Re: [wg-b] Submission from noncommercial community

[Judith Oppenheimer <joppenheimer@icbtollfree.com>]

I support this submission in its entirety.

Judith Oppenheimer

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KathrynKL@aol.com wrote:

> Michael:
> Attached please find our response to Working Group B's call for comments.
> Thank you for providing this opportunity to provide input.
> - Kathy Kleiman
>
> PROPOSAL TO DNSO WORKING GROUP B
> ON DOMAIN NAMES AND FAMOUS MARKS
>
> We, the Undersigned from the Noncommercial Domain Name
> Holder's Subcommittee on WG-B, submit the following proposal
> which we believe balances the rights of all domain name holders in
> the ICANN process --  large and small, noncommercial and
> commercial --  with those companies who claim famous mark status
> on their trademarks.
>
> Given that:
>
> 1. Domain names are the addresses which label the communication
> and expression of noncommercial and commercial users (and are
> used by those both providing and seeking information online);
>
> 2.  The right of open communication for noncommercial and
> commercial speech is protected by treaties on human rights and
> open communications and ensconced in the founding documents of
> the United Nations [1];
>
> 3.  ICANN is a private corporation designed for the technical
> management of the domain name system[2],  not for the creation of
> new law or policy in the trademark/domain name arena; [3]
>
> 4.  While famous marks are set out for protection by the Paris
> Convention for the Protection of Industrial Property, this treaty has
> not been signed or entered into by some countries who use the
> Internet.  Further, its famous mark provisions are not enforced by
> some countries who have signed the treaty for lack of a consensus
> on and definition of "famous mark" within the treaty; [4]
>
> 5.  That the famous mark protection extended by the Paris
> Convention is a protection for "industrial property," also known as
> commercial property,  and does not speak to the delicate balance
> between noncommercial and commercial speech on the Internet;
> and
>
> 6.  The recognition of Famous Marks in domain names can
> impinge on freedom of communication by denying the use of said
> famous marks in domain names for political, personal and parody
> speech, criticism, and non-trademark use (such as normal use of
> last names, generic use of a commodity name, and noncommercial
> use).
>
>
> We, the undersigned from the Noncommercial Domain Name
> Holder's Subcommittee on WG-B, request that Working Group B
> report to the DNSO Names Council and ICANN Board that:
>
> 1. ICANN cannot define what does not exist, namely, ICANN
> cannot create the universal definition of a famous mark; the
> development of the famous mark definition and protection must be
> created by and evolve through sovereign law, treaties, and case law
> (courts);
>
> 2. ICANN cannot police marks for the commercial community;
> ICANN should not create conflict within the Internet community
> by adopting broad powers of policing marks which will create a
> liability for the private registries and registrars and amount to
> taking sides between the noncommercial and commercial
> community as to who has better rights to a basic word;
>
> 3.  ICANN cannot administer broad exclusionary policies which
> effectively remove common names and words from the root server
> databases and deny them, up front, to domain name registrants who
> seek to use them for purposes never proven to be confusing or
> diluting; and
>
> 4.  As a fiduciary of the Internet Community, ICANN must protect
> current and future generations from monopolization of the domain
> name space by existing users.
>
> We, the Undersigned, Call Upon Working Group B, the DNSO
> Names Council and the ICANN Board to:
>
> 1. Continue registration of domain names on a first-come, first-
> served basis;
>
> 2.  Provide that trademark owners should continue to be
> responsible for policing their industrial property (trademarks and
> service marks), in the communication medium of the Internet;
>
> 3.  Decline to impose a new international law of industrial property
> and famous marks on the countries which are part of the Internet,
> but not a signatory to the industrial property treaties on famous
> marks;
>
> 4.  To address the concerns about famous marks with a new and
> uniquely technical solution:   the creation of a space in cyberspace
> for marks deemed to be famous.   Subject to discussion, this could
> be a new gTLD or a second or third level domain attached to an
> appropriate international organization (such as WIPO); and
>
> 5. To allow the appropriate international representative of countries
