[comments-wgb] Definition of "Famous" and Expansion of Mark Holders' Rights Should Be Carefully Limited

[Robert Szarka <szarka@downcity.net>]

[Although the following remarks are informed by my experience as an owner 
of two companies involved in registering and servicing domain names for 
businesses and individuals, they are made in a personal capacity.]

"Protecting" the rights of trademark holders generally to the use in domain 
names of words or phrases similar to those in their mark has a number of 
obvious difficulties. For many words and phrases there may be a large 
number of companies with a legitimate claim to their use in various 
industries and locales. At the same time, others may make fair use of those 
words and phrases in commentary and satire. Clearly, "protecting" the 
rights of all trademark holders by denying others an equal opportunity to 
use certain words and phrases would be not only impossibly-complex, it 
would actually expand the rights of one party at the expense of 
others.  Nor is it hard to imagine that, just as some trademark holders 
already use intimidation to arrogate these rights to themselves, the 
benefits would systematically accrue to powerful commercial interests 
rather than small businesses or individual citizens.  Thus, the opposition 
to these "protections" in general is well-founded.

A more convincing case can be made for protecting "famous" marks, if the 
definition of a "famous" mark is clearly stated and the protection is 
appropriately limited.  For example, The Federal Trademark Dilution Act of 
1995 [15 USC 1125 (c)] sets forth a number of criteria for famous marks, 
such as the distinctiveness of the mark, the duration and extent of its 
use, the geographical extent of the trading area in which it's used, and so 
forth. The Act also limits the mark holder's rights with regard to fair 
use, commentary, and other noncommercial use of the mark. Policies 
regarding domain name use that operated along similar principles, whose 
scope was clearly and strictly limited, might be fair and productive.

A policy that reserved rights to the use of a word or phrase in all gTLDs, 
even one of limited duration (e.g. during a "sunrise" period), would expand 
the rights of famous mark holders at the expense of small businesses and 
especially the public at large. Similarly, a policy that reserved rights to 
the use of a large number of variations would expand the rights of famous 
mark holders at others' expense. While Famouscompany Inc. might arguably 
have a special claim to famouscompany.gtld and famous-company-inc.gtld, for 
example, no public interest is served by granting it the right to 
famouscompany-sucks.gtld or famouscompany-in-the-news.gtld.

The observations above do not conflict significantly with the points of 
consensus in the working group's report. The question remains, however, 
whether the public interest would be served by offering any special rights 
to holders of famous marks beyond the protections they already enjoy in 
trademark law. As the Noncommercial Domain Name Holder's Subcommittee 
observes in their position paper: "ICANN is a private corporation designed 
for the technical management of the domain name system,  not for the 
creation of new law or policy in the trademark/domain name arena".

The Noncommercial Domain Name Holder's Subcommittee proposes that ICANN 
create a "special domain name space reserved for famous marks", such as a 
separate gTLD. This limited technical solution, if carefully implemented in 
accordance with existing intellectual property law, could preserve famous 
mark holders' identities on the Internet with little or no negative impact 
on other constituencies.  Their proposal should be adopted as the starting 
point for further discussion of this issue.


--

Robert Szarka
CTO/President, Chelsea Data Inc.	+1 800 954 INET
CTO/Partner, DownCity LLC		+1 860 823 3000
#include "whois 'handle RS495@whois.networksolutions.com'"