Re: Re[2]: [wg-c] Straw Vote

["Rita M. Odin" <OdinR@arentfox.com>]

In response to my previous message:
"William X. Walsh" wrote 

>> I vote for option 1 - with the ever present caveat that no action
>> should be taken to add gTLDs until the following have been >>put into
>>place:

>> (1) a universal, reliable and searchable database of contact
>> information for all domain name registrants;

>Whois can accomodate this easily.  And one can easily setup a >"proxy"
>whois server that would then forward the request to the proper >whois
>server.

Great!  My understanding is that there are people on this list arguing against a universal whois.  I also understand that there have been claims of proprietary interest in the whois information by NSI, which claims may interfere with creating/accessing a universal whois.  Am I wrong?

>> (2) a workable uniform dispute resolution procedure;

>Registry will honor all rulings from courts of competent jurisdiction
>over the Registry or the Registrant, or a panel of arbitration as
>agreed upon by both parties.  

Once again, great!  As long as a workable DRP is uniformly adopted by the registry(ies) and that DRP requires domain name registrants to submit to mandatory jurisdiction (by a court where the registrar is located and to an arbitration panel under certain circumstances) it sounds good to me.

> (3) a famous name policy.

>That, as in all areas of commerce, trademark holders (including >famous
>names) are required to actively police their marks.  

Actually, to a significant extent, the USPTO performs this service for all federally registered trademark/service mark owners (famous or not) by pro-actively denying registration to marks that are confusingly similar to an exisiting registered mark (even where the refused application is based on an intent to use).  A famous marks policy could act the same way, but on a lesser scale, because it would only come into play where the mark is "famous."  The only problem is determining which marks are "famous."  There are guidelines for making that determination, however.  See 15 U.S.C. § 1125 (c)(1)(A) - (H).

>There are fair
>uses of famous marks, in parody, satire, consumer protection
>information, non-commercial criticism, and numerous other areas >as
>backed up by court decisions.  

True.  However, fair use is an affirmative defense (i.e., the burden is on the defendant to prove fair use).  Placing the burden on the domain name registrant to prove that its use is a fair use does not seem to be stretching existing law at all.  

Similarly, having the domain name registrant attest that its site is non-commercial in nature in order to be granted an exemption to the famous marks policy is a possible solution, as long as there are sufficient deterents in place to prevent false attestations (i.e. penalties that can be imposed against the domain name registrant where it is proven that, in fact, the domain name registrant is using the infringing/dilutive domain name in a commercial way).  


>Some extra legal protection above and
>beyond what the law already gives trademark holders would >violate the
>rights of others who would use those names in a legal form as
>specified above.

As I think I've demonstrated, no extra legal protection is being sought.

>If they want additional uniform protection, take it up with >Congress.

Actually, they already have - and Congress has agreed.  It's called the Federal Anti-Dilution Act of 1996 (15 U.S.C. §1125 (c)).  There is also the Anti-Cybersquatting Bill, S1255, which was passed by the Senate on August 5th and will presumably go before The House after the August recess.  In addition, President Clinton signed a new law on August 5th allowing owners of famous marks to oppose a pending application or cancel an existing registration on the basis of dilution.  All that, combined with the fact that the USPTO proactively refuses registration of marks that are confusingly similar to an existing mark, goes to show you that proactive protection of famous marks is not a new concept or a stretch of existing law.

Rita M. Odin