[wg-b] WG-B Report -Take II

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

Listed below is a text document of the report that I submitted late this
afternoon to the Names Counsel after consultation with both NC liaison
representatives.  The original message was bounced because the Word Document
was too large.  I have separated the report into two documents: report and
appendix. I will attempt to have both documents posted at the DNSO web site
ASAP.  At the end of the report I provided an index of the material
contained in the Appendix. If anyone would like either document in Word
format please e-mail me and I will send them to you directly in Word or
another format of your preference. The Appendix report was 19 pages so it is
too large to cut and paste into the e-mail. However, both documents were
forward to the NC in Word format with problem.

Sorry for the delay.

Best regards,

Michael D. Palage


Working Group B (WG-B) Report
Written by Michael Palage, Chair of WG-B
Presented to DNSO Names Council
On April 17, 2000

Executive Summary:

Over the past twelve months there has been an in-depth discussion of Chapter
Four of the World Intellectual Property Organization (WIPO) report1.  There
appears to be a growing consensus on several key issues; while there remains
significant differences on others. In this report, I will attempt to outline
the points of agreement and dissension that have emerged since the inception
of the Working Group.

Background:

Working Group B was created in Berlin last year and tasked with addressing
Chapter Four of the WIPO report. 2 Since that time 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.

When Working Group B was formed last May, Jonathan Cohen was the designated
Names Council Co-Chair and I was the elected Co-Chair. However, after
Jonathan's decision to run for an ICANN Board seat, I functioned as the sole
Chair of the Working Group for several months. Last December, the Names
Council designated two Names Council representatives, Kathy Kleiman and
Philip Sheppard as Co-Names Council Liaison Representatives.

In October 1999, there was a vote among the participants of the Working
Group at that time and a consensus was reached (30 out of 42 voters - 71%)
that a mechanism was needed to protect famous trademark interests in
connection with the domain name system.

After the results of this vote, there was a call for position papers among
the participants of the Working Group.  A total of ten position papers were
submitted. A complete list of the submitted papers with an HTML link to each
can be found at http://www.dnso.org/wgroups/wg-b/Archives/msg00505.html. In
addition, the American Intellectual Property Law Association (AIPLA)
submitted a paper summarizing the various papers and offering their own
recommendations. This paper can be found at:
http://www.dnso.org/wgroups/wg-b/Archives/msg00604.html.

Of the ten position papers received, only five offered substantive solutions
to the problems confronting the Working Group. A summary of each of these
five papers are outlined below:

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.  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."

Michael Palage Position Paper: This position paper advocated the creation of
a famous mark list primarily using the criteria set forth in the WIPO
report. However, it also called for the use of additional objective criteria
to provide some safeguards from the list growing out of control. The Palage
Position Paper would allow for a famous trademark owner to register a number
of domain name variations during a sunrise period to protect its sub-string
variations. This sunrise period would last for a fixed period of time prior
to the top-level domain being opened to the public for registrations.

Eileen Kent Position Paper:  This was a paper submitted during the position
paper submission period and called for a free market system in which all
trademark owners would be able to subscribe to a notification system.  This
proposal did not call for the creation of a famous marks list.

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.

Intellectual Property Constituency Position Paper (version 1) : The original
IPC paper essentially adopted the basic principles set forth in Chapter Four
of the WIPO report.

Following the publication of these position papers, the Registrar
Constituency began to mobilize when several of the position papers advocated
the use of filters in connection with the registration process. Prior to the
ICANN regional meeting in Cairo, the registrars drafted the following
position paper.

Registrar Proposal (version 1): The Registrar Constituency supports the use
of a sunrise period to protect the interests of the famous trademark
holders. However, in light of the difficulty and controversy surrounding the
creation of a famous marks list, the registrars support a sunrise program
where all registered trademark owners could participate.

Prior to Cairo, both Names Council Co-Liaisons circulated the following
position paper in both Working Groups B and C.

