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[wg-b] Response to Jonathan's Question
Back when Jonathan contacted us last week to ask for questions, I shot off a
quick response, but I didn't put it into context, or explain why I felt it was significant.
I would like to repeat that question here, explaining it a little better, and to ask for
feedback from the rest of the group -- particularly those of you who don't
share my perspective on the issue. In fact, the more you disagree with me, the
more I would like to hear from you. Here goes:
The Paris Convention (Article 6-bis) commits signatories to protect other signatories'
famous trademarks (including translations) where the mark is well-known, by cancelling
or refusing to register a trademark. WIPO 4 proposes to expand this definition of a famous
mark not only to include domain names, but to include domain names that are 'misleadingly similar.'
My first problem with this is that domain names are not trademarks under US law,
or under any international law that I am aware of. (I'm sure you've noticed I'm not an IP lawyer,
but let me clarify that I'm not a lawyer at all.) I suspect that this alone requires renegotiation of
the treaty. Taking this action without the benefit of a treaty, I fear, could theoretically encourage
some signatories to consider the Paris Convention as having been rendered null and void, or perhaps
unilaterally abrogated by all countries adopting the expanded meaning of the treaty.
My second problem with this is that, having elevated domain names to this status, WIPO 4 proposes
a further extension of the treaty by ambiguously creating a separate standard for domain names -- one
in which 'misleadingly similar' domain names are covered by the protections of famous marks. This
raise two sub-concerns. First, is the ambiguity truly a domain name exception, or is the language
imputing to trademarks themselves the same expanded definition? The latter sounds like an invitation
to chaos to me, which tends to make me think that is not really the intent. Second, assuming this truly
intends to create an exception for domain names, does that exception also require renegotiation or
consultation with the signatories?
My third concern is this. TRIPS extended the Paris Treaty's limitation to companies that offered similar products or
services to cover companies with dissimilar products or services if an intent existed to harm the reputation of
the true trademark holder. WIPO 4 appears to embrace this definition with respect to domain names, while
casting off the harm qualification. Again, does this require signatory consultation, and does the absence of
such consultation create any probability that current signatories will repudiate the treaty in order to disavow
the expanded meaning?
My suggestion for resolving these concerns was this: could we ask the many brilliant young lawyers on the
ICANN staff to prepare a legal memorandum assessing these questions? In light of Congressman Bliley's
repeated requests for the legal analyses underlying many of ICANN's early steps, it seems likely that ICANN will be asked at some point whether it took this step. I say this only to suggest that
there may be ancillary benefits to requesting this legal memorandum at this time.
In the final analysis, I would just plain like to know the answer.
Looking forward to hearing the group's thoughts on this.