[wg-b] WG-B Status Update

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

Per the DNSO Names Counsel's resolution, I was required to submit a "status
report" of Working Group B's activities. Listed below is the report that I
just submitted. What we must now work on is the formulation of a formal
interim report to submit to the Names Counsel within the next three weeks.

The State of Affairs in Working Group B

Working Group B was created in Berlin last year.  Since then the group has
met at each of the last three ICANN regional meetings.  There are currently
over 120 participants on the Working Group B mailing list.  Although the
majority of the participants are trademark attorneys and/or brand managers,
the remaining participants are scattered among a diverse cross section of
the other six DNSO constituencies.

At the end of last year, there was a call for position papers among the
groups' participants.  From these papers and subsequent discussions there
have emerged a number of viewpoints which are summarized below.

Unlike the Paper presented to the Names Council from WG-C, the following
"State of Affairs in Working Group B" is not a collaborative effort by WG-B,
and has not been seen, discussed or reviewed by WG-B.  It is a good faith
effort by elected WG-B chair Michael Palage, with some edits from Kathryn
Kleiman, to respond in a timely effort to the request of the Names Council
for a status report.  The report will now be circulated for review and
discussion by the WG-B, and for additional work on consensus. It is
contemplated that within three week a formal report will be submitted to the
board.

Non-commercial Constituency Position Paper: This position paper argues that
the creation of a list of famous marks which are then excluded from all new
gTLDs would greatly expand the existing rights of famous mark holders.  It
would allow those who hold marks that are famous in one context, to block
future domain name holders in the new gTLDs from using words in
noncommercial and generic ways that are specifically protected under
domestic laws of sovereign countries internationally.  It would eliminate
the ability of individuals, noncommercial groups and small businesses to
register domain names in new gTLDs for protected noncommercial uses(such as
"bell" by a school group or "apple" for a children's noncommercial program)
and also for protected generic uses(such as "bell" by a bell manufacturer or
"apple" by an small apple farmer).  Instead of the WIPO/IPC proposal, the
Non-Commercial Paper proposes creation of a .TMK top level domain (others
have called it .FAME) for famous marks in which WIPO could create a list of
famous marks owners, these famous names would be registered in this new
gTLD, and the gTLD would be branded as "the place to be in e-commerce."

Registrar Proposal: The Registrar Constituency did not formally submit a
position paper. However, the constituency has recently backed the principles
set forth in the Palage Proposal. Specifically, the use of a sunrise period
to protect the interests of the famous trademark holders. Prior to Cairo,
the registrars opposed the creation of a famous trademark list and instead
advocated all registered trademark owners being able to participate in the
sunrise period. However, as a result of subsequent negotiations with the
IPC, they are now willing to support the creation of a Famous Trademark list
as long as such list is used exclusively as part of the sunrise period and
not as part of any filtering mechanism. During this sunrise period the
famous trademark owners would be able to register a limited number of
variations of domain names related to the core famous trademark. The
registrars are now seeking to gain support for this revised proposal among a
broad base of registration authorities, i.e. gTLDs and ccTLDs.

Palage Position Paper: This position paper advocates the creation of a
famous mark list primarily using the criteria set forth in the WIPO report.
However, it also advocated the use of some objective criteria to provide
some safeguards from the list growing out of control. As previously stated
in the Registrar Proposal, the Palage Position Paper would allow for a
famous trademark owner to register a number of domain name variations during
the sunrise period to protect its sub-string variation interests.

Intellectual Property Constituency Position Paper: The IPC's most recent
position paper advocates the creation of a famous marks list which would be
used to preclude the registration of a domain name that is identical to or
nearly identical to a famous mark on such list.  The creation of a famous
marks list would be based on the criteria set forth in paragraphs 284-285 of
the April 30, 1999 'Report of the WIPO Internet Domain Name Process.'

Eileen Kent Position Paper:  This was a paper submitted during the position
paper submission period that called for the creation of a famous marks list
and mechanism that would send trademark owners notification once a domain
name containing the famous mark string was registered.  Although there have
been several individuals that have expressed an interest in this program.
It is unclear from Eileen's paper who would bear the costs and potential
liability associated with this proposal.

