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[wg-b] Working Group B - Position Paper

Listed below is my Working Group B position paper on famous trademark
protection. Because of the size of the word document I was unable to post it
to the Working Group mailing list. Therefore I had to cut and paste it into
this e-mail. As a result, a significant portion of the formatting may have
been lost (check for footnotes). There is a portion of my report (4
paragraphs) that has been redacted. This portion of the report dealing with
Japanese Famous Trademarks is being verified for accuracy by the Japanese
Patent Office (JPO). I will post a revised copy to the web site as soon as
this information has been verified.  It is now 5:45 AM in the morning and I
have not been to bed so there may be some typographical or grammatical
errors, I will correct these as part of the re-post. If there is anyone that
would like me to send them a copy of the word file that is properly
formatted just e-mail me. Later today I will work at gathering all the
position papers and getting them put up on a web site.  I look forward to
everyone's comments.

Best regards,

Michael D. Palage
One Very Tired Working Group B Co-Chair :)

Working Group B Position Paper - Version 1.0 (beta)

I.	Executive Summary:

1. This position paper is an attempt to reach an "equitable" solution for
protecting famous trademarks in connection with the domain name system. Most
individuals and organizations will have concerns about individual components
of this proposal. However, taken as a whole, it represents a workable
solution that everyone could live with in the true spirit of compromise.

2. This position paper is divided into two sections. The first examines the
procedure for how a famous mark will be defined. The second discusses the
mechanisms that will provide famous trademark owners with the ability to
protect their interests, while not impeding upon the legitimate interests of
the Internet Stakeholders or burdening the domain name registration

3. The key feature contained in the "definition" section are dual
objective/subjective criteria for evaluating and classifying famous
trademarks. This differs from the purely subjective criteria currently set
forth in the WIPO report. The benefits of the dual criteria are that it
ensures the Internet community at large that there will not be a
proliferation of questionably famous marks, and it guarantees the truly
famous mark holders that any safeguards afforded them will not be diluted.

4. The key feature contained in the "mechanism" section is a sunrise period
provision that will be incorporated into the roll-out of any new global
top-level domains (gTLDs). During this sunrise period famous trademark
owners will be able to reserve their space in this new top level domain
before it is open to the public. The proposed mechanism also provides a
means for famous trademark owners to protect their famous mark sub-strings
interests without employing the use of overly inclusive or burdensome

II.	Shareholder Dynamics:

5. In an ideal world, where strongly held beliefs and viewpoints were
removed from the equation, agreeing upon adequate safeguards for famous
trademarks would be a much simpler task than the one currently confronting
Working Group B.  As with most things involving the ICANN process, Working
Group B is a cauldron of diverse and strongly held ideological beliefs and

6. This dynamic environment is not necessary a bad thing. The multitude of
viewpoints allows for open and meaningful discussion of the issues. The only
potential danger is everyone's collective energy is spent going in circles
instead of accomplishing anything substantive.

7. For anyone reading this paper that has not been exposed to the dynamics
of Working Group B, the viewpoints held by the respective participants are
as deeply founded and strong fast as those held by factions within other
similarly charged political debates, i.e. death penalty, Free Speech,
abortion, etc.1 And this realization is important because the chances of the
each side being able to "see" the other sides viewpoint is highly unlikely.
Therefore, the only hope of reaching "consensus" within this group is the
adoption of a policy that both sides could live with, but not necessary be
happy about.

III. Defining what constitutes a Famous Mark:

A.	Introduction

8. In trying to define what constitutes a famous mark the memorable quote of
former United States Supreme Court Justice Potter Stewart keeps resurfacing
"I know it when I see it". Although the issue facing Justice Stewart was how
to define a coherent test for obscenity, I believe the resulting dilemma is
much the same. The spectrum of famous mark protection has a little black and
a little white, but a lot of gray, and it is this gray area that represents
this Working Group's greatest challenge.

B.	International Treaties

9. The scope of protection afforded famous and well-known marks are
succinctly set forth in paragraphs 252 through 256 of the WIPO final report
which have been reproduced below for the benefit of the reader.

252. The international protection of famous and well-known marks is
recognized in two multilateral treaties: the Paris Convention for the
Protection of Industrial Property (the Paris Convention), to which 154
States are party, and the Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS Agreement), by which 134 States are bound.

