[council] Overview of Comments to WG-B Formal Report

[KathrynKL@aol.com]

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PLEASE DO NOT REDISTRIBUTE ***
To: Names Council
From:   Kathryn Kleiman, Liaison to WG-B
Re: Overview of Comments to WG-B
Date:   May 17, 2000

I have read the 80+ comments submitted in this proceeding, and have prepared 
the following overview to assist the Names Council in its evaluation.  
Nothing in this report is, of course, designed to preempt the reading of 
comments by NC members.  However, in agencies dealing with public comment, at 
least in the US, it is not the practice for every member of the 
decision-making body to read every single comment.  Everyone is much too 
busy.  Rather, it is the practice for an individual to provide clear 
summaries for all to use.  Traditionally, this individual is very familiar 
with the report placed on public notice and the issues it raises.

I believe that it would help the NC effort if, after each Working Group 
report and its comment period, the NC chair or liaison to the WG, summarized 
the comments received.  The NC liaison/co-chair certainly has the detailed 
knowledge of the background and issues, and I hope we can add this duty to 
his/her WG role.

I consider this a working document of the Names Council and respectfully ask 
that you NOT redistribute or repost this report.

Goal of this Report:
The goal of this report is to provide a brief overview of the main issues 
raised in the Palage Report, how those issues were responded to (in overview 
form) by the commenters, and what additional issues were raised by commenters 
that seem to add to the debate.  I also point out some comments that seem to 
well represent the views of the different "sides."

If your time is limited, some good comments to read: 
If you only have time to read a selection of comments, I would read the 
attachment to Palage's Formal Report (link found at the bottom of his report 
or at http://www.dnso.org/dnso/notes/20000417.NCwgb-attachments.html). The 
attachments start with the Intellectual Property "Sunrise Plus Twenty" 
proposal plus responses and concerns raised by the US Small Business 
Administration; Richard Sexton, John Berryhill and additional signatories; 
concerns of Ellen Rony, author of the Domain Name Handbook, Nader's Consumer 
Project on Technology, Professor Michael Froomkin (separate comments);  and 
concerns of TUCOWS, Inc. (a registrar).  I also recommend the comments of the 
International Trademark Association (INTA), those of Raul Echeberria (NCC 
Latin America), the American Intellectual Property Law Association, and Mark 
Chen (at fas.harvard.edu) (found in the WG-B Formal Report comment listing).

Main issues raised in WG-B's Formal Report by Chair Michael Palage:
1) A mechanism is needed for the protection of famous trademark interest in 
connection with the domain name system.
2) There does not appear to be the need for creation of a universally famous 
marks list at this point in time.
3) There appears to be a consensus that protection afforded to trademark 
owners will depend upon the type of top level domain.
4) Should the Intellectual Property Constituency's proposal of a sunrise 
period of preregistrations plus 20 variations be adopted?

An overview of comments on each point: 

1) A mechanism is needed for the protection of famous trademark interest in 
connection with the domain name system.

This issue received some inquiry in the comments.  A few commenters 
questioned whether ICANN should be playing the role of trademark police.  
Professor Froomkin and others pointed out that the situation has changed 
radically in the last few months - with the UDRP and US Cybersquatting bill 
providing significant new protections for famous marks and are sufficient in 
and of themselves.

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

In a group well known for vocal opposition to points that it disagrees with, 
comments were remarkably quiet on this consensus point.   Of the 80 comments, 
only four addressed it on point.  The Japanese Patent Office, and 
representatives of JPNIC and Hitachi Techno-Info Services Ltd thought WIPO 
should play a role in protecting famous marks.  Raul Echeberria (NCC Latin 
America) and Seann Hallisky of Chrotensen O'Commor Johnson & Kindness PLLC 
thought it should not.  Most commenters accepted this consensus point and 
moved on to points they felt were in active contention (see #4). 

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

Again, in a group well known for its opposition, this point appeared to 
receive no opposing views that I found. 

4)  Should the Intellectual Property Constituency's proposal of a sunrise 
period of preregistrations plus 20 variations be adopted?

By far the most contentious issue in the comment period was the Sunrise 
Proposal of the Intellectual Property Constituency.  In this proposal, (the 
most recent to be introduced into WG-B-- about 2 days before the writing of 
Palage's report), the IPC supports roll out of new gTLDs provided there is a 
registration by all trademark owners of their mark plus 20 variations. It is 
this report that yielded the vast majority of comments to the comment server.

These comments generally fell into two categories:  strong support and strong 
opposition.  The strong support came from large and well-known corporations, 
including the New York Times Company, JC Penny's, 3M, and Proctor and Gamble. 
It also came from intellectual property associations such as the American 
Intellectual Property Law Association, the International Trademark 
Association, and individual committee and subcommittee chairs.

The strong opposition came largely from small businesses, individuals, the 
noncommercial community and academia.   Opposing commenters included the US 
Small Business Administration, Chelsea Data, Inc., Fuisz Technologies, Inc., 
Creative CompuSec, Ellen Rony, Richard Sexton, John Berryhill, Professors 
Milton Mueller, Michael Froomkin and Jonathan Weinberg, and the Consumer 
Project on Technology.

Many of the comments were submitted individually; some had large numbers of 
signatures.  All told, the support and opposition was quite evenly balanced 
(with about forty names/companies/individuals taking each of the two opposing 
sides).
One repeated complaint was that the Sunrise proposal was so new to WG-B that 
it had not been adequately vetted within the WG structure.  Among the many 
other arguments, supporters often pointed out that the Sunrise Proposal would 
make registering of marks by trademark owners much easier.  Opponents pointed 
out that the preregisartion plus 20 would hurt those newcomers to the domain 
name space who were seeking additional places to register domain names others 
pointed out that the protection might be overbroad ("The sunrise proposal is 
inherently inequitable, operationally impractical, internally inconsistent, 
and nonconforming with the tenets of trademark law.")   Ellen Rony reminded 
the Names Council:  "A 1996 comment of Jon Postel bears repeating: 'The 
domain name system should provide for the needs of the many rather than 
protecting the privileges of the few.'" 

Perhaps surprisingly, there were a few parties who strayed from the strict 
party line.  In the large commercial community, Intel Corporation indicated 
it would be willing to accept a Sunrise Period with only the primary 
trademark registration, not the 20 variations.  In the small business 
community, the US Small Business Administration indicated that it might 
support preregistration of a trademark registration within the confines of a 
chartered gTLD where the trademark corresponded to the class of industry or 
service served by the charter. 

5) Other issues
The commenters raised a few other issues.  Three commenters (US  Small 
Business, Chelsea Data and Loh Shin Shion) endorsed the NCC call for 
protection of famous marks via a gTLD especially for famous marks (sometimes 
called .TMK or .FAME).      

YJ Park, in her paper on the Asian Perspective on new gTLDs raised some 
important concerns from the perspective of developing countries.

Somewhat tangentially to the famous marks issue, there was a discussion about 
.WEB, and a concern about the NSI proposal. 

Conclusion: 
I look forward to our important discussion on this topic on Friday.  I hope 
this report provides some assistance in your review of the comments.