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." The paper did not explicitly call for chartered
domains, but does imply that even open domains should have added value and
so be more than imitations of dot com. The authors believe that finding
agreement to the specific solutions to trademark concerns will be
considerably easier once it is known that domain names will be selected on
the basis of these principles.

In Cairo the Intellectual Property Constituency (IPC) released the following
revised position paper.

Intellectual Property Constituency Position Paper (version 2): This revised
position paper advocated the creation of a famous marks list that 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.'

Following cross-constituency negotiations between the registrars and the IPC
in Cairo, the registrars expressed an interest in supporting the creation of
a famous marks list by WIPO to be used in connection with the sunrise
period, Registrars (version 2).  Upon leaving Cairo, the registrars and the
IPC expressed a willingness to continue to work together in an effort to
forge a common ground. This was reported in my Working Group B Status Report
that was submitted to the Names Council last month.

On Friday the 14th of April, the day before the deadline for my report, the
IPC submitted to me a
revised position paper which I have summarized below and included as
Attachment #1.

Intellectual Property Constituency Position Paper (version 3): The revised
position paper advocates a Sunrise Proposal to be incorporated into the
rollout of new top-level domains.  During the Sunrise Period, owners of
trademarks and service marks (marks) would be able to register their marks
as domain names on a first-come-first-served basis in a new top-level domain
before that new domain is opened to the general public. In order, to protect
their sub-string variations without the need for filters, the trademark
owner would be able to register up to 20 variations of the mark.

This proposal is nearly identical to the Registrars' first Sunrise proposal
prior to Cairo.  Unfortunately due to the time in which this report  was
submitted to me and the rest of the Working Group, there was not adequate
time for proper discussion among the Working Group B participants.

Despite the recent progress of the IPC and the registrars There remains
strong opposition among many members of the Working against any additional
protections for trademarks beyond the Uniform Dispute Resolution Policy and
national laws such as the U.S. Anticybersquatting Act and the new trademark
monitoring services now coming into existence. Many of these viewpoints have
been included in the attachment to this report.

Summary of Consensus Items:

In light of the most recent IPC proposal, I am glad to report  on the
following apparent points of consensus. Due to the lack of time, a formal
vote could not be conducted among the Working Group B participants, but the
Chair after consultation with the joint Names Council Liaisons believe that
the following are accurate points of consensus:

(1) There does not appear to be the need for the creation of a universally
famous marks list at this point in time.

Comments: The creation of a universally famous marks list was a political
hot potato. Issues such as who should create the list, the criteria that
should be used, limits on the size of the list, etc. were hotly debated with
no clear compromise in sight. The current Sunrise proposal being advanced by
the IPC and Registrar Constituency do not require the creation of such a
list. However, if and when a universally famous marks list is created, it
would be prudent for ICANN to consider whether the list is applicable to the
then-existing gTLD registration process.

(2) There appears to be a consensus that protection afforded to trademark
owners will depend upon the type of top level domain.

Comments:  This consensus item is based upon the recognition that a sunrise
program is probably not suitable for every new top-level domain, especial
certain non-commercial domains.  However, this consensus item is conditioned
on many tangential issues, i.e. the scope of chartered gTLDs, the
enforcement mechanism for charter, etc. Defining the procedures for
classifying what constitutes a non-commercial top-level domain, is better
left to Working Group C. However, nothing in the consensus item should be
construed as creating immunity from the UDRP or other legal proceeding
should a domain name registrant in a charted top-level domain violate the
charter or other legal enforceable rights.

Point of Agreement, but not Consensus:

Working Group B has worked tremendously hard to find some middle ground of
practical protection for trademark owners within commercial gTLDs that would
be within existing law and within the scope and power of ICANN.   The
Sunrise Proposal allowing pre-registration for all Trademarks now has strong
support in the registrar and IP communities.  Some members of the
Noncommercial and Small Business Communities also have expressed support for
this Proposal, providing clear limitations and safeguards are created and
followed.

