[wg-b] Position paper from Harald Alvestrand

[Harald Tveit Alvestrand <Harald@alvestrand.no>]

A position paper that I think could be the basis for a reasonable policy is 
now available.

Copy attached below; it can also be found at
http://www.alvestrand.no/ietf/famous-marks-position.txt

                   Harald T. Alvestrand

ICANN DNSO WG-B POSITION PAPER

ON FAMOUS MARKS AND HOW TO MINIMIZE THE DAMAGE FROM THEM
--------------------------------------------------------
Harald Tveit Alvestrand, ACM member

Background:

  The chair of WG-B has asked for position papers on the issues before the group.
  In a poll of the group just before the LA ICANN meeting, the group polled in favour of creating some kind of protection for famous marks.
  This position paper is intended to suggest how this could be done while minimizing the damage that this causes to other users of domain names on the Internet.
  It is also intended to suggest, as far as possible, reasonable mechanisms for implementation of such a policy.
  
About the authors:
  Harald Alvestrand is a long term player in the Internet process, and a member of WIPO's panel of experts during the WIPO project creating the Final Report on Trademarks and Domain Names. 
  He is a firm believer in the theory that reasonable arguments, no matter what their source, will stand on their own, and that having a correct decision being made is more important to all parties than to have the position advanced by a particular group being accepted.
  This position paper is therefore offered to the community as a starting position for discussion, and no attempt to seek previous blessing from any organization for it has been done.

INTRODUCTION
------------
The setting of rules for protection of famous marks in the domain name system has two purposes:

- To limit the damage to famous mark holders because of illegal use of the famous
  marks as domain names
- To minimize the likelihood that famous marks will be used to monopolize basic words
  and restrict speech and legitimate domain name uses 
  
The suggested mechanisms described below are intended to faciliate such a fair balance.

SCOPE
-----
In judging whether the use of a domain name infringes upon a famous mark or not, not only the domain name, but also its context, must be taken into account.
The mechanisms below are believed to be relevant for global top level domains (GTLDs) that are open to any registrants including business entities.
These are referred to later as "open GTLDs".

They are not believed applicable to:

- Country-code domains (ccTLDs), where national laws will apply
- Closed or restricted domains, such as .edu, .gov, .mil or proposed special-purpose
  namespaces like ".nom" (personnames), which will have other rules.


ISSUE #1: DEFINITION OF A FAMOUS MARK
-------------------------------------
The term "famous mark" is ultimately a legal creation of two international agreements: The Paris Convention and the TRIPS agreement.

Its definition must therefore be grounded in these two documents, and no other place.
However, the ongoing process of further defining this term has not been progressing rapidly, and therefore ICANN has been asked to undertake protection of these marks in advance of their rigorous definition.

We therefore suggest a two-pronged approach:

1) ICANN will declare that the ultimate definition of "famous mark" in the domain name context will be that of word marks accepted by relevant international agreements under the TRIPS agreement, and that when such a list exists, ICANN will no longer make decisions on which marks to protect under the "famous mark" rule.
At that time, ICANN will also reevaluate the rules below to take into account the ramifications of the practices worked out under the TRIPS agreement.

2) ICANN will ask WIPO to prepare a list of no less than ten and no more than a hundred word marks that are deemed to be "clearly famous", on or before July 1, 2000.
It is believed that WIPO has greater expertise in determining "famousness" than ICANN or its constituent bodies has, and therefore it is not appropirate for ICANN to give guidance to WIPO in this process, which renders the question of ICANN deciding on criteria moot.

The marks on the list will be registered as domain names under the domain "famous-marks.icann.org", so that they are easily accessible to all interested parties.

The temporary list will be renewed by WIPO no more often than every 6 months.



ISSUE #2: PROTECTION GIVEN TO FAMOUS MARKS
------------------------------------------

Once the list of word marks is published, the ICANN policy documents and registrar agreements will be amended as necessary to show the following policies:

- In all ICANN-controlled open GTLD registries, the exact string of the word mark, if
  not previously registered, is registered to the owner of the famous mark.
  If the mark owner does not want to or is unable to use the domain, it will be appropriately pointed to a site giving information that the domain is intentionally not being used.
- The same protection is given to any string derived from the original by:
  - Replacing spaces with dashes
  - Removing spaces or dashes
  No protection is given to names containing the mark as a substring, or close variations of the mark.
- In the case that a protected string has been registered in an open GTLD previous
  to the implementation of this policy, the matter is handled under the standard UDR policy.
  No enforced cancellation is done.
  
This concludes the position paper's mechanism description.
The following paragraphs address specific questions raised by the WG-B chair.

ISSUE #2-B Neutral notification
-------------------------------
Given that the authors believe that extending protection of a famous mark to domain names containting that mark as a substring, the authors do not think that any such remedy is needed.
However, this has been a bone of contention in the past; if such an addition 

- When a domain name is registered that contains a protected name as a substring,
  the note given below, or a translation of it, is sent to the domain name holder,
  with a copy to the rights holder's contact email.
  No further action is taken by the registrar.
  
EXAMPLE INFORMATIVE NOTICE
--------------------------------------------------------
To: domain name holder
From: registrar
Cc: famous mark holder

Dear registrant,
your domain name has been registered.

However, our automatic processing has noted that the name you registered,
<containsMARK>, contains the string <MARK>, which is on the ICANN list of
Famous Marks (see http://www.icann.org/famous-marks-info.html for details).

There are many legitimate uses of such names, and many cases where the owner
of <MARK> will not worry about your usage. If there is reason for the owner of
<MARK>, <markholder>, to take action, you will be contacted directly by them.
This message is only sent to you to inform you that this situation exists.

---------------------------------------------------------


ISSUE #3: FAMOUS MARKS AND NEW DOMAINS
--------------------------------------
Whenever new open GTLDs (see definition at top) are created, the list of famous marks is automatically registered by the registry according to the guidelines above.
No further action is taken.

ISSUE #4: COST OF PROCESS
-------------------------
The cost of the process described above is very low to ICANN and the registries, as long as they do not have to bear the cost of legal challenges.

Keeping the number of famous marks very low will help keep the risk of litigation low, since there should not be much to challenge; keeping all but 

The cost of the WIPO process to determine the list should be covered by means outside the cash flow of ICANN; a likely scenario is that organizations wishing to have a name considered for inclusion on the list pay a fee that finances the decision process, while those whose name ends up on the list pay a fee that finances the maintenance and likely challenge costs, on a 6-month basis.

Challenges to the legitimacy of the WIPO list are harder to settle, and need further discussion.

ISSUE #5: WIPO AUTHORITY
------------------------
As mentioned above, the permanent authority for famous mark judgment is yet to be established. In the interim, no more competent body than WIPO has been identified for this work. Until such a more competent body is identified, the decision should be to let WIPO do it, within an absolute size requirement set by ICANN for the interim list.

ISSUE #6: Ultimate responsibility
---------------------------------
The ultimate responsibility for making the decision to exclude rests with ICANN.
The registrars and the registries are acting under contractual obligation.

Issue #7: Testbed GTLD
----------------------
The number of new TLDs opened in the first months of this regime should be small, so that it is possible to evaluate the results while still having the possibility to change the policy.
--
Harald Tveit Alvestrand, Maxware, Norway
Harald.Alvestrand@maxware.no