Executive Summary: Over the past twelve months there has been an in-depth discussion of Chapter Four of the World Intellectual Property Organization (WIPO) report. 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. 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. 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. The paper did not explicity 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.
2. There appears to be a consensus that protection afforded to trademark owners will depend upon the type of top level domain.
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:
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:
Names Counsel Liaison Comments: I. Philip Sheppard (European Brands Association, and a Names Council representative of the Commercial and Business Constituency)
II. Kathryn Kleiman (Association for Computing Machinery’s Internet Governance Project, and a Names Council Representative from the Noncommercial Constituency)
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?
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:
Respectfully submitted,
Michael D. Palage
See the accompanying attachment for the following documents:
I. General: The Sunrise Proposal Plus Twenty shall be incorporated into the rollout of new top-level domains. During the Sunrise Period, owners of trademarks and service marks (marks) will be able to register their marks as domain names on a discounted, first-come-first-served basis in a new top-level domain before that new domain is opened to the general public. II. Eligibility: Any owner of a
valid national trademark or service mark registration is eligible
to seek to register as a domain name during the Sunrise Period
that mark and up to an additional twenty (20) variations of such
mark, provided that the national registration for that mark issued
at least one (1) year prior to the date on which the mark owner
applies to register the mark and any variations of the mark as
a domain name. The name of the domain name registrant must be
the same as the name of the owner of the mark registration. At
least one domain name registration must contain the material
textual element (excluding punctuation) of the registered mark.
III. Procedure for Sunrise: A. ICANN must provide at least ninety (90) days notice to the general public of its intention to introduce a new top-level domain. Notice must be in the form of both an announcement on ICANN’s website and an official Press Release issued by ICANN. B. At least 60 days prior to the beginning of the Sunrise Period, ICANN shall post a list of all registrars participating in the Sunrise Program, along with a hyperlink to each registrar’s website. C. At the end of the ninety (90) days notice period, a thirty (30) day Sunrise Period shall begin, at which time a mark owner that is eligible for this program under Section II may submit a domain name registration application to register a domain name which is the same as the mark it owns, along with applications for registration for up to an additional twenty (20) variations of such mark. These domain names shall be registered on a first-come-first-served basis. D. At the end of the Sunrise Period, the top-level domain shall be open for registration of domain names to the general public. IV. Application Template:
B. The domain name registrant must affirmatively check off a box on the Application Template stating that it has a valid national mark registration that issued at least one (1) year prior to its application for registration as a domain name. C. The Application Template should affirm that the registrar shall have no liability for administering the Sunrise Program so long as the Registrar acts in accordance with the policies set forth in the Sunrise Proposal. D. The domain name registrant must affirmatively check off a box on the Application Template stating that the domain name registrant’s registration of the domain name is in conformity with the charter for that particular top-level domain (if not a generic TLD). E. Registrars would be under no obligation to check the information contained in an application to register a domain name submitted during the Sunrise Period; however, registrars would be obligated to promptly "take down" any domain name registered by anyone not eligible to register domain names during the Sunrise Period once that fact was called to their attention. V. Use Limited, Chartered Top-Level
Domains: The IPC recommends that although a Sunrise Period
should be incorporated into the roll-out of every new top-level
domain, there may be specific, use limited, chartered top-level
domains in which a Sunrise Period may not be necessary. This
underscores the reality, however, that the process by which proposed
charters for new, use-limited, chartered TLDs are developed and
approved will be of critical importance to their success. Such
a determination should be on a case-by-case basis as part of
a "Charter Certification" process. The IPC recommends
that this process include, inter alia: (1) means to ensure that
charters are as clear and as specific as possible about permitted
and prohibited registrants and uses, (2) an obligation for registrars
to "take down" any domain name that is used in a manner
that is inconsistent with the use limitations in the charter
once that use is called to their attention, and (3) consideration
of additional means for resolving bona fide disputes concerning
the uses of domain names in a manner inconsistent with charter
limitations. U.S. Small Business Administration April 14, 2000 Michael Palage
