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

As another famous trademark holder, I would like to echo Bell Atlantic's
assessment.  Famous marks are particularly vulnerable to third party abuse
precisely because of their fame:  Recognizing the trademark owner as a "deep
pocket" numerous members of the Internet have developed a sophisticated
practice of attempting to register famous marks in the hope of either
confusing the public or receiving exhorbitant sums from the rightful owners.
The testimony gathered during the WIPO hearings abounds with incidents of
such misconduct.  To require rightful trademark owners to chase these clear
infringers around the globe to protect their rights only succeeds in
rewarding the infringers.  Such an impediment will only hurt the internet
since it will render it more difficult for trademark owners and the public
at large to rely on the medium for accurate information.

Defining a famous mark is a complex process.  However, WIPO spent a great
deal of time and utilized a great deal of expertise to provide us with a
practical process.  That process should be endorsed and implemented.

> -----Original Message-----
> From:	DEUTSCH, SARAH B. [SMTP:SARAH.B.DEUTSCH@bellatlantic.com]
> Sent:	Wednesday, September 22, 1999 3:25 PM
> To:	"wg-b@dnso.org" ; "Michael D. Palage" 
> Subject:	[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 
>      marks.
>      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 
> installed.
> 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
> exchange.
> 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
> group.