253. The protection of famous and well-known marks in the Paris Convention
is provided for in Article 6bis, section (1) of which provides as follows:

"The countries of the Union undertake, ex officio if their legislation so
permits, or at the request of an interested party, to refuse or to cancel
the registration, and to prohibit the use, of a trademark which constitutes
a reproduction, an imitation, or a translation, liable to create confusion,
of a mark considered by the competent authority of the country of
registration or use to be well known in that country as being already the
mark of a person entitled to the benefits of this Convention and used for
identical or similar goods. These provisions shall also apply when the
essential part of the mark constitutes a reproduction of any such well-known
mark or an imitation liable to create confusion therewith."

254. Four features of the protection provided for in Article 6bis of the
Paris Convention may be noted:

(i) The protection accorded to famous and well-known marks is a protection
against the registration and use of a trademark that constitutes a
reproduction, imitation or translation, liable to create confusion, of a
well-known or famous mark or an essential part of such a mark.

(ii) The protection in Article 6bis extends only to trademarks, that is
marks that are used in respect of goods, and does not extend to service
marks which are used in respect of services. By virtue of the Trademark Law
Treaty (TLT), however, the provisions of the Paris Convention relating to
trademarks are extended to service marks. The TLT was concluded only in 1994
and, while an increasing number of States are manifesting their interest in
becoming party to the TLT, at the present date only 22 States are party to

(iii) The protection extends to registration or use in respect of identical
or similar goods. This feature is usually known as the "principle of
specialty," a principle of trademark law under which protection for a
trademark extends only to the same or similar goods as are covered by the
registration or use of the trademark.

(iv) Article 6bis is silent on what constitutes a well-known mark. The
appreciation of whether a mark is well known is left to the "competent
authority" of the country where the illegitimate registration or use occurs.

255. The provisions of Article 6bis of the Paris Convention are confirmed
and extended by the TRIPS Agreement. Article16.2 and 16.3 contain the
following provisions:

"2. Article 6bis of the Paris Convention (1967) shall apply, mutatis
mutandis, to services. In determining whether a trademark is well-known,
Members shall take account of the knowledge of the trademark in the relevant
sector of the public, including knowledge in the Member concerned which has
been obtained as a result of the promotion of the trademark.

"3. Article 6bis of the Paris Convention (1967) shall apply, mutatis
mutandis, to goods or services which are not similar to those in respect of
which a trademark is registered, provided that use of that trademark in
relation to those goods or services would indicate a connection between
those goods or services and the owner of the registered trademark and
provided that the interests of the owner of the registered trademark are
likely to be     damaged by such use."

256. Three features of Article 16.2 and 16.3 of the TRIPS Agreement may be

(i) Article 16.2 builds on the work of the TLT in extending the protection
of Article 6bis of the Paris Convention  to famous and well-known service

(ii) Article 16.2 of the TRIPS Agreement provides a non-exhaustive guide to
the competent authorities of countries in appreciating whether a mark is
well known. In this respect it provides that, in "determining whether a
trademark is well known, Members shall take account of the knowledge of the
trademark in the relevant sector of the public, including knowledge in the
Member concerned which has been obtained as a result of the promotion of the

(iii) Article 16.3 of the TRIPS Agreement provides for protection that
extends beyond the normal protection under the principle of specialty. It
provides for the protection under Article 6bis of the Paris Convention to
apply to goods and services which are not similar to those in respect of
which a trademark is registered on two conditions: first, that the use of
the allegedly infringing mark in relation to those other goods or services
would indicate a connection between those other goods or services and the
owner of the famous mark, and, secondly, that the interests of the owner of
the famous mark are likely to be damaged by such use. This extended
protection reflects a distinction that is made in many national laws
between, on the one hand, famous marks, which represent that class of
well-known marks that are so famous that they require protection against
infringing use in respect of any goods or services, and, on the other hand,
well-known marks, which require protection against infringing registration
or use in respect of the same or similar goods or services for which the
well-known mark is registered or used. The terminology and practice relating
to this distinction differ somewhat around the world. For this reason, in
this Chapter, except where a distinction is deliberately made, the
collective term "famous and well-known marks" is used, since it is in any
case agreed that well-known marks are the subject of a special form of
international protection.