Dear Mr. Palage: As you are aware, the Office of Advocacy of the U.S. Small Business Administration has held a roundtable discussion and conducted other outreach efforts to ascertain the small business impact of a proposal under consideration of Working Group B on the Internet Corporation for Assigned Names and Numbers ("ICANN"), which is tasked with the project of determining famous trademark protection. Regrettably, the Chief Counsel, Jere Glover, is out of town this week and was unable to review the information gained during the roundtable and our other outreach efforts. As a consequence, I am submitting these comments under my own signature. The Chief Counsel will review and make additional comments as needed when he returns to the office. As a consequence of these outreach efforts, Advocacy has concluded that the current "modified sunrise proposal" would have a detrimental impact on small business and should not be adopted. Instead, Advocacy recommends that the working group adopt one of the three alternatives that we describe below. To our understanding, the modified sunrise proposal contains the following elements:
Flaws in the Modified Compromise Proposal Based upon information gained through our outreach efforts, Advocacy believes that the modified compromise proposal has foundational flaws that prevent the office from endorsing its adoption. First, the sunrise provision allowing early registration by trademark holders is not grounded in law. U.S. trademark law is a balance of the rights of holders and the rights of non-infringing users of the mark. Furthermore, under U.S. trademark law, the holder has duty to police its mark. An early registration is granting trademark holders rights that are above and beyond the 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. Finally, the sunrise creates a presumption that commercial use is the superior use of the Internet. While Advocacy believes that commercial use of the Internet is valuable to the economy, we do not believe that it should be given superior rights to individuals and non-commercial interests. Second, the sunrise provision will not be effective in curbing trademark violations. The number of variations whether it be 5, 20 or 100 will never be enough to prevent all of the possible variations of trademark violation. Also, trademark violation can occur at the third or fourth levels of the domain name, such as www.nike.something.com. With the near infinite variations on trademarks and ability to circumvent the sunrise protections, the sunrise will be overly-broad, as discussed above, and underinclusive as it will not prevent trademark violation while depriving thousands of non-trademark holders of the ability to register for the name they desire to use in a non-infringing manner. Third, as Advocacy started in its April 4, 2000 letter, trademarks are already adequately protected by the Uniform Dispute Resolution Policy ("UDRP") and the Anticybersquatting Consumer Protection Act ("ACPA"). Also, through its outreach, Advocacy has learned private companies are now offering a monitoring service, which will track domain name registrations and notify a trademark holder when a domain is registered that is similar to the holder’s trademark. Between the UDRP, the ACPA and these monitoring services, trademark holders have all the tools they need to prevent cybersquatting and enforce their trademark rights. Fourth, there are factual differences between the circumstances surrounding the introduction of new generic Top Level Domains ("gTLDs") and the historical trademark violations in .com. All trademark holders will be on notice of the introduction of new gTLDs. No one will be taken by surprise when a new technology erupts on the scene like it did with .com. Also, the legal landscape has changed with the introduction of the ACPA and the UDRP to prevent cybersquatting. Fifth, Advocacy is concerned that the sunrise period could create legal liabilities for ICANN. As a non-profit corporation registered in California, ICANN is subject to U.S. law, and there is a question whether this registration preference violates the First Amendment of the U.S. Constitution as a restriction of free speech. In addition, it is conceivable that a sunrise period would constitute a restraint in trade or an attempt to combine with other persons to monopolize the name space, which is a violation of Sections 1 and 2 of the Sherman Act. Alternatives that Protect Trademarks without Negatively Impacting Small Business Three alternatives were proposed by Advocacy or the participants during the course of its outreach efforts. Advocacy believes that all three of these alternatives satisfy the rights of trademark holders while preserving opportunities for small businesses. The first alternative is to introduce a large number of new gTLDs. This expansion of the name space will provide alternative names to businesses and diminish the value of cybersquatting. With each new gTLD, the ability for any cybersquatter to extort payment from a particular trademark holder diminishes. Furthermore, as new gTLDs are introduced to the Internet, consumers will become aware that a .com Web site is different than a .biz Web site, lessening confusion. This alternative is especially attractive because of the need for new gTLDs that currently exists and the opportunities such an expansion will bring to small businesses. The total number of gTLDs ultimately introduced must be high for this alternative to work effectively. The