification to a domain name
registrant, as advanced by several members on this list, should this
notification be provided before or after the registration? Could you please
include some sample language in proposed notification.

Issue #3

Should there be an exclusion process or a right of first refusal involving
famous marks and new domain names? For those participants that have recently
joined the list, I encourage you to read the archives for a detailed
discussion involving the right of first refusal that was granted to 800
telephone number owners when the 888 exchange was added and how this right
of first refusal was denied in connection with the 877 exchange expansion.

If you support exclusion as contained in Paragraph 276 of the WIPO report,
please address whether this exclusion should be granted indefinitely, or
should it have finite terms with renewal fees/procedures. If you support the
proposition that the exclusion should be indefinite, what safeguards should
be adopted to prevent against the abuse of the famous trademark process,
i.e. 100,000 marks entitled to famous trademark protect within two years.

In dealing with exclusions, people have advocated placing a high fee on
famous trademark applications. Unlike the right of first refusal that allows
registration authorities to be compensated, how do you intend to compensate
registration authorities for the costs associated with filtering? In
addition, how should a registration authority be indemnified for any legal
challenges connected with its refusal to registrar a mark?  For US
registration authorities this may be less of a concern with the pending
legislation in Congress, however, I would like to hear from any non-US
registration authorities about their concern.

Issue #4
How should the costs be allocated involving third party challenges to a
famous trademark applications, exclusions, or right of first refusals?

Issue #5
Should WIPO serve as the centralized administrative authority to handle
famous trademark classifications? In Paragraph 279 of the report it states
that it should serve as the sole authority in connection with these matters.

Issue #6
If you adopt an exclusionary model where does the ultimate responsibility
rest, the registrar or the registry?

Issue #7
Should there be a testbed period for the roll-out of one new commercial gTLD
to see how any proposed famous trademark safeguards work? This testbed gTLD
could also serve the function to see how other non-famous trademark
interests are impacted. I understand that the roll-out of new gTLD is within
the scope of Working Group C, however, several people have advocated putting
this statement in our report so that Working Group C could consider it.

Issue #8 (Formerly Question #5 in my Preliminary Question Post)
How does the non-retroactivity provision contained in Paragraph 276 effect
transfer between third parties.

TIMELINE:

Now to Nov. 17th - a three week position statement period. We have consensus
on mechanisms now we must put these mechanisms down on paper to look at the
strengths and weaknesses.

Nov. 17th to Dec 1st - a two week comment period.

Dec 2nd through the 5th - Formulation of questionnaire/survey to identify
points of consensus and point of contention.

Dec 6th through the 10th - Voting on these issues

Dec 11th through the 18th - Co-chairs prepare draft report for group
comments

Dec 19th through 26th - Comments on the draft report

Dec 27th through Dec 31st -  Submission of Interim report to the Names
Counsel


ADDITIONAL QUESTIONS:

How many people contemplate that they will be submitting a position paper or
a comment paper to the above issues?

Does anyone believe that more time is necessary?

If anyone has any questions or comments please do not hesitate to contact me
via e-mail or phone (561) 741-7880.

Best regards,

Michael D. Palage