The basic principle of the Sunrise provision as set forth in the various
position papers summarized above, includes a mechanism whereby a trademark
owner could pre-register domain names in a select commercial top-level
domain prior to its being open to the general public.  Additionally, the
trademark owner would be eligible to register a limited number of domain
name variations that were similar or nearly identical to the registered
mark.  The Registrars have proposed 5 variations of the trademark; the
current Intellectual Property Proposal sets out 20 variations of the
trademark.

This compromise would eliminate the need for Registries to filter out domain
names that potential infringe a trademark on an ongoing and permanent basis.
More importantly, this right of pre-registration would be for a finite time
prior to the top-level domain being added to the root and would convey no
rights or privileges to the trademark owner after the conclusion of the
sunrise period.

Some members of the noncommercial and small business communities have
conditioned their support for this Sunrise Period for All Trademarks on its
application only to chartered commercial gTLDs (such as a .CAMERA or
.AIRLINES) and only for a limited number of new gTLDs introduced in a
limited initial period of time (sometimes called "the testbed period").
These safeguards will protect trademarks owners during the early period of
time where the new commercial gTLDs might create some chance of confusion,
without imbedding a permanent bias in favor of existing businesses.

Some reasons this Agreement seems consistent with the consensus items of
this Working Group are:
- it does not create a list of globally famous marks which might or might
not be famous in the individual countries of the registries, registrars and
domain name holders;
- it does not create a list of globally famous marks which might fall
outside the scope and mandate of ICANN;
- it does provide protection for both large and small trademark owners
within commercial domains on a first come, first served basis;
- it does protect noncommercial speech and noncommercial use of gTLDs and
domain names;
- and it provides protection for the new registries who fear that without
clear policies for protection of trademarks in the initial rollout (called
the testbed period of new gTLDs) that they will be sued for failure to
protect large trademark owners trademarks in new gTLDs..

Thus, this Sunrise Proposal is a pragmatic way to bridge the gap of opinions
in Working Group B and to allow the responsible rollout of new gTLDs.  We
are sure that the details of the Sunrise Proposal need to be worked out by
the Internet Community, the Names Council and the ICANN Board, but the
proposition itself is the best way to achieve the goal of expanding the name
space in a controlled reasonable manner within the next year.

Summary of Controversial Items:

In response to the recent IPC and Registrar proposals advocating a Sunrise
Proposal, several participants in the Working Group have criticized this
proposal as being technically unfeasible, unfounded in law, and greatly
expanding the scope of Working Group B's original charter.  I have attempted
to include all of the criticisms of the sunrise proposal received to date as
part of the Attachment accompanying this report.

Another point that needs further clarification is how to handle the
potential conflicts among trademark owners during the sunrise period. For
example, the current IPC proposal calls for a first come first serve model,
whereas the original Registrar proposal contemplated a potential expanse of
the UDRP to handle conflicting priority claims.  Defining the procedures and
mechanisms that will be employed to handle trademark disputes during the
sunrise period is probably best left to a drafting committee composed of
representatives from a cross-section of the DNSO should this proposal be
further considered.

One other point of clarification is the contractual language that will
accompany the "take down" provision currently embodied in the latest IPC
proposal.  Although the registrars are currently contractually bound to
correct faulty registration data, there may be the need for additional
language to shield them from any liability in connection with the take-down
provision. Again, this clarification is best left to a drafting committee to
resolve should this proposal be further considered. The registration
authorities are sensitive to the fact that the take down provision is
crucial to the IPC proposal. This is particularly so since there is no
requirement for the registrar to verify the existence of a registered
trademark prior to registration during the sunrise period. There also
appears to be some further consideration as to what happens after a sunrise
registration is taken down, i.e. who gets priority in that domain name where
there are multiple claimants.

Working Group B Chair Michael Palage's Comments:

At first blush, the recently proposed IPC Sunrise Proposal and the
Registrars' original Sunrise Proposal on its face appears to greatly expand
the scope of protection afforded to trademark owners from just famous
trademarks to all registered trademarks.  However, upon closer examination,
it is my opinion that this potential compromise offers an immediate solution
to the protection of trademark interests during the test period for new
top-level domains.

