[wg-b] Time Warner's Position Paper

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

TIME WARNER INC.'S COMMENTS REGARDING PROTECTION OF FAMOUS MARKS ON THE
INTERNET

SUBMITTED TO WORKING GROUP B - NOVEMBER 17, 1999

Time Warner appreciates the opportunity to participate in this international
process, and thanks ICANN for its consideration of these comments and
concerns.  Time Warner is the world's leading entertainment and media
company, and has experienced many important changes in the distribution of
entertainment and news.  As with the advent of broadcast and cable
television, home video, and digital satellite transmissions, the growth of
the Internet as a distribution medium has affected the way we do business.
It has also impacted the way we must protect our valuable intellectual
property.  As an active online company, a worldwide distributor of
information, and the owner of internationally famous trademarks, service
marks, and trade names, Time Warner understands the countervailing interests
which the domain name system must balance.  Time Warner supports an approach
to domain name management that protects trademark rights while permitting
the flexible and appropriately regulated growth of the Internet.

Businesses expend considerable resources in developing name and trademark
recognition, and the reputation associated with such names and trademarks.
Consumers rely on trademarks, and the reputations attached to those
trademarks, to identify the sources of products and services in which they
are interested.

During the past few years, thousands of owners of famous and well-known
trademarks have had their rights abused by cybersquatters, who deliberately
register domain names which simulate famous trademarks for the purpose of
commercially exploiting the domain names.  The infringement and dilution of
famous marks through the registration of corresponding domain names attacks
the ability of rights owners to identify and distinguish their products and
services, and undermines the ability of consumers to rely on trademarks on
source identifiers.

Time Warner and a number of other trademark owners have been forced to file
lawsuits against abusive domain name registrants, and Courts around the
world have ordered cybersquatters to transfer infringing domain name
registrations to rightful trademark owners.  However, because of the time
and resources necessary to bring suit and obtain judicial determinations
prohibiting such illegal conduct, cybersquatters have been empowered by the
current domain name system to extort payments from trademark owners.  The
availability of litigation alone is insufficient to address the unfair and
unlawful extortionist acts.

ICANN now has a unique opportunity to proactively avoid the inevitable
extortion, dilution, and confusion which will result from cybersquatting of
famous marks in new gTLDs.  The failure to protect famous marks in new gTLDs
will be an invitation to extortionists to continue to abuse the domain name
system, confuse consumers, and take advantage of rights owners.  The impact
of this failure on the future development of the Internet, a medium based in
large part on intellectual property, cannot be underestimated.  ICANN must
send a message that intellectual property is valued and will be protected
against piracy on the Internet.

Time Warner's experience with the cybersquatting of its famous marks serves
as a clear example of the damaging effects such conduct has on business and
the public.  Time Warner and its various subsidiaries and divisions are the
owners of numerous famous trademarks including, but not limited to, marks
relating to Time Warner's various businesses (including CNN, HBO, SPORTS
ILLUSTRATED, and WARNER BROS.) and marks relating to Time Warner's world
famous fictional characters (including BATMAN, BUGS BUNNY, DAFFY DUCK, FRED
FLINTSTONE, LOONEY TUNES, PEPE LE PEW, PORKY PIG, SCOOBY DOO, SPEEDY
GONZALES, SUPERMAN, TASMANIAN DEVIL, THE JETSONS, TWEETY, WILE E. COYOTE,
WONDER WOMAN, and YOSEMITE SAM) (hereinafter "Time Warner's famous marks").
These marks have been registered as federal trademarks in over 100 countries
around the world, and are strongly associated with Time Warner by the
public.

In the past four years, Time Warner has been forced to address over one
thousand infringing domain name registrations relating to Time Warner's
famous marks.  Time Warner has sent hundreds of letters to Network Solutions
in order to take advantage of the relief provided by Network Solutions'
dispute resolution policies.  Because of the limitations of these policies,
relief provided by Network Solutions has been entirely inadequate, even when
available.  Network Solutions has experienced months-long backlogs and has
refused to address registration of domain names which are not exactly
identical to Time Warner's famous marks.  Because of the fame of Time
Warner's famous marks, and the ease with which extortionists can register
domain names incorporating these marks, cybersquatters have taken advantage
of Network Solutions' policy by registering domain names which are based on
Time Warner's famous marks but fall outside the reach of the policy.  Thus,
Time Warner's trademarks have been registered in every permutation
imaginable, using misspellings and hyphenations.  For example, the SUPERMAN
and BATMAN trademarks have been registered as domain names in the following
formats (in addition to many other variations): SUPERMAN.COM, BATMAN.COM,
SUPER-MAN.COM, BAT-MAN.COM, S-U-P-E-R-M-A N.COM, BATMAN-ROBIN.COM,
BATMANANDROBIN.COM, BATMAN-1.COM, BATMANONE.COM, BATMAN-2.COM.  In addition,
each of the trademarks have been registered in numerous permutations in the
.ORG and .NET gTLDs. The confusion and unnecessary expense caused by these
domain name registrations has been exacerbated by the use of these domain
names to promote inappropriate pornographic content to Time Warner's younger
audiences and to direct and consumers to this content.