10. The scope of protection afforded by the Paris Convention, the TRIPS
agreement and the TLT is broad but not absolute. Not every United Nation
member is a signatory to the Paris Convention, even fewer member states are
signatories to the TRIPS agreement, and only a handful of member states have
signed the TLT. Moreover, nothing in these agreements either individually or
collectively extend protection to a mark in a country where it is NOT
famous.2 This shortcoming is significant when you consider that we are
contemplating the extension of protection for famous marks on a global

11. In this regard, it should be noted that the goal of Working Group B is
to afford trademark owners no greater rights in cyberspace than they are
afforded in the real world.3

C.	Other Global Efforts at Protecting Famous and Well-Know Marks:

12. Independent from WIPO's efforts to harmonize famous mark protection
among its member states, individual member states have undertaken their own
effort to protect this special class of marks. Summarized below are some of
the protections afforded famous and well-know marks in the United States and
Japan. This discussion is not meant to be dispositive of the issues before
the Working Group, but to serve as a basis for how other bodies have handled
this rather difficult and complex problem.

13. Prior to 1995, no federal legislation existed in the United States to
protect against the dilution of a mark. Instead, trademark owners had to
rely upon a patch-work of state remedies. However, that changed with the
enactment of the Federal Trademark Dilution Act of 1995. This act was
intended "to protect famous trademarks from subsequent uses that blur the
distinctiveness of the mark or tarnish or disparage it, even in the absence
of a likelihood of confusion."4 It is interesting to note the Honorable
Senator Patrick Leahy's statement from the floor in connection with this
legislation, "[i]t is my hope that this anti-dilution statute can help stem
the use of deceptive Internet addresses taken by those who are choosing
marks that are associated with the products and reputations of others."5

14. The Federal Dilution Act has been a useful enforcement mechanism for
famous trademark owners. However, there has been some concern about its
potential misuse/misinterpretation. For example, in Archdiocese of St.
Louis, et al. v. Internet Entertainment Group, Inc., Case No. 4:99CV27SNL,
1999 U.S. Dist. Lexis 1508 (E.D. Mo., Feb. 12, 1999) the plaintiffs asserted
that the use of a variety of common law marks including "Papal Visit 1999"
by an adult content provider was a dilution of their marks. The court agreed
and granted a preliminary injunction finding the plaintiffs' marks "famous
and distinctive."6 This determination was based on the plaintiff's
expenditure of a "considerable amount of money" during an approximately
seven month period of time.

15. In the United States there exists another class of marks that are
afforded unique protection as a result of specially enacted legislation. A
partial listing of these marks can be found in section 1900 of the United
States Trademark Manual for Examining Procedure.7 Please see Appendix #1 for
a list of these marks contained in Section 1900. As discussed within the
Group, these marks are not primarily protected because they are perceived as
being famous but because of politics influences. However, statutory
protection is extended to a few of these mark because the United States is a
member of a treaty that provides protection for a particular mark

Paragraphs 16 - 19
Deal with Japanese Famous Trademark Protection
And Are Currently Being Reviewed For Accuracy
By the Japanese Patent Office (JPO)
This Material Will Be Added ASAP

D. WIPO Efforts to Date

20. The World Intellectual Property Organization has expended a significant
amount of time and resources in attempting to establish guidelines for its
individual member nations to adopt. The problem of cybersquatting has been a
driving force in bringing the issue of famous mark protection harmonization
to the forefront of the global community. 8

21. The final WIPO report (paragraph 284 & 285) recommends the following
non-exhaustive criteria to be considered in determining whether a mark is
well known in connection with domain names:

(a) In determining whether a mark is a well-known mark, the competent
authority shall take into account any circumstances from which it may be
inferred that the mark is well known.