In addition to my duties as Chair of Working Group B, I am also the
Secretariat of the Registrar Constituency.  Although I have not been able to
discuss the recent IPC proposal in detail with all the registrars, most of
the ones that I have spoken with have expressed a guarded optimism that the
Sunrise Proposal can provide a basis for further consensus building efforts.
Although there have been several registrars that have questions about
implementation and procedure, only one has gone on record as rejecting the
IPC latest proposal, see Attachment #5.

Although Jonathan Weinberg has done a yeoman's job trying to forge consensus
in Working Group C, based upon the concerns expressed by some participants
in this Working Group the following points need further study by the Names
Counsel and ICANN staff in preparing the reports for public comment:

* Is the current  proposal for six to ten top-level domains overly ambitious
considering we have failed to identify the specific safeguards designed to
protect the trademark interests.
* The legal requirements set forth in any proposed charted top-level domain
needs to be clearly set forth as well as the mechanism for charter
violations.

Names Counsel Liaison Comments:
I. Philip Sheppard, European Brands Association, and a Names Council
representative of the Commercial and Business Constituency

Working Group B has had much intelligent and thought provoking discussion.
The group understands that while its subject matter is intellectual
property, its objectives are the protection of consumers and net users from
fraud, misrepresentation and confusion.

Within the options that have been discussed in this working group lie
solutions to a increase in the domain name space in a way which produces
diversity, fairness and consumer protection.

The creation of new domain names is the prime activity by which the ICANN
process will be judged. The Names Council and the board of ICANN needs to
simultaneously consider the work of WG B with that of WG C.

II. Kathryn Kleiman, Association for Computing Machinery's Internet
Governance Project, and a Names Council Representative from the
Noncommercial Constituency.

The Working Group B Report is the product of the hard work of the members of
Working Group B and the strong drive of Michael Palage to craft consensus
from widely divergent views and needs.   The Report now goes to the DNSO
Names Council for a public notice period, and then to the ICANN Board for a
public notice period, and then a public discussion at the Japan ICANN
meeting this summer.

What this Report needs now is You - it needs the comments, input and ideas
of the Internet Community.  We have found a few areas of consensus, some
additional areas of agreement, and many questions.  To those of us close to
the WG-B effort, the open questions are stark and clear.  Therefore, I have
used my comment space below to share with you where I think specific
comments would be most helpful to the Names Council and ICANN.  There are
certainly many other areas in which you might comment.  Please feel free to
contact me if you would like me to clarify any question below
(KathrynKl@aol.com).

(1)	Two Overall Issues for any Working Group Report

The following two questions must be asked of any working group:
-	Are the proposals consistent with existing law?  In this case, do the WG-B
Report and its consensus and agreement points conform to the scope and
limits of trademark law?
-	Since ICANN has a limited scope as set out in its bylaws and agreements
with the US `Department of Commerce, do the WG-B proposals fall within the
scope and mandate of ICANN?

(2)	Is the Protection of Famous Marks Necessary in New gTLDs?

It is important to note that the October 1999 vote in favor of famous mark
protection passed by only one vote, and the deciding voter immediately tried
to change her ballot.  YJ Park, of the Noncommercial Constituency, found the
language of question to be vague and misleading.  When she properly
understood the question (after the votes were cast), she should to reverse
her ballot to Oppose the protection.  It was too late.  Starting from this
shaky basis of one vote, the support for famous mark protection in new gTLDs
is lukewarm at best.

A question for those who will comment on this Report:  Particularly, in
light of the success of the Uniform Dispute Resolution Policy and the strong
US Anti-Cybersquatting Act (protections not in existence when WIPO drafted
its reports and particular the Chapter 4 Famous Mark protections), is
special trademark protection still needed in the new gTLDs?

(3) If trademark protection is needed, how should it be structured?