introduction could be measured and at a reasonable pace but must be continual and limited only by what the market will bear. The second alternative is to create a chartered gTLDs for use by trademark holders. This gTLD could be called .fame or .tmk. It’s charter would allow all registered trademarks to register within it. This insures that trademarks would have the domain name of their choice, assuming that another trademark holder did not register it first. The third alternative is a variation of the modified sunrise proposal. Under this alternative, the holder of a registered trademark could register the name identical to its trademark during the sunrise period for a chartered gTLD whose charter corresponds to that trademark’s international class of industry and service. This means that a the sunrise registration would only apply to chartered gTLDs and that only those trademarks whose class of industry or service corresponds with that charter could register during the sunshine period. Furthermore, the holder may register the domain name identical to the trademark – no variations. There would be no sunshine period for unrestricted gTLDs and gTLDs whose charter does not correspond with a class of industry. Advocacy believes that this proposal will not have an overly burdensome impact on small businesses, while affording some measure of special protection for trademark holders. Furthermore, it will be efficient for registrars because they only have to ascertain that the sunrise registered name is a registered trademark instead of ensure that 20 or so other names are variations of a trademark. To conclude, Advocacy asks the working group not adopt the modified sunrise proposal. Instead, it should adopt one of the three alternatives that Advocacy has listed in this letter. We will gladly continue to work with you and the working group to reach a conclusion that is satisfactory to all. Sincerely, Eric E. Menge ATTACHMENT # 3 Richard Sexton (1) - The Exclusionary Proposals Have No Basis In Technology Or Law These comments essentially boil down to the fundamental maxim of Law, "Where there is a right, there is a remedy." The ICANN Intellectual Property Constituency's various exclusion or "sunrise" proposals are not in accordance with the remedial nature of the Law. These proposals are for prospective, pre-emptive restraints of the kind that we do not permit our own government to exert in the enforcement of criminal law relating to the use of words. Even where an injunction is granted, an injunction is (a) directed to identifiable individuals, (b) for cause and (c) based on an adjudication of relative harms. Why should private individuals have greater power to pre-empt the actions of others to prevent potential civil liability when we do not grant government that power to prevent criminal violations? A trademark gives the owner a right to seek a remedy for a violation of the trademark. Trademarks do not provide an automatic, a priori pre-emption of the use of alphanumeric characters in the real world. Trademark law has developed to balance various interests. There is no reason to provide a new kind of trademark right on the Internet which does not correspond to any principle ot trademark law in the offline world. The IPC proposals have perverted Law to "Where there is a right, there is a way to prevent people from violating it." That has never been the way Law functions in our society, and it has certainly never been the way the Internet functions. If it's not "technical administration", and if it is not "law", then what is it? Technical concerns say (a) domain name allocations are to follow RFC1591 - first come, first served and (b) there is a need for a larger name space. The Law says that RFC1591 has valid legal regulatory authority (as per the PGMedia decision of the DC Court of Appeals) and that violations of private rights can be remedied after the fact. The IPC proposals do not arise from valid technical or legal principles. [redacted by chair]IsaPedophile.com is libelous, and has legal consequences as a string of text. HaveSexWithMeForMoney.com is a criminal solicitation. TheHolocaustIsaJewishLie.com is likewise a criminal utterance, but in Germany, not the U.S. MuhammadTheProphetAtePork.com is blasphemous and likely a capital offense in several countries. Yet, despite these and other categories of legally significant alphanumeric character sequences, some even criminal in nature, nobody is proposing a prior restraint on them. Trademark infringement is only a subset of a much larger category of legally-proscribable uses of alphanumeric characters. Why, among all forms of legally significant text strings, are trademarks singled out for a heretofore unknown pre-emptive right? Because ICANN, a technical body, has an "Intellectual Property Constituency" with non-technical concerns. There is no "Libel Constituency", "Anti-Obscenity Constituency", "Criminal Solicitation Constituency", or "Religious Constituency". Why not? Because these issues do not relate to technical administration, which is the mandated mission of ICANN. Despite the talk about the "importance of stability to the development of e-commerce", ICANN was not chartered to be about commerce or whatever else for which the internet might be used. They are supposed to be running narrow technical aspects of a computer network. "Do the bits get from one end of a wire to the other?" is not a legal question. Re-engineering the remedial principle of law as a proscriptive technical policy makes no sense. Trademark