Re[4]: [wg-c] Straw Vote

["William X. Walsh" <william@dso.net>]

Tuesday, August 17, 1999, 7:36:44 AM, Rita M. Odin <OdinR@arentfox.com> wrote:


> 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?

I believe that certain contractual obligations will cover this.  I
fully support it as a "reasonable" limitation to place on new
registries.

>>> (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.

I do not support mandatory arbitration in any form.  It violates the
rights to due process, and shifts the burdens from the trademark
holder to the domain holder. My arbitration comment clearly says
"as agreed upon by both parties."  There is no need for language to
permit an arbitration option, as by default that option is ALWAYS
available to any two parties in a dispute by mutual agreement.


>> (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).

But those guidlines are for a Federal Government Agency, which carries
the executive authority of law, and the subsequent protection of the
seperation of powers and other rights under the law.

The registry carries NO such authority or protection under the law.

Also domain names have numerous characteristics different from
Trademarks.  Whereas there is little valid use of a famous mark in a
new trademark, there IS valid use of a famous mark in a domain name
(protected rights).


>>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.

Actually, the assumption is that by asserting fair use, they have it,
unless proven otherwise (please correct my if I am wrong here, I am
basing this on my own laymens interpretation of legal doctrines).

> 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).

I have to venture to say that the registrant is entitled to an
assumption of fair use, just like in any other use not involving
domain names.  Again, you are placing ICANN and the registries into a
form of governance, with the legal authority or protection a federal
government agency would have, or the protections the individual would
have.

Once again, we need to avoid "Supralegal" suggestions, especially
where they shift the burden of proof or effect areas of due process.

>>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.

No, this is not true.  You are seeking legal protection above and
beyond what is granted under the law.  The law does not give you ANY
presumptive rights, and it is presumptive rights you are seeking
protection for in your suggestions I noted above.

>>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.

Great.  Sounds like you have some extra ammunition (presuming it
passes, which is in deep doubt, there are many grassroots campaigns
applying pressure on the House members to defeat it or remove much of
the bite).  But this is the PROPER way to get additional protection
under the law than what you have now.  Lobby in Congress and let our
Representative system work the way it is intended.

> 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.

Again, you are comparing trademark applications to domain names.
There are MANY reasons why this fails muster.  The USPTO is an agency
of the executive branch of our government, with all the authority and
responsibility, AND ACCOUNTABILITY, that comes with that.

BTW, thank you for responding, I think these issues are MOST important
and deserve a full fleshing out.

--
William X. Walsh - DSo Internet Services
Email: william@dso.net  Fax:(209) 671-7934
Editor of http://www.dnspolicy.com/

(IDNO MEMBER)
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constituency of Individual Domain Name Owners 
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