If you agree that the trademark protection being proposed in the Sunrise
Period is a good one, at least for a limited testbed period to get us over
the hump of initial confusion as new commercial gTLDs are rolled out, then
please help us further define some key issues:
-	How long should the testbed period last?
-	To what gTLDs should it apply (all commercial gTLDs, only the chartered or
limited use gTLDs, other?)?
-	To what trademarks should the protection apply (all trademarks, only
trademarks older than 1 year, other)?
-	Should the Sunrise Period advance registration apply to variations of
trademarks, and if so, what type of variations and how many should be
allowed (e.g., punctuation, plurals, any addition of any number of letters,
other)?

(4) How do We Protect Noncommercial Speech and Activity in new gTLDs?

There is general agreement, even consensus (since it crosses constituency
lines), that the Sunrise Period's advance registration of trademarks should
not apply to noncommercial gTLDs.   This is a good agreement, and consistent
with national and international law. There is not consensus, however, on how
to define Noncommercial gTLDs.  Further, there are a variety of different
proposals (none final) that would create special exposure to noncommercial
domain name holders and unfortunately allow much easier revocation of their
domain names.

The Internet Community, and particularly the Noncommercial Community's
comments, would be very useful on the following points:
-	How do you expect to use Noncommercial gTLDs (now and in the future)?
-	Does the Noncommercial Community need undifferentiated (unchartered) gTLDs
as well as chartered gTLDs?
-	How can ICANN (or whatever approving body it creates to approve new gTLDs)
recognize a new Noncommercial gTLD?
-	Should Noncommercial gTLD domain names be given less protection than
domain names in commercial gTLDs?
-	Under what circumstances and procedures should a Noncommercial gTLD domain
name be subject to challenge and possible revocation?
-	How does existing law in your country protect noncommercial speech (and
also noncommercial use of domain names)?
(5) How do We Protect the New Registries Who Will Introduce the New gTLDs?
One of the main reasons for the creation of trademark protection within the
new gTLDs is the fear that trademark owners will sue new registries. This
fear drove Network Solutions, Inc., in 1995, to create a domain name dispute
policy, which equated domain names with trademarks.  The policy had no basis
in the traditional protections and limits of trademark law; it was designed
solely to protect Network Solutions from lawsuits.  It resulted in the loss
of thousands of domain names of individuals, noncommercial organizations and
small businesses (through the NSI process and also from intimidating letters
and threats), which was not consistent with law or equity.
How do we protect Registries without endorsing a position that goes beyond
the bounds of existing protection for trademark owners.  We need your
comments!  In your country, are Registries who choose not to get involved in
trademark/domain name disputes protected by national laws or by court
decisions?  Do you think a policy from ICANN urging the neutrality and
immunity of gTLD Registries help them to avoid suits and to win suits that
might be brought in your country?  What protections of new Registries do you
think lie within the limited scope and mandate of ICANN?

(6) Final Note - A Hearty Thanks to Michael Palage.

Working Group B's Chairman, Michael Palage, has set a new precedent for
hardworking working group chairs.  He participated in online and in person
meetings worldwide, attended an untold number of official and unofficial
forums, acted as mediator, listed to all sides, and rallied the troops.  He
saw his job as bridging the gaps (chasms, actually), which divided the
working group and have halted the rollout of new gTLDs for over four years.
Michael helped everyone to see the needs of the Registrar Community, from
which he hails, but also the needs of the other Constituencies and Internet
communities.  No one can count the hours, days or nights that Michael has
decided to this effort.  He has my thanks, gratitude and admiration.  His
work now turns over to you - the Internet Community!


Respectfully Submitted,


Michael D. Palage






See the accompanying attachment for the following documents:

Attachment #1 - The Intellectual Property Constituency Sunrise Plus 20
Proposal
Attachment #2 - Office of Advocacy - US Small Business Administration
Attachment #3 - Open Root Server Confederation (ORSC)
Attachment #4 - Ellen Rony Personal Comments
Attachment #5 - TUCOWS Comments
Attachment #6 - Consumer Project on Technology
Attachment #7 - Professor Froomkin' Personal Comments
Attachment #8 - Mark Langston's Personal CommentsChair Working Group B