Harald Alvestrand Position Paper:  This paper was also submitted during the
position paper submission period and called for the creation of a finite
list of famous marks by WIPO of between ten (10) and one hundred (100)
marks.  This proposal would allow the famous mark owner to register the mark
and a small number of identically similar marks, i.e. 's, dashes, etc.  If
the famous trademark owner did not elect to register the mark, an Internet
user would be directed to a default page stating that the domain name is
intentionally not being used.

Philip Sheppard/Kathryn Kleiman Compromise Position Paper:  Sheppard and
Kleiman, co-liasion Names Counsel representatives of WG-B appointed fairly
recently by the Names Council, sat down together to try to bridge seemingly
unbridgeable gulfs.  In a paper drafted by Sheppard and now circulated to
WG-B and WG-C, Sheppard and Kleiman propose a new "common ground" based
largely on the "Principle of Differentiation"  - "that the selection of a
gTLD string should not confuse net users and so gTLDs should be clearly
differentiated by the string and/or by the marketing and functionality
associated with the string." Other principles support the goal of
"findability" - that coke as a power source and coke as a beverage can
coexist as domain names in new gTLDs provided the new gTLDs provide the
Internet user with a sense of their different purposes and uses.


Update Section

Following the ICANN meeting in Cairo and there has been much activity among
a couple of the Constituencies, namely the Registrar and Intellectual
Property Constituencies.  Outlined below are some of the activities that
each Constituency has reported

The Registrar Constituency:
Since Cairo, the registrar constituency has potentially agreed upon the
following amendments to it original position statement. Specifically, the
Registrars are willing to back the creation of a Famous Marks list by a
qualified administrative panel such as WIPO, provided that such list is only
used in connection with a voluntary sunrise period and NOT in connection
with any filtering mechanism.

The registrars, in an effort to seek consensus on behalf of the Intellectual
Property (IPC) and the Non-Commercial (NCC) Constituencies, are also
considering the following: 1) to address the concerns of the IPC with regard
to sub-string protection, which is not currently part of the WIPO Chapter
Four proposal, allowing the famous mark holders the ability to register a
limited number of sub-string variations during the sunrise period; and 2) to
address the concerns of the NCC, whether such a sunrise period is
appropriate in any new chartered non-commercial top-level domains.

The registrars are sensitive to the IPC concerns about the sunrise period
being perceived by its membership as a forced sale. However, the Registrars
believe that such a sunrise provision is inherently more favorable than the
current WIPO proposal that only entitles the Famous Trademark owner to an
exact match exclusion and an evidentiary presumption in connection with any
variation of the mark with respect to the UDRP (see Paragraph 288 of the
WIPO Final Report).  The registrars will continue to work with all DNSO
constituencies to find an equitable solution to this problem. The registrar
constituency has also informed the IPC that it is currently working on a
Registrar Code of Conduct that should address some of its other concerns
related to the controlled responsible growth of the name space.

With regard to the joint proposal by Sheppard and Kleiman, the registrars
believe that the document is overall non-responsible to the core issues of
Working Group B, i.e. protection of famous trademarks. Moreover, several
registrars have voiced strong opposition to the proposal because it appears
on it face to advocate the expansion of the names space with chartered
top-level domains only. However, there are basic principals within this
document that are consistent with the registrar constituency's viewpoints.

The Intellectual Property Constituency:
The representatives of the IPC in Cairo were encouraged by the informal
discussions which they held with representatives of the Registrars
Constituency.  At a high level, it seemed to the IPC representatives that
the two constituencies were in fundamental agreement that trademarks should
be protected against the abusive registration of domain names by
cybersquatters and that this protection should encompass a certain penumbra
around the trademark.  These discussions gave the IPC representatives a
certain degree of cautious optimism that a solution could be found to this
problem with continued good faith efforts and dialogue between the
constituencies. Achieving a solution to this problem together with a robust,
freely available and searchable WHOIS which includes complete and accurate
registrant contact data, an equitable and efficient dispute resolution
policy, and an effective mechanism by ICANN to ensure compliance with best
practices would significantly alleviate the concerns of the IPC. In
addressing these areas, we believe that the two groups can help to ensure
the integrity and trust which consumers and businesses need in the Internet.

The Non-Commercial Constituency:
The Non-Commercial Constituency is currently working on providing the
Working Group with its latest consensus building efforts. Kathy Kleiman has
notified me that at such time when this information is available it will be
forwarded to me for inclusion into the report.

Respectfully Submitted

Michael D. Palage
Elected Chair Working Group B