infringement happens in telephone book listings. All kinds of shady folks get fradulent telephone book listings, or use "Yellow Page" ads which infringe trademarks or convey a false or unfair commercial impression. These situations are dealt with all of the time by trademark lawyers. They are not dealt with by providing a pre-emptive famous name list or a sunrise period for telephone books. In fact, the makers of the telephone books are not held liable for these kinds of things. In the context of 800 number assignments, the FCC has decided that dealing with trademark issues is a job for trademark lawyers, and not for technology policy makers at the FCC. Why should ICANN be any different? The DNS is a telephone book. It maps names to numbers in precisely the same way. Why is it that we manage to publish telephone books without difficulty? Why would we argue about adding a new telephone exchange in an area code, become concerned that the possibility of a greater number of telephone listings would provide more opportunities for trademark infringement, and suggest that it would subject the telephone book publishers to legal liability? Because they are ridiculous assertions. But somehow the analogous assertions are taken seriously in the context of the DNS. Even when someone has successfully asserted a trademark right involving a telephone listing, the books themselves are not published again until a year later. The DNS can be altered within a matter of hours to reflect a succesful, and remedial, assertion of trademark rights. That serves the interests of IP owners even more efficiently than an analogous system -phone books - with which we have lived comfortably for years. To make the picture even clearer. I can infringe trademarks with my business card, letterhead stationery or outdoor signs. But when I walk into the print shop, there is no IP daemon sitting on the shoulder of the printer with the job of determining what words I may or may not have imprinted on my business materials. I bear the legal consequences of my choice, but I am as free as anyone else to have my own business materials without having to wait outside during a "sunrise period" in which the "first among equals" negotiated what is to be left over for me to have. And so we develop a byzantine system of chartered and non-chartered TLDs, and a system of restrictions and lists and sunrise periods on top of that. The next day after I, a lowly individual, am allowed to register domain names with the great unwashed masses, I obtain generic.generic (in the new "generic" TLD). And the day after that I set up my server to resolve the URL: kodak.ibm.cocacola.generic.generic/kiddieporn.html . Then what did any of this nonsense buy for anyone other than delay and large expense account bills? Bold prediction #1 - there will continue to be rampant intellectual property violations on the Internet. Bold prediction #2 - there will be no way to prevent it, but there will remain remedies at law. (2) - Artificial Constriction of the Name Space by the IPC is Hurting Small Business There already are mechanisms to enforce trademark rights in cyberspace - the UDRP and the ACPA among them. Both of these mechanisms are available to anyone who can afford a lawyer, which, with the UDRP, includes many but not all small businesses. Genuine cybersquatting hurts small businesses in smaller gross monetary terms, but perhaps in larger proportionate terms for the affected businesses, than it does larger businesses. However, when BigBusinessCo is faced with a squatter who has occupied BigBusinessCo.com, .net and .org, then BigBusinessCo can readily afford to get rid of the squatter. Joe's Fish Market is faced with a much larger problem, because they cannot so readily afford to do the same thing. The presence of a large, and we mean very large, number of TLDs does two things to help Joe's Fish Market - it increases the cost of pre-emptive cybersquatting and it decreases the value of any one domain name occupied but not used. If someone is sitting on the domain "cocacola.irrelevant", not producing any content at a corresponding website, and demanding thousands of dollars from Coca-Cola, then why would anyone, including Coca-Cola care? The commercial injury to Coca-Cola of a tiny vacant island in a sea of thousands of TLDs is approximately zero. In fact, it is actually zero. The squatter with his do-nothing domain name can pay annual registration fees to his heart's content and remain unnoticed and ignored. Now, yes, there is such a thing as trademark infringement, but if the only thing one sees at a web site is "This Domain for Sale!" or "We Registered At Lousynames.com!" then what is the basis for any consumer to be confused about anything? They were looking for a brown fizzy beverage in a red can. "Hmm.... must not be at this domain name...." Conclusions Several have floated a compromise proposal of a mixture of "chartered" versus "non-chartered" TLDs, and how many of each there should be. The question of how many is comparable to the question of whether it would be a good idea to have a large quantity of even numbers or odd numbers. In fact, there is no good reason not to have an infinite supply of both. The mechanisms for restricting registrations according to various pre-emptive systems are flawed technically as they do not accord with RFC1591, and they are flawed legally as they do not accord with the remedial character of Law as we in the West have come to know it over a learning curve of hundreds of years. The IPC does not