In addition to sending hundreds of letters to Network Solutions, Time Warner
has also delivered well over one thousand demand letters to domain name
registrants, and expended thousands of dollars in attorneys fees and
litigation fees in recovering domain names and attempting to identify and
locate the registrants of infringing domain names.  The anonymous nature of
the Internet has allowed domain name registrants to hide behind fake
addresses and P.O. Boxes, making it impossible for trademark owners to
identify those acting in bad faith.  Because of this anonymity, and the
corresponding difficulty and expense in pursuing litigation in these
circumstances, it is imperative that ICANN provide appropriate relief where
the court system cannot.

While no policy can proactively address all potential conflicts, ICANN must
establish an administrative process to prevent the most fraudulent domain
name registrations.  ICANN is now presented with an opportunity to prevent
the unnecessary expenditure of millions of dollars by trademark owners and
the unnecessary confusion of the users of the Internet.  It is imperative
that ICANN send a message to Internet users that trademark infringement will
not be supported.  In order to avoid indisputable trademark dilution, owners
of famous trademarks should have the opportunity to prospectively clear
(i.e., prevent from registration as domain names) these marks in selected
gTLDs (specific clearance) or across all gTLDs (general clearance).  The
institution of both a specific clearance procedure and a general clearance
procedure would avert repeated disputes involving the infringement of the
same internationally famous trademarks.  Of course, Time Warner recognizes
that the clearance of marks should be viewed as an extraordinary remedy.
Therefore, the standard for obtaining clearance should be stringent and
should be based on longstanding and widespread use of an established mark,
the rights to which have been recognized by competent authorities.  To
ensure its effectiveness, clearance of established marks should encompass
marks that are identical or that differ only in ways that would clearly
mislead Internet users.

Some of the factors which should be considered in determining whether a mark
is famous, and should therefore be cleared, include:
(	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 could be evidence of the mark's reputation and reach.
Time Warner proposes that the ownership of 50 registrations worldwide may be
an appropriate benchmark in determining that a mark is famous;
(	The duration, extent and geographical area of the use of the trademark;
(	The extent, duration, and geographical area of advertising, promotion, and
publicity accorded to the mark.  For example, television exposure, the
circulation of international magazines, and evidence of exposure of people
to the mark through promotional activities could be considered, because such
advertising can expand the reputation of a famous of mark beyond the area in
which a marks is used in connection with goods or services;
(	The extent to which the mark was recognized as well-known or famous by
competent authorities;
(	The record of successful enforcement of rights in the mark;
(	The degree of inherent or acquired distinctiveness of the mark;
(	The degree of exclusivity of the mark and 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 which bear 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.

	To ensure its effectiveness, clearance of established marks should
encompass marks that are identical or that differ only in ways that would
clearly mislead Internet users. Once a mark is cleared across the gTLDs, the
dispute resolution process should allow challenges to the clearance based on
contrary evidence.  Clearance of famous marks should be allowed in new gTLDs
prior to any registration activity to prevent famous marks from being
registered as domain names by anyone other than their rightful owners.  Of
course, individuals who oppose specific requests to clear trademarks should
have the ability to contest the clearance.

	The domain name system should enhance the ability of consumers and rights
owners to identify and distinguish products and services, and allow
trademark owners to protect the valuable goodwill represented by their
trademarks.  To achieve this goal and send the message that intellectual
property piracy will not be supported on the Internet, ICANN must prevent
clear violations of trademark rights and consumer confusion by instituting
famous mark clearance procedures.


Respectfully Submitted,
Arthur B. Sackler
Vice President - Law and Public Policy
Time Warner Inc.