[wg-b] FW: ICANN/we-b Position Paper

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

Attached below are comments submitted by Mr. Hikoh Okuda, from the Sony
Corporation. I inadvertently forgot to forward it to the list when it was
submitted last month. My apologies.

Mike Palage

-----Original Message-----
From:	Hikoh Okuda [mailto:Hikoh.Okuda@jp.sony.com]
Sent:	Wednesday, November 24, 1999 11:46 PM
To:	mpalage@infonetworks.com
Cc:	dwmaher@ibm.net; rconnell@psi-japan.com; kan@shp.sony.co.jp
Subject:	ICANN/we-b Position Paper

Dear Mr.Michael D.Palage:

We have reviewed the issues raised in the email dated November 10 concerning
the captioned and our comments are as follows:
Issue #1: Obviously,there are a limited number of marks which have
unquestionably
world-wide high visibility and can objectively be determined as famous.
This is the established practice at the major patent offices. Thus,this
practice should also be applied to domain names.  For other less instantly
recognizable marks (to the majority of the world -wide public)it will be a
matter for the adjucators to decide on the merits of the information
submitted, using their subjective evaluation,whether the mark is famous.
Fame is a relative concept and therefore should be determined by a
combination of factors. Among other things, a court decision recognizing a
mark as famous should be given some consideration.
Issue #1-A: We do not agree that the documented numbers of cybersquatting
instances
should be an important criteria in establishing whether or not a mark is
famous. Consumers perceptions of a mark may also be considered. However, the
crucial criteria for determining whether a mark is famous should be amounts
spent on promotion and advertising(duration and extent of the use of the
mark and the value associated with the mark).
Issue #1-B:
Generally speaking, a system based simply on the number of trademark
registrations could be fraud unless registrations from certain countries
were given less weight than others. Thus,the number of registrations can be
used to indicate famousness but it should not be used as a bench mark to
determine whether a mark is famous or not.
Please be advised that we have 12 core trademarks that are Sony(203
countries
registration),Trinitron(148),Wega(140),Walkman(114),Discman(99),Handycam(96)
Vaio(73),Betacam(71),Mavica(68),Aperios(52),Sonet(45),i,Link(33)
Issue #2: Sub-string protection is the only realistic solution to end the
practice of
cybersquatting. While a domain name registrar generally may be permitted to
refuse to register any domain name that includes a company's mark (including
variations)(see Seven Words LLC v. Network Solutions, Inc.,Case No.CV99-028
16CC.D.Cal.Order dismissing plaintiff's complaint entered October 26,1999),
once a domain name issues it may be difficult and expensive for a trademark
owner to recover it (or to prevent its use in ways harmful to the company).
For this reason, preemptive exclusion would be very effective in protecting
Sony's marks.
Issue #2-A: Registrars are unlikely to support any system that puts them in
a position of
acting as judge and jury. Therefore, the best approach would be to allow the
trademark owner to obtain sub-string protection subject to the rights of
third parties to challenge that protection of specific proposed
registrations.
Issue #2-B: Pre-registration notification is not practical. It is not
reasonable for companies
to wait before gaining access to a domain name. Rather,with preemptive
exclusion, a potential registrant can find out immediately if it is unable
to obtain a domain name and more often than not will try to register a
different name. Pre-registration notice would put the burden on trademark
owners to monitor registrations which may impose additional costs.
Issue #3: We believe that a right of first refusal would be advantageous to
trademark owners
and minimize future disputes. Also, a better solution would be to allow
registries to implement sub-string protection for a fee. The fee could be
set amount charged to the mark owner depending upon times a third party
unsuccessfully attempts to register a blocked domain name. Pre-emptive
exclusion orders should be issued for a fixed term subject to
renewal,whereby the mark owner has to provide further evidence that the mark
has retained its famousness with a renewal fee. Registrars and registries
won't support this proposal unless they are indemnified by trademark owners.
Issue #4: We believe it is considered appropriate for the administrative
fees to be paid up
in full by the third party challenging the decision. Fees should be adequate
to fully compensate registrar for all costs incurred.
Issue #5: We believe that ICANN would be better suited to this task.
Issue #6: Exclusion can only be effective if implemented by registries.
Otherwise,individual
registrars could profit by offering to register names blocked by
competitors.
Issue #7: We do not think it appropriate to introduce new gTLDs, which will
likely create more
problems for trademark owners under the circumstances where pre-emptive
exclusion has not been introduced.
Issue #8: We think that exclusions should apply whenever a registrant seeks
to transfer or
renew a domain name.

There is a fundamental conflict between the domain name system and trademark
law. In view of this conflict,preemptive exclusion would be more effective
in protecting the rights of trademark owners than any other solutions and
could be structured in a way that provides an economic incentive for
registries to comply.
We hope the above-mentioned comments are helpful and incorporated into
"Position Paper".
Best regards,
Hiko Okuda
Brand Management Office
Sony Corporation

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Hikoh Okuda  Hikoh.Okuda@jp.sony.com

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Hikoh Okuda  Hikoh.Okuda@jp.sony.com