have the technical background to dictate how to run the Internet, and WG-B does not have the legal sophistication to re-write fundamental principles of trademark law, or law generally, in single weekend. This is not how to run a computer network. Richard Sexton John Berryhill, Ph.D. esq The following individuals endorse the comments above: Mikki Barry Judith Oppenheimer Mark C. Langston Gordon Cook Gene Marsh Dena Whitebirch Christopher Ambler John Palmer Peter da Silva David Schutt Michael Brian Scher Mike Sondow Joseph Baptista Dan Steinberg Philippe Landau Kai Henningsen See http://www.open-rsc.org/issues/sunrise/for more signatures. Viewpoint of Ellen Rony in Cyberspace (R&D Books, 1998) On June 25, 1999, the Names Council resolved to create Working Group B to review the treatment of Famous Trademarks. [1] On March 21, 2000, the Chair of Working Group B submitted a Status Reportto the Names Council.[2] It outlines the position papers submitted to date but does not represent a collaborative effort or consensus recommendation. On March 10, 2000, before Working Group B completed its Interim Report,ICANN accepted a 1999 offer by the World Intellectual Property Organization (to prepare a list of globally famous trademarks.[3] Although ICANN said that such a list "would be helpful to its assessment of proper action on expansion of theTLD space," there is no doubt that the list might be used to offer exclusionary rights across all gTLDs for marks that are deemed famous. Further, in making the request for such a list without the deliberative input of Working Group B, ICANN bypassed its own structural process andplaced WIPO in a quasi-judicial role, absent international agreement forsuch authority. The entrance criteria for what is globally "famous" are not defined and donot exist. In its Final Report, WIPO recommended the following criteria: [4] (a) degree of knowledge or recognition of the mark in the relevantsector of the public; (b) duration, extent and geographical area of any use of the mark; (c) duration, extent and geographical area of any promotion of themark; (d) duration and geographical area of any registrations of themark; (e) the record of successful enforcement of the rights in the mark; (f) value associated with the mark; and (g) evidence of registration of domain names that are the same ormisleadingly similar to the mark. (a) If famosity is defined in terms of knowledge or recognition of themark, it have deep market penetration in one country while being virtuallyunknown elsewhere. (b) If famosity is defined in terms of geographical area of any promotionand use of the mark, the easy global reach of the Internet will quickly blur these lines as a delineator. (c) If famosity is defined in terms of duration, newcomers to the marketplace such as Netscape and Yahoo, who arguably have driven e-commercegrowth, may not pass this qualifier. It is quite likely that anothersuccessful start-up will come along which meets all the criteria save this one. (d) If famosity is defined in terms of the number of country trademarks acquired, then famous only means having deep pockets, and reflects an opportunity for companies to buy global ownership of a slice of the global name space, exclusive worldwide rights to a domain name. (e) If famosity is defined in terms of successful enforcement of rights inthe mark, how will this qualifier be applied to marks that remain untested in the legal process. (f) If famosity is determined by the value associated with the mark, presumably defined in terms of sales receipts or advertising expenditures, what happens if there is a financial reversal or an acquisition that absorbs the famous name? (g) Using evidence of registration of domain names that are the same or misleadingly similar to the mark to determine famosity is unworkable since trademark registrations can issue for identical marks. Individual determination would be required to assess which trademarks were responsible for which domain name registrations.Further, how is "misleadingly similar" to be determined? At what point does "misleadingly similar" become something altogether different from the original mark. Interestingly, none of these qualifiers acknowledge fanciful and invented names nor the fact that the famosity of a mark is subject to change. Woolworth's was famous for decades and was traded on the stock exchange bythe letter "Z".The stores are now closed, so does it lose its famosity status? A historian might say once famous, always famous, but most of us in the high tech world for the past 20 years have seen companies both soar and fall.Would loss of famosity be monitored annually? Would loss of famosity result in concurrent loss of the right to exclusivity? Would that result in a scrambling for those names released back into the available pool? The disputed rights to use a domain name should be reserved for the courts. Sufficient legal protections for trademark owners (in the U.S. at least) exist through the Trademark Cyberpiracy Act and Uniform Dispute ResolutionPolicy so that exclusive worldwide protections for famous names seems superfluous, not to mention potentially capable of unleashing a new bag of worms. How many, which ones, how determined, who decides? These are not insignificant issues. This famosity list could unleash a Pandora's box of woes and paradoxical situations that have not been adequately assessed. Most likely, the famous marks list will become politicized and result in inconsistent determinations and constant cacophony over which marks