(b) In particular, the competent authority shall consider information
submitted to it with respect to factors from which it may be inferred that
the mark is, or is not, well known, including, but not limited to,
information concerning the following:

1. the degree of knowledge or recognition of the mark in the relevant sector
of the public;

2. the duration, extent and geographical area of any use of the mark;

3. the duration, extent and geographical area of any promotion of the mark,
including advertising or publicity and the presentation, at fairs or
exhibitions, of the goods and/or services to which the mark applies;

4. the duration and geographical area of any registrations, and/or any
applications for registration, of the mark, to the extent that they reflect
use or recognition of the mark;

5. the record of successful enforcement of rights in the mark, in
particular, the extent to which the mark was recognized as well known by
courts or other competent authorities;

6. the value associated with the mark; and

7. evidence of the mark being the subject of attempts by non-authorized
third parties to register the same or misleadingly similar names as domain

22. Although the aforementioned criteria involve quantifiable components,
the final determination of what constitutes a famous mark under the WIPO
criteria are entirely subjective in nature. The WIPO report discussed but
then discounted the use of purely objective criteria in defining famous
marks, i.e. a certain number of national trademark registrations [100] or a
limited number of famous trademark qualifications [2000] (see paragraphs 264
thru 268 in WIPO final report).

IV. Proposed Guidelines for Defining a Famous Mark

A. Defining a Mark:

23. A potential compromise in defining a famous mark incorporates both
subject and object elements.  The objective criteria portion would serve as
a gatekeeper process before any famous trademark applications could be
analyzed under the subjective criteria set forth in WIPO's final report.
Although there are several participants that are strongly opposed to any
type of objective criteria, this two step process serves several functions.9

24. First, it raises the level of certainty that a trademark owner will have
before applying for a famous mark status. Trademark owners and their
attorneys have expressed concern over the implications a negative decision
might have. Although any negative decision by the panel of experts would be
qualified, having a high objective hurdle raises the level of certainty that
a trademark owner could gauge before proceeding with his famous trademark

25. Second, it provides to the Internet community at large an objective
benchmark by which they can monitor the process to make sure that it is
working. Although the entire process will be open and transparent, it would
be difficult for a lay person to follow/ understand the nuisances of the
subjective criteria contained in the WIPO final report.

26. Third, the WIPO subjective criteria that will be utilized by the panel
of experts in determining a famous mark will function as a safeguard against
an over zealous trademark owner filing trademark applications around the
world in an attempt to circumvent the process.

27. Finally, this objective/subjective dual criteria prevents against a
potential abuse of the process if the WIPO subjective criteria were alone
relied upon. This scenario is dangerous for all stakeholders, aside from the
trademark owner that may have erroneously been granted famous trademark
status, because it (1) waters down the protection that true famous trademark
owners should be entitled too, (2) interferes with the efficient operation
of the DNS, and (3) erodes stakeholders confidence in the safeguards that
this Working Group is being entrusted to develop.

28. Defining the objective criteria, like most everything else in connection
with the ICANN process, is not an easy task. Although requiring a certain
number of country registrations was one of the proposed criteria during the
WIPO process, there needs to be some flexibility for those marks that may
truly be famous but which have not been registered in the requisite number
of countries.

29. Another benefit of this approach is that it allows famous trademark
status to be assigned to the same mark owned by different owners for
different good and or services, just like trademark law currently permits.
The process for how these competing claims for the same second level domain
in the new registry is explained in detail below.

30. At the Los Angeles ICANN meeting November 1, 1999 there appeared to be a
rough consensus among those in attendance with regard to this
objective/subjective test.10

31. It is recommended that a combination of objective / subjective criteria
be adopted as the best procedure for defining what constitutes a famous
mark.  It is left to the participants in Working Group B to reach consensus
on what constitutes acceptable objective criteria with respect to: (1) the
number of country trademark registrations [35] and (2) the number of
documented cybersquatting incidents that are necessary to qualify a mark as
famous under the objective criteria element [50]11.

B.	Famous Trademark Panel Administration & Oversight

32. Having set forth the basis for which marks will be deemed famous, one
must now turn to the details of the administrative process.  Specifically,
selection of the administrative body tasked with overseeing the panel, the
composition of the panel, and administrative safeguards to ensure that the
process is open and transparent for all Internet stakeholders

C.	Administrative of the Panel of Experts:

33. During the Request For Comment (RFC) periods, there were several
participants that raised the concern over what organization would administer
these panels. I submit that WIPO is uniquely qualified to administer these

D. 	Composition of Panel:

34. The composition of the panelists that comprises the famous mark review
panels should mirror the diversity requirements that ