RE: [wg-b] WG-B Report

["Judith Oppenheimer" <joppenheimer@icbtollfree.com>]

In October '99 Michael Palage wrote to me, "Our focal point must remain what
protection if any do famous trademarks have."

To repeat, the Chair of Working Group B said "[Working Group B's] focal
point must remain what protection if any do famous trademarks have."

-----------
verbatim note:
-----------
From: Michael D. Palage [mailto:mpalage@infonetworks.com]
Sent: Sunday, October 10, 1999 9:48 PM
To: Judith Oppenheimer
Subject: Request

Judith I am sending this request to you personally and not through the list.
I understand the issues that you may have with the entire ICANN process but
it is not the focal point of this group.

Our focal point must remain what protection if any do famous trademarks
have.

Thanks for your participation to date and I welcome your future comments on
the issues before us. I encourage you to raise your concerns in the
appropriate ICANN mailing list.

Mike
-----------

So it would seem that Michael Palage himself confirms Ellen's points noted
below that "the charter of Working Group B was to focus on famous and
well-known marks"

and that

"a recommendation that goes beyond the group's charter to focus only on
famous marks [could] be considered as an unsubstantive solution..."

By what authority did Mr. Palage abandon Working Group B's charter of "what
protection if any do famous trademarks have"?

I'd also like to know the foundation for The [so-called] Report of Working
Group B's assertion that "The Sunrise Proposal allowing pre-registration for
all Trademarks now has strong support in the registrar communities..."

Timothy Denton, BA, BCL, Telecom and Internet Law and Policy, says, "There
is no evidence that the registrars agree with the supposed proposal. They
have not formally been consulted."

Registrar TUCOWS/OpenSRS' comments with the DNSO state "...The IPC's
contentions that trade mark holders are owed a special set of privileges
regarding domain names, different from and superior to those worked out in
national legislatures, is not something that other users of the Internet
need to accept. Moreover, it is unnecessary. The fastest way to eradicate
the problem that the IPC pretends to solve is to have a rapid, large
expansion of domain names... This most recent proposal from the IPC must be
stopped. If it stands, the rules for the average person as it relates to
domain name registration will change drastically and for the worse."

Similarly, I'd like to know the foundation for The [so-called] Report of
Working Group B's assertion that "Some members of the ... Small Business
Communities also have expressed support for this Proposal."

Which members?

Certainly not the U.S. Small Business Administration's Office of Advocacy,
which says "the sunrise provision allowing early registration by trademark
holders is not grounded in law... It is also overly-broad and will impact
entities who aren't infringing the mark, as well as giving preferential
treatment to one class of commercial entities over another...", and
concludes adamantly, "the current "modified sunrise proposal" would have a
detrimental impact on small business and should not be adopted."

Judith Oppenheimer
Member, Working Group-B

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-----Original Message-----
From: owner-wg-b@dnso.org [mailto:owner-wg-b@dnso.org]On Behalf Of Ellen
Rony
Sent: Tuesday, April 18, 2000 4:42 PM
To: wg-b@dnso.org; mpalage@infonetworks.com
Subject: [wg-b] WG-B Report


The Report of Working Group B was not vetted by the group prior to
submission.    We had a deadline on proposals, true, but now those
proposals have been distilled into this report, and the only way to know
whether this document represents the culmination of this working groups
effort is to ask.

The report draws two conclusions as to consensus:

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

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

Then the report goes on to insinuate support of a Sunrise Proposal
submitted on deadline by the IPC.

MY comments are indented below specific quotes from the WGB Report.

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

	ER Note:  Chapter Four of WIPO's Final Report is "The Problem of
	Notoriety: Famous and Well-known Marks".  The essence of WIPO's
	recommendations is that a mechanism be established for granting

	exclusions to famous and well-known, *NO* trademarks of all stripes.

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.

	ER Note: The initial membership in WGB was
	not diverse, and people such as myself were solicited
	to present a broadening perspective.  Thus, this early
	vote might obtain quite a different result if the 120 members of
	today's Working Group B were polled on that question.

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:

	ER:  Who determined what was a "substantive solution" and what
	criteria were applied in making this determination?

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.

	ER:  The Registrar proposal goes way beyond the scope of the
charter of
	Working Group B, which was to focus on famous and well-known marks.
The
	difference between the two, if we accept WIPO's estimate of
	1,000 famous marks worldwide, is more than 1,000-fold, with
	1 million trademarks in the U.S. alone.

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.

	ER:  Forgive me if I missed seeing these "negotiations" discussed
on
	the WGB list.  This mailing list was
	established as the primary vehicle by which work would be done
	with regard to the recommendations and proposals of WGB.

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

	ER:  Last in, yet first up. This on-deadline proposal expands

	CONSIDERABLY the scope of the discussion that has taken place on this
	list for the past six months.  Wouldn't a recommendation that
	goes beyond the group's charter to focus only on famous marks be

	considered as an unsubstantive solution?

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

	ER comment:  "Protection" may be the wrong word here.
	Some of us have suggested that owners of registered
	trademarks be given their own, exclusive virtual sandbox to
	play in, called .TMK.  Why has there been so little
	mention of this possible mechanism of giving
	the trademark owners a place where truly there will
	be no confusion with other uses of the same words.

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.

	ER comment:  This infers support that hasnt' been
	prominent in the WGB mailing list archives.
	Aren't all constituencies supposed to be represented on
	each of the Working Groups?  Why doesn't this report indicate that
this
	proposal by two self-interested groups goes beyond the charter of
WGB?
	If we had begun with this premise, I heartily doubt it would suvive
the
	vetting to gain any space or attention in the final report.

This compromise would eliminate the need for Registries to filter out
domain names that potential infringe a trademark on an ongoing and
permanent basis.

	ER comment:  What is being called a "compromise" is simply one on-
	deadline submission, shepherded
	by the author of this report who has interests in two
	constituencies.  There was no
	"compromise", for example, with the NCDNH.

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.

	ER comment:  These rights and privileges have no basis in law.
	Further, they do not deal with many thorny issues: how would
	rights and privileges be allocated among owners of IDENTICAL
	marks?  How would rights and privileges be withdrawn for
	abandoned marks?  Would subsequent trademark owners lose such
	privileges?  Would registrants who get 48hour turnaround of traademark
	registration in foreign shores be given priority over those
	who are waiting in the 15-month U.S.. process for their
	applications to issue?

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.

	ER comment:  This group still has not resolved this issue of whether
	a domain name alone gives rise to a "chance of confusion".  Given
	the potential for so many variations upon a name by the use
	of prefixes and suffixes, the days when people would merely
	guess at a domain  name to find a particular company are now
	gone.  Warner Bros. has registered more than two dozen
	variations of its own name.  If a domain name alone gives rise
	to a chance of confusion, then the corporate holders may be
	the greatest source of this confusion.

	As to imbedding a permanent bias,  just do the math.  If
	the one million trademark owners in the U.S. each apply for a
	pre-emptory
	exclusion of 20 variations of its mark as  domain names,
	that amounts to a set-aside of
	20 million domain names from the U.S. alone.   How does such
	a provision contribute to the technical administration, robustness
	and stability of the Internet?

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 fall outside the scope and mandate of ICANN;

	ER comment:  And exactly how would an extra-legal domain name
	set aside for every trademark owner on the face of the earth fall

	within the authority and scope of ICANN's technical administration
	of the Internet?

it does provide protection for both large and small trademark owners within
commercial domains on a first come, first served basis;

	ER comment:  One of the touchstones of trademark protection
	is earliest use in commerce.  This "protection" would not be
	based on either earliest use in commerce or upon any contextual
	basis.  It thus recognizes that trying to adapt trademark
	principles to domain name registration is like attempting to fit
	a square peg into a round hole

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.

	ER:  "Nothing in trademark law requires that title to domain names that
	incorporate trademarks or portions of trademarks be provided to

	trademark holders.  Instead, the law simply prevents others from
making
	use of a company's trademarks in a manner likely to confuse the

	consuming public."

