[wg-b] Attached please find the IPC Position Paper Submission

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

* Intellectual Property Constituency ("IPC") Submission on Working Group B *


In recognition of the consensus emerging from WG-B's study of Famous Marks
and Chapter 4 of the WIPO Report, which clearly favors providing a mechanism
for the protection of well-known marks, the IPC expresses its support for
the efforts and conclusions to date of WG-B's endeavors, and submits to WG-B
for its consideration, the following preliminary recommendations in
connection with the implementation of a procedure for the protection of
famous and well-known marks.

1)	The IPC recommends the use of the provisions which were adopted by the
WIPO Standing Committee on the Law of Trademarks, Industrial Designs and
Geographical Indications (SCT) at its Second Session, Second Part, for the
protection of famous and well-known marks, and which were approved by
consensus by the General Assembly of WIPO and the Assembly of the Paris
Union in September 1999.

WIPO has engaged in a lengthy study of the issue over a number of years,
involving a significant number of experts from both the government and the
private sector. The resulting criteria for determining whether a mark is
famous or well-known, that are contained within the above mentioned
provisions, are thus the result of extensive international consultation.
While there is arguably room for further discussion, it is neither practical
nor possible for WG-B to undertake the task of duplicating WIPO's work.
Accordingly, it is recommended that full possible use be made of the
considerable effort expended by WIPO to collect and incorporate
international expert input into its criteria, and that hereinafter the focus
of our efforts should be on formulating a procedure that effectively
implements the WIPO SCT criteria.

2)	The IPC recommends that WIPO or another qualified organization be asked
to consult with the international intellectual property community and
establish guidelines for the creation of an independent Panel or Panels for
making determinations based on the SCT criteria.

The IPC does, however, note that WIPO is already known to have the requisite
expertise, willingness, and equally importantly, the financial resources and
existing administrative infrastructure to implement such a process.  WIPO
could be charged with maintaining the central list of famous and well-known
marks and regularly transmitting, or otherwise making available, the panels'
findings to the appropriate authorities (registrars, registries, ICANN,
etc.).

3)	The IPC recommends that the cost of initiating and carrying through the
process that results in a famous or well-known mark determination should be
borne by the applicant, and that this cost, while not set prohibitively
high, should be high enough [500 - 1000 USD minimum] in order to prevent
frivolous and superfluous applications.  The cost of third party challenges
to such determinations are properly borne by the challenger, and should be
subject to similar considerations.

4)	The IPC recommends that consideration be given to the situation that
results where an applicant successfully registers a famous or well-known
mark before the Panel has made a determination regarding the respective
string.  One possible way to avoid this situation could be a requirement
that new gTLDs may not be introduced until the Panel(s) have had a specific
period of time to consider well-known mark applications, after the
announcement of intent to add the gTLD(s).

5)	The IPC recommends the following mechanism for determination of famous
or well-known status:
a)	Applicant submits a request  for an exclusion in specified
gTLD(s), accompanied by appropriate payment, to a Panel.
b)	Panel(s) meet(s) from time to time on a regular basis (by
e-mail / telephone) to consider a series of requests.  Determinations of the
Panels shall be based on the WIPO SCT criteria and shall be made, and the
applicant notified thereof,  within a reasonable amount of time.

c)	The determination of the Panel in each case shall be posted
for a specific period on a website administered by WIPO or another qualified
organization for the purpose of opposition by third parties.  Opponents
shall be required to present evidence to the Panel in support of the
opposition claim and which is contrary to the Panel's determination.  If no
opposition is made within the specified period, the requested exclusion is
granted.

d)	If the requested exclusion is granted, WIPO or another
qualified organization shall submit the string in question to ICANN, who in
turn shall submit it to the registries.  The registries shall submit same to
the registrars.  A current list of such strings shall be maintained on a
website administered by WIPO or another qualified organization for this
purpose.

If the request is denied, the applicant shall have the right
to appeal.  The appellate body shall consist of experts gathered by WIPO or
another qualified organization.  None of the panelists on the appellate body
shall be the same as those who sat on the original panel.  The decision of
the appellate panel shall be final.

e)	Applications by third parties to register as domain names, strings which
have been granted an exclusion and posted on the current list will
automatically receive a response to that effect.
f)	If a third party can demonstrate valid rights in the words
making up the excluded string and those rights do not unfairly dilute the
rights of the famous or well-known mark owner, that third party may appeal
the denial to register the excluded string as a domain name.   The appellate
body shall consist of experts gathered by WIPO or another qualified
organization.  None of the panelists on the appellate body shall be the same
as those who sat on the original panel.  The decision of the appellate panel
shall be final.


Submitted by the IPC to WG-B on December 8, 1999.