> and corporations, to create the criteria for registrations of domain
> names within this unique space, and to develop procedures for
> resolving the conflicts between marks claiming the same string in
> different countries or different specialties of goods and services.
>
> The solution of a special domain name space reserved for famous
> marks has additional advantages that we look forward to discussing
> with WG-B, the Names Council, ICANN Board, and the public.  It
> utilizes the semantic structure of the domain name system to aid
> people in navigating the Internet, creates an area that can be
> branded and marketed for famous marks, makes famous mark
> recognition a positive sum rather than a zero-sum name, and
> provides   without creating new international law   recognition
> which companies will find very useful when submitting evidence
> in court of "famousness."
>
> In summary, we believe our proposal presents a strong option for
> WG-B, and one that is consistent with the balance of interests in
> the Internet Community and the limited technical scope of ICANN.
> Our proposal also grants special rights and opportunities to the
> holders of famous marks and famous domain names.
>
> Mark Perkins
> Librarian (acting)
> Secretariat of the Pacific Community Library
> BP D5, 98848 Noumea Cedex
> New Caledonia, South Pacific
> Tel: 00 687 262000  Fax: 00 687 263818
> email: markp@spc.org.nc / web: http://www.spc.org.nc
>
> Kathryn A. Kleiman, Esq.
> Internet Matters
> 601 Madison Street, Suite 200
> Alexandria, Virginia 22314 USA
> KathrynKl@aol.com
>
> Dr. Milton Mueller
> Associate Professor,
> Syracuse University School of Information Studies
> Syracuse NY USA
>
> Dori Kornfeld
> Policy Analyst
> U.S. Association for Computing Machinery
> Washington, DC USA
>
> ENDNOTES
>
> [1] The United Nation's Universal Declaration of Human Rights,
> of 1948, adopted a right of communication so broad and
> encompassing that its words clearly include the communications
> medium of the Internet:  "Everyone has the right to freedom of
> opinion and expression; this right includes freedom to hold
> opinions without interference and to seek, receive and impart
> information and ideas through any media and regardless of
> frontiers." Article 19.
>
> With the same vision, the European Human Rights Convention,
> written in 1950 and signed by over 21 European countries,
> establishes a set of "Fundamental Freedoms which are the
> foundation of justice and peace in the world." Chief among these
> Freedoms is the right to impart information and ideas: "Everyone
> has the right to freedom of expression. This right shall include
> freedom to hold opinions and to receive and impart information
> and ideas without interference by public authority and regardless of
> frontiers. This Article shall not prevent States from requiring the
> licensing of broadcasting, television or cinema enterprises." .
> Section I, Article 10.
>
> [2] Scope of ICANN, from the MoU between US Dept. of
> Commerce and ICANN, November 28, 1998,
> http://www.ntia.doc.gov/ntiahome/domainname/icann-memorandu
> m.htm: "On June 5, 1998, the DOC published its Statement of
> Policy, Management of Internet Names and Addresses, 63 Fed.
> Reg. 31741(1998) (Statement of Policy). The Statement of Policy
> addressed the ** privatization of the technical management of the
> DNS ** in a manner that allows for the development of robust
> competition in the management of Internet names and addresses."
> [emphasis added.]
>
> [3] An issue constantly kept in mind by the Uniform Dispute
> Resolution Policy Ad Hoc Committee was that in drafting the anti-
> cybersquatting policy and rules,  we (ICANN and community)
> **must not create new laws.** It was agreed that ICANN is not
> empowered to create new law, that sovereign countries would
> resent the creation of new law by the Corporation, and that courts
> would overturn it.  Our success, we felt, lay in applying existing
> law to the cybersquatting circumstances.  The same standards and
> reasoning would appear to apply even more strongly to the still-
> new and fast-changing legal environment around famous marks.
> [Note: Kathryn Kleiman, signatory above and a representative to
> the Names Council from the Noncommercial Constituency served
> on the UDRP Ad Hoc Committee.]
>
> [4]  J. Thomas McCarthy, MCCARTHY ON
> TRADEMARKS(West Group, 1999), Sec. 29:62 (noting: "Article
> 6 bis is not an anti-dilution provision and does not extend to
> service marks.  Because the treaty does not define a famous mark,
> some countries have been hesitant to enforce protection. If
> protection is afforded, the scope of protection may be inconsistent
> from one country to another.")