get anointed as famous. When you begin talking about rights in gross that cross international boundaries, the debate should be moved up to the level of international treaty. Even judicial determinations that a mark is famous within a cause of action arising under the Federal Dilution Act are only appropriate within the U.S. The WIPO consultations reported that there may be no more than 1,000 famous marks.The burden of identifying them and, among registrars, of providing themwith gTLD exclusions seems excessive given what a small percentage of the 11+ million domain name registrations such famous marks represent. A more fitting activity would be the creation of a top level domain called.TMK, where a national trademark registration would be a bright line qualifier. Lastly, certainly not least, determining famosity and enforcing the definition against third parties is not an appropriate function of a private corporation whose charter is the technical coordination of the Internet. ICANN has exceeded its authority to manage and perform four specificfunctions related to coordination of the domain name system:[5] 1) set policy for and direct allocation of IP numberblocks to regional Internet number registries; 2) oversee operation of the authoritative Internet root server system; 3) oversee policy for determining the circumstances under which new TLDsare added to the root system; and 4) coordinate the assignment of other Internet technical parameters asneeded to maintain universal connectivity on the Internet. In conclusion, I do not support the implementation
of any mechanismfor the exclusionary protection of famous marks
because legal mechanismsalready exist and because this exceeds
the scope of ICANN's authority.ICANN's purpose is not to safeguard
the Internet for a specific class of users--the holders of famous
marks. Ellen Rony _________________________________________________ [1] Results of DNSO Names Council meeting on June 25th,1999 - http://www.dnso.org/dnso/notes/19990625.NCmeet.html [2] WG-B Status Update by Michael D. Palage(Chair) - http://www.dnso.org/wgroups/wg-b/Archives/msg00655.html [3] Preliminary Report, Meeting of the ICANN Board in Cairo (March10, 2000) - http://www.icann.org/minutes/prelim-report-10mar00.htm [4] Final Report of the WIPO Internet Domain Name Process(April 30, 1999) -http://ecommerce.wipo.int/domains/process/eng/final_report.html [5] U.S. Department of Commerce, Management of Internet Names andAddresses, National Telecommunications and Information Administration Statement of Policy (June 5, 1998) - http://www.ntia.doc.gov/ntiahome/domainname/6_5_98dns.htm
ATTACHMENT # 5 15 April, 2000 Michael Palage Michael, TUCOWS.com Inc. is responding in the limited time available to your request that we comunicate our views concerning the latest proposals from the Intellectual Property Constituency, called "sunrise plus twenty." While we are aware that you are acting as best you can in limited circumstances of budget and time, TUCOWS must protest the inadequate consultation that has taken place in regard to these proposals, and must on grounds of substance reject them in their entirety. We find it increasingly anomalous that the secretary of the registrars association is acting to compromise the interests of IP holders with the interests of the vast mass of Internet users in this way. The essence of ICANN’s problem is the disproportionate attention which is being given inside the working groups, and, increasingly outside, in private conferences, to the pretensions of the IP community to stall the process of domain name expansion, on grounds that we and our Internet users consider to be dubious and, in some cases, in outright error: error both as to policy as regards the future direction of the Internet, and more fundamentally, as to their power to hold up domain name expansion based on the monopoly of the NSI over the root server. You have received commentary from John Berryhill, which, in our view, devastates the position of the IPC that they are entitled to extra-legal privileges in the matter of establishing domain names for famous names, and lately, for all trade mark holders in all countries. 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. The IPC is threatened by this approach because it diminshes the value of what they are protecting, and the value fo the services they render. The issue is not, as they suppose, "confusion" in the marketplace, or the protection of consumers. It is the protection of the economic position of intellectual property lawyers. What we are actually observing in the saga of domain name expansion is a power-grab of major proportions over the architecture of the Internet, using ICANN not so much as a representative forum for IP interests as the embodimenet of IP lawyers’ interests. This tendency is not good for the Net, for Internet users, for small businesses which need the increase of namespace, and ultimately it will lead, if unchecked by common sense and contrary interests, to the avoidance of the DNS and the downfall of ICANN. The policy that should be followed in relation to IP interests is this: no privilege shall be granted to any trade mark or famous name holder by ICANN that is not available under domestic trade mark law. We understand that this principle will need adjustment to accord with the global nature of top level domains, but by sticking to it ICANN will do better for the Internet, for millions of users, and even for the interests of IP owners, than a policy of restriction. TUCOWS has