[wg-b] FW: Twentieth Century Fox Comments Re Famous Marks Protection onthe Internet

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

Listed below is Twentieth Century Fox Film Corporation's Comments Regarding
Protection of Famous Marks on the Internet. It will be posted to a web site
shortly with all the other position papers that are received. Any individual
or organization that would like to file a revised position paper is welcomed
to do so.

Mike


-----Original Message-----
From:	FOX INET [mailto:FOXINET@fox.com]
Sent:	Wednesday, November 17, 1999 11:09 PM
To:	mpalage@infonetworks.com
Subject:	Twentieth Century Fox Comments Re Famous Marks Protection onthe
Internet

VIA E-MAIL and FACSIMILE
mpalage@infonetworks.com
(561) 741-7881

November 17, 1999

Michael Palage
Chairman, Working Group B
ICANN


Re:	Twentieth Century Fox Film Corporation's Comments Regarding
	Protection of Famous Marks on the Internet
	Submitted to Working Group B * November 17, 1999

Dear Mr. Palage:

Twentieth Century Fox Film Corporation ("Twentieth Century Fox") appreciates
the opportunity to submit this position paper on famous trademark
protection, and thanks the participants in ICANN's Working Group B, in
advance, for their consideration of these comments.
Twentieth Century Fox is a leading entertainment company and the producer,
owner and/or distributor of motion picture and television programming for
exploitation in various media, and the owner of internationally famous
trademarks and service marks.  Twentieth Century Fox recognizes that the
protection of trademarks used as domain names raises a number of competing
concerns, and that the domain name system must fairly balance the rights of
trademark owners and those engaged in the fair use of common terms as online
addresses.  Notwithstanding the foregoing, the considerations to be balanced
are more clear cut with respect to the most famous and well-known
trademarks.
Courts in the United States and other jurisdictions have recognized that
consumers assume that information about a company will be located at
<companyname>.COM.  This presumption by consumers is greatly increased if
the company is identified by an internationally famous trademark.
Similarly, consumers assume that information about a film or television
property, or product incorporating or relating to the same, will be located
at <propertytitle>.com.  Registration of a domain name that incorporates a
trademark by anyone other than the trademark owner certainly causes consumer
confusion and dilutes the value of the trademark as a source identifier.
Twentieth Century Fox and other owners of famous trademarks have had their
famous trademarks, and variations thereof, registered as domain names by
cybersquatters, resulting in consumer confusion and dilution.  Through
registrations that simulate famous trademarks, cybersquatters frequently
attempt to extort money from rightful trademark owners and/or commercially
exploit the value of the famous marks by either (i) selling unauthorized and
infringing merchandise, relating to or bearing the famous mark, or (ii)
pointing confused consumers toward unrelated business sites or even
pornographic sites.  Courts have recognized that cybersquatting clearly
violates trademark rights, and have issued mandatory injunctive relief
requiring cybersquatters to return hostage domain names to their rightful
trademark owners. However, actions by the court system have not served to
deter bad faith registrations by cybersquatters.  Furthermore, such actions
are time consuming and expensive for the owners of famous marks.   All the
while, cybersquatters continue to benefit from their predatory activities.
Twentieth Century Fox has been the frequent victim of domain name pirates,
in spite of its consistent efforts to enforce its rights.  During the past
two years alone, Twentieth Century Fox became aware of over 200 domain names
that simulate trademarks owned by and registered to Twentieth Century Fox.
As a result, Twentieth Century Fox has been forced to devote tens of
thousands of dollars to combat this bad faith conduct, through the delivery
of countless demand letters, as well as the investment of significant time
and effort by its personnel in the recovery of domain names from
cybersquatters.
Since 1935, Twentieth Century Fox has undertaken a worldwide trademark
registration program for its internationally famous trademarks TWENTIETH
CENTURY FOX and 20TH CENTURY FOX that has resulted in over 900 trademark
registrations in over 120 different countries.  Similarly, since 1993,
Twentieth Century Fox has filed more than 300 trademark applications in over
75 countries for its internationally famous trademark THE X-FILES.  These
marks are strongly associated with Twentieth Century Fox by the public.
Cybersquatters have attempted to trade off of the fame of these trademarks
through domain name registrations incorporating every possible permutation
of these marks, using misspellings and hyphenations, in available TLDs.  A
non-exhaustive list of infringing .COM gTLD domain name registrations
include TWENTITHCENTURYFOX.COM, 20CENTURYFOX.COM, 20THFOX.COM,
TWENTIETHFOX.COM, THEXFILES.COM, THE-X-FILES.COM, X-FILES.COM, and
XFILES.COM.  These and other famous trademarks have also been registered as
domain names by cybersquatters in many permutations in the .NET and .ORG
