The State of Affairs in Working Group B
Working Group B was created in Berlin last year. Since then 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.
At the end of last year, there was a call for position papers among the groups' participants. From these papers and subsequent discussions there have emerged a number of viewpoints which are summarized below.
Unlike the Paper presented to the Names Council from WG-C, the following "State of Affairs in Working Group B" is not a collaborative effort by WG-B, and has not been seen, discussed or reviewed by WG-B. It is a good faith effort by elected WG-B chair Michael Palage, with some edits from Kathryn Kleiman, to respond in a timely effort to the request of the Names Council for a status report. The report will now be circulated for review and discussion by the WG-B, and for additional work on consensus. It is contemplated that within three week a formal report will be submitted to the board.
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 internationally. 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 childrens 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."
Registrar Proposal: The Registrar Constituency did not formally submit a position paper. However, the constituency has recently backed the principles set forth in the Palage Proposal. Specifically, the use of a sunrise period to protect the interests of the famous trademark holders. Prior to Cairo, the registrars opposed the creation of a famous trademark list and instead advocated all registered trademark owners being able to participate in the sunrise period. However, as a result of subsequent negotiations with the IPC, they are now willing to support the creation of a Famous Trademark list as long as such list is used exclusively as part of the sunrise period and not as part of any filtering mechanism. During this sunrise period the famous trademark owners would be able to register a limited number of variations of domain names related to the core famous trademark. The registrars are now seeking to gain support for this revised proposal among a broad base of regis! tration authorities, i.e. gTLDs and ccTLDs.
Palage Position Paper: This position paper advocates the creation of a famous mark list primarily using the criteria set forth in the WIPO report. However, it also advocated the use of some objective criteria to provide some safeguards from the list growing out of control. As previously stated in the Registrar Proposal, the Palage Position Paper would allow for a famous trademark owner to register a number of domain name variations during the sunrise period to protect its sub-string variation interests.
Intellectual Property Constituency Position Paper: The IPCs most recent position paper advocates the creation of a famous marks list which 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.
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 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.
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." 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.
Following the ICANN meeting in Cairo and there has been much activity among a couple of the Constituencies, namely the Registrar and Intellectual Property Constituencies. Outlined below are some of the activities that each Constituency has reported
The Registrar Constituency:
Since Cairo, the registrar constituency has potentially agreed upon the following amendments to it original position statement. Specifically, the Registrars are willing to back the creation of a Famous Marks list by a qualified administrative panel such as WIPO, provided that such list is only used in connection with a voluntary sunrise period and NOT in connection with any filtering mechanism.
The registrars, in an effort to seek consensus on behalf of the Intellectual Property (IPC) and the Non-Commercial (NCC) Constituencies, are also considering the following: 1) to address the concerns of the IPC with regard to sub-string protection, which is not currently part of the WIPO Chapter Four proposal, allowing the famous mark holders the ability to register a limited number of sub-string variations during the sunrise period; and 2) to address the concerns of the NCC, whether such a sunrise period is appropriate in any new chartered non-commercial top-level domains.
The registrars are sensitive to the IPC concerns about the sunrise period being perceived by its membership as a forced sale. However, the Registrars believe that such a sunrise provision is inherently more favorable than the current WIPO proposal that only entitles the Famous Trademark owner to an exact match exclusion and an evidentiary presumption in connection with any variation of the mark with respect to the UDRP (see Paragraph 288 of the WIPO Final Report). The registrars will continue to work with all DNSO constituencies to find an equitable solution to this problem. The registrar constituency has also informed the IPC that it is currently working on a Registrar Code of Conduct that should address some of its other concerns related to the controlled responsible growth of the name space.
With regard to the joint proposal by Sheppard and Kleiman, the registrars believe that the document is overall non-responsible to the core issues of Working Group B, i.e. protection of famous trademarks. Moreover, several registrars have voiced strong opposition to the proposal because it appears on it face to advocate the expansion of the names space with chartered top-level domains only. However, there are basic principals within this document that are consistent with the registrar constituencys viewpoints.
The Intellectual Property Constituency:
The representatives of the IPC in Cairo were encouraged by the informal discussions which they held with representatives of the Registrars Constituency. At a high level, it seemed to the IPC representatives that the two constituencies were in fundamental agreement that trademarks should be protected against the abusive registration of domain names by cybersquatters and that this protection should encompass a certain penumbra around the trademark. These discussions gave the IPC representatives a certain degree of cautious optimism that a solution could be found to this problem with continued good faith efforts and dialogue between the constituencies. Achieving a solution to this problem together with a robust, freely available and searchable WHOIS which includes complete and accurate registrant contact data, an equitable and efficient dispute resolution policy, and an effective mechanism by ICANN to ensure compliance with best practices would significantly alleviate th! e concerns of the IPC. In addressing these areas, we believe that the two groups can help to ensure the integrity and trust which consumers and businesses need in the Internet.
The Non-Commercial Constituency:
The Non-Commercial Constituency is currently working on providing the Working Group with its latest consensus building efforts. Kathy Kleiman has notified me that at such time when this information is available it will be forwarded to me for inclusion into the report.
Michael D. Palage
Chair Working Group B