been supporting reasonable compromise between IP owners and domain name expansion for some time. On reflection, We have decided that we are not going to get domain name expansion in this way, and that we are in fact acceding to a takeover of the political processes of ICANN by a set of interests that oppose what the Internet stands for. We urge you to reconsider the nature of the compromises you may be making, and what you may consider to be realistic. To us at TUCOWS, compromise with the kinds of proposals we are seeing coming from the IPC will get us nowhere. Yours sincerely, Consumer Project on Technology WG-B Comment: By extending the sunrise first right of refusal to all trademarks, and to 20 variations of names, it appears as though ICANN will be shielding trademark owners for a wide range of common forms of criticisms and civil society organizing (aolsucks.com, ibmunion.com), plus, extending rights in a given line of commerce into all lines of commerce and activity -- a right that goes beyond current global legal traditions. I would note also that already some persons are claiming that a domain like boeing.union would be a commerical use, because unions represent the commercial interests of workers. The some could be said for bellatlantic.customers, if that TLD was used to organize Bell Atlantic customers in regulatory proceedings. This illustrates only a few of the problems with the IPC proposal, and the degree to which some would use trademark law to prevent workers, consumers or others to defend their interests in the global economy. Like most people with other interests than ICANN, I have a very difficult time keeping up with everything. But it seems to me that this was presented very late in the game, and without any warning. Correct me if I am wrong about this. However, if this is the case, you should provide additional time for comment. I would indicate also that I am not unsympathetic of the need for protections of trademarks, and among other proposals, have suggested that all the applicants for registry test bed make their own proposals to address the concerns of trademark owners, and that these different approaches be part of the test bed. Jamie Love ATTACHMENT # 7 I would like to endorse the comments made by Tucows and others regarding the flaws in the ‘sunrise’ proposal. A few additional points: 1) The latest proposals are utterly unfair and unnecessary. It is so hard to take them seriously that one is almost forced to assume they are proposed for tactical reasons—either to stall the process entirely, or make the unworkable famous marks lists proposal seem almost sensible by comparison. To take only the most obvious problem: everything depends on having some detailed and specific mechanism for sorting out conflicting claims to millions of names; hand-waving that a dispute settlement mechanism will have to be found at some later stage is a recipe for either gridlock or chaos. 2) The proposals are completely outside the mandate of your working group as they do not relate to famous names. 3) Famous names worldwide are now protected by the in rem provisions of the the US anti-cybersquatting law. The situation which produced a demand for protection of famous names during the WIPO process, and which has cruised along on auto-pilot throughout the ICANN process, simply does not exist any longer. Famous marks may or may not still need extra protections in the DNS, but whatever need exists is radically different from 12 months ago. In other words, the ‘sunrise’ proposal has the potential to become a classic ICANN "consensus policy" much like the ill-fated indirect election of membership directors. Thank you for allowing persons whose access to the debate is limited to the mailing list to have as much as 48 hours to comment. Howver, you should be aware that, contrary to the unkind comments of some ICANN observers, this is actually *less* than the average amount of time ICANN usually allows, which has sometimes been as high as two weeks. Also, it has become something of a habit to have comment periods during the work week, rather than mostly on weekends (albeit sometimes in the August holiday period). -- A. Michael Froomkin | Professor of Law
| froomkin@law.tm -->It’s warm here.<-- ATTACHMENT # 8 First, the "sunrise" proposal. This was not been discussed on-list, and if any consensus-building has occurred around it, it’s occurred behind closed doors. I urge you to not include it in the report. If you do, a very large, public stink will ensue. Given the TM interests concerns, I would be willing to entertain a famous mark list, a sunrise period, and other remedies IN THE FOLLOWING CIRCUMSTANCES: Certain chartered TLDs are created to correspond to the mark categories created and managed under US law and international treaty. The remedies I will accede to will only be applied to these TLDs as an exception to namespace, not as the rule. I.e., these remedies will only by applied to those chartered TLDs that correspond directly and by definition in the charter to business categories. For example, create TLDs under the existing country-code TLDs that correspond to each of the 30-odd categories currently defined under US and international law. Any remedies that the TM interests wish to apply may exist under these, and only these, TLDs. This creates a ‘sandbox’ of a sort for the TM interests. It also addresses the following issues that the TM interests have raised in opposition to the introduction of new TLDs:
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