gTLDs, including but not limited to, TWENTIETHCENTURYFOX.NET,
20THCENTURYFOX.ORG, 20THCENTURYFOX.NET, THE-X-FILES.NET, THE-X-FILES.ORG,
THEXFILES.NET, THEXFILES.ORG, XFILES.NET, X-FILES.NET, X-FILES.ORG.  Some of
these domain names have been recovered for Twentieth Century Fox; the others
are subject to current recovery efforts.
To the extent possible, Twentieth Century Fox has requested that Network
Solutions provide relief against the repeated cybersquatting of its famous
trademarks through its domain name dispute policy, but many of the domain
names listed above fall outside the reach of Network Solutions' policy.  As
will be noted from the fact that the examples listed above only relate to
gTLDs customarily associated with InterNIC's registrations, this problem is,
and will only be, further compounded in each jurisdiction that has its own
national domain name registry system.
With the pending expansion of the domain name system to include new gTLDs,
ICANN has an opportunity to provide relief for consumers and trademark
owners from the confusion and dilution that will inevitably result if
cybersquatters are allowed to roam unchecked through another gTLD.
Twentieth Century Fox urges ICANN to provide owners of famous trademarks the
opportunity to exclude famous trademarks from registration as domain names
in any new gTLDs that ICANN may introduce.  An exclusion procedure would
prevent the repeated infringement, and ongoing bad faith extortionist
activity, that have surrounded internationally famous trademarks in the
.COM, .ORG, and .NET gTLDs.
Of course, because there are competing rights and interests in many
trademarks (i.e. UNITED for airlines and for van lines), the majority of
domain name disputes should still be resolved pursuant to ICANN's dispute
resolution policy and/or determinations by a court of competent
jurisdiction.  Twentieth Century Fox recommends that the exclusion procedure
should be available only to rights owners who can demonstrate that their
trademark meets the standards for famous marks that have been agreed upon by
various legislative bodies and international organizations, such as WIPO.
As a recommendation, Twentieth Century Fox encourages the use of at least
three of the following eleven factors as criteria for determining that a
famous mark is entitled to domain name protection:
* The duration, extent and geographical area of the use of the trademark;
* The duration, geographical area and number of registrations owned by the
trademark owner for the relevant trademark.  The owner's efforts to register
the mark worldwide would evidence the mark's reputation and reach.
Twentieth Century Fox proposes that the ownership of 50 current or pending
registrations worldwide and/or current or pending registrations in 50
different countries (with countries in the European Community counted
separately in connection with current or pending Community Trademark (CTM)
registrations) may be an appropriate benchmark in determining that a mark is
famous;
* The duration, extent and geographical area of advertising, promotion, and
publicity accorded to the mark.  For example, evidence of exposure of people
to the mark through television, the circulation of international magazines,
the Internet, as well as promotional activities could be considered, because
such advertising can expand the reputation of a famous mark beyond the area
in which a mark is first actually used in connection with goods or services;
* The duration, extent and geographical area of the use of the trademark;
The extent of revenue generated by and associated with use of the trademark;
* The extent to which the mark has been recognized as well-known or famous
by competent authorities or via rankings or surveys prepared by unaffiliated
third parties;
* The degree of inherent or acquired distinctiveness of the mark;
* The degree of exclusivity of the mark in comparison to the nature and
extent of use of the same or a similar mark by third parties;
* The nature of the goods or services and the channels of trade for the
goods or services that bear the mark, including the breadth and variety of
such channels of trade;
* The trademark owner's record of successful enforcement of its rights in
the mark;
* The degree to which the reputation of the mark symbolizes quality goods;
and
* The extent of the commercial value attributed to the mark.

Once a mark has been deemed famous according to ICANN's criteria, all domain
names that simulate the famous mark should be excluded, including domain
names that are identical to the famous mark and domain names that differ
only in ways that would be likely to cause consumer confusion (eg.,
misspelled words or domain names that add a descriptive word such as
"movie", "tv show", or the like to the end of the famous mark). Once a
trademark is excluded within a gTLD, the dispute resolution process should
allow challenges to the exclusion based on contrary evidence.
Through the use of an exclusion procedure for famous trademarks, ICANN can
increase the effectiveness of the domain name system by eliminating bad
faith conduct directed at those with unmistakable trademark rights, and
eliminate the consumer confusion that is intentionally generated by
cybersquatters.
Very truly yours,

Daphne Gronich
Senior Vice President, Legal Affairs
Fox Television
Twentieth Century Fox Film Corporation