	Washington Speakers Bureau, Inc. v. Leading Authorities Inc., 51 USPQ2d
	1478, (E.D. Va. 1999)

	If ICANN can assert through White Paper recommendations
	protections for famous trademarks
	used as domain names (although that should not fall within
	the sphere of a private non-profit corporation)
	then it also can assert that domain names are NOT
	trademarks, as they possess characteristics that cannot
	be inferred to marks, such as extra territoritality and
	non-contextual association.  I suspect that any take-down
	provision that would be implemented as a result
	of the Sunrise Proposal would lead to lawsuits, as well.

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.

	ER comment:  The Sunrise Proposal bridges NO gap.
	The "gap" is between those who believe that
	sufficient legal recourse for owners of trademarks already exists and
	those who believe that registration of a mark alone entitles
	that group of Internet users to preferential exclusionary treatment.

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.

	ER comment:  Who is the "we" of this statement, which reads
	like the Sunrise Proposal has been annointed by Working Group B?
	It has not, and the attention it receives in this report and comment
	that this is the "best way" reflects
	an unsupportable bias by the drafter of the report.

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.

	ER comment:  It is the opinion of many members of WGB
	that trademark interests already  have the "protection"
	they need through the UDRP and the TCA. One of the
	tenets of the White Paper is, "the new corporation should operate
	as a private entity for the benefit of the Internet community as
     	 a whole."  This proposal gives a priority bias to
	all owners of trademarks wherever situated over all
	other uses of the same or similar character string
	The profusion of claims to
	.ORG and .NET versions of marks that are used commercially
	already reflects a failure to follow the original distributed
	hierarchical database model of the domain name system.

	This proposal would condone corporate hoarding of a significant
	percentage of domain names before a single non-commercial user
	gets to participate in the virtual land rush that will
	surely accompany the introduction of 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.

	ER comment:  Again, there is no consensus for this proposal
	so why is the bulk of the WGB Report devoted to discussing its
	provisions.  Second. agreed there is no consensus how to define
	Noncommercial gTLDs, but there IS a brightline qualifier that
	would work with a .TMK tld, simply proof of national registration for
	the mark.  If trademark owners want to avoid confision based merely
	upon an Internet user "guessing" at a domain name, then
	they would be encouraged to "guess" in the .TMK gTLD.  This wouldn't
	resolve the issue of mutiple registrations of the same mark, but
	it is simply far easier to identify those possessing trademark
	registrations than it is to box in those
	wishing to establish a non-commercial
	presence on the Internet.  If any differentiated gTLDs are
	required, it would be most useful to have them for
	trademark owners who seem to want to avoid confusion with the
	rest of the world, rather than trying to move all non-commercial
	domain name registrants
	into a non-commercial box.  The latter
	is difficult because such users may have sites that link to
	commercial sites, may have uses for their names that change in time.
	Trademark owners show proof of registration and the demarcation
	between them and the rest of us is clear.

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?

	ER comment:  No and No.

Is the Protection of Famous Marks Necessary in New gTLDs?

	ER comment: While I have significant sympathy for corporations that
	have coined names which are now midstream, this proposal
	really presents a chill to free speech and, frankly, to the
	commercial marketplace.  When a distributor of computer
	equipment promotes a system with "Intel Inside", the use of the
	name contributes to the financial earnings of the trademark owner.
	Clearly there are people who abuse any system we humans can devise,
	but abuses should be dealt with on a case by case basis through
	the existing, and frankly considerable, legal protections
	currently available.

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

	ER comment:  Establish a new, chartered gTLD called TMK.
	Only registered trademark owners need apply.
	If the trademark owners begin complaining about which
	one should get priority rights to the coveted name (for
	example, there are more than a dozen registrations for
	the mark "CLUE", then establish 42 gTLDs that
	correspond to the International Trademark Class of
	Goods and Services, e.g., .42TMK.  The Internet communuty
	may not know at the moment what type of services that number
	corresponds to, but it will be a simple education process
	and will lead to far less user confusion if the trademark
	community truly has that as its goal because the
	name of the gTLD will give more referential information
	to anyone seeking the site of a  particular mark holder.





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