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[wg-b] RE: (wg-b) Issues to Consider

     As one famous trademark holder, I want to weigh in on the debate.  I 
     think we are quite far from reaching any "consensus" on the point of 
     dismissing protections for famous marks.  In fact, most large 
     trademark holders, --including IP associations like INTA and PSWG-- 
     strongly support protections for famous marks.
     The starting point, to which we all should give the greatest 
     deference, is WIPO's Final Report.  The WIPO hearings (15+ conducted 
     by a panel of experts in public meetings all over the world) resulted 
     in the clear conclusion that most commentors favored the establishment 
     of a proactive exclusion for famous marks.  WIPO correctly concluded 
     based on their hearings and findings that it would be economically 
     wasteful to open up new gTLDs without safeguards for protecting famous 
     No, the exclusion process isn't a perfect remedy.  However, it does 
     help famous trademark holders protect their "essential" marks from 
     being preemptively grabbed up as new gTLDs open up.  WIPO made sound 
     recommendations for establishing a process for granting exclusions 
     using a panel of well-qualified decisionmakers. The determination of 
     what constitutes a famous mark is not one that this group needs to 
     recreate -- the WIPO experts, including Fred Mostert, the world's 
     leading authority on famous marks, assisted WIPO in developing factors 
     to be applied by qualified decisionmakers (See WIPO Report Section 
     284).  The 800 number example discussed on this list is a good real 
     world example of how this process can work to ultimately protect 
     consumers from confusion and fraud.
     Sarah Deutsch

______________________________ Reply Separator
Subject: (wg-b) Issues to Consider
Author:  "Michael D. Palage" <SMTP:mpalage@infonetworks.com> at GCOHUB
Date:    9/22/99 11:19 AM

No one to my knowledge has specified a specific fixed time line (i.e. drop 
dead date) for this working group. However, saying that, I believe the names

counsel would like to have a draft report to vote on before the November 
ICANN meeting. Both Jonathan and myself intend on giving a status report to 
the general assembly in LA, similar to the one he gave in Santiago. However,

this time I get to answer all the fun/hard questions:)
CcTLDs & Famous Trademarks
Several people have asked me about how other ccTLDs protect famous marks. 
The one country that I know of for sure is Brazil, which according to my 
research protects about 120 marks that they deem famous. My inquiries for 
the list of marks and the procedure that they follow for deeming a mark 
famous was denied (see one of my first posts to this list). If anyone in 
this group could follow-up on my investigation with the Brazilian NIC it 
would be GREATLY appreciated. I think the investigative process of this 
working group requires us to at least look at the system they have 
Working Group C had a rather lengthy discuss on how to define consensus. 
Please refer to the following link for what in my humble opinion is rather 
an information article entitled Reaching Consensus on Consensus, by Sandor 
P. Schuman.
http://www.albany.net/~sschuman/consrule.htm. It makes an important 
distinction between "consensus as an outcome" and "consensus as a process". 
The first vote that the votebot will handle is defining what will be 
consensus for this group.
I spent last night looking up in various dictionaries and other procedural 
handbooks a magical number that represented what a consensus was. Amazingly 
enough I could not find a clear-cut  definition, which is funny considering 
that consensus is probably the second most widely used phase next to "open 
and transparent".  If any one on the list would like to offer his/her 
insight on what consensus is please do so with specific references to 
organizational by-laws, articles, books, etc. Although I respect everyone's 
personal opinion in this process I would like the group to make a decisions 
base upon objective third party standards.
With regard to my comments about refusing to adopt a fatalistic viewpoints, 
scrapping the entire working group, etc.  These were my "personal" 
viewpoint. They were just meant to underscore my determination for this 
group to explore ALL options before sitting down to reach a consensus. 
Because I believe there are many issues that have not yet been fully 
investigated, I believe it would be premature to state that this group has 
completed its work. Although I respect anyone's personal opinion that this 
working group has completed its work, there are several issues that still 
need to be explored. Specifically, the Brazilian NIC famous trademark 
procedure, any other ccTLDs that have a formal or informal procedure, well 
respected treatises or documentation on what is consensus, FCC documents 
concerning the 887 right of first refusal and why it was denied with the 877

Please help me find the answers to the questions above so that we can 
undertake the consensus building process.
On a personal notes I would like to thank Harald, Eileen, Martin, Marilyn, 
Dennis and the many others for your insightful comments to date. The success

of any working group is dependent upon the support the chair/co-chair 
receives from the participants. Your comments have helped me see some things

in a light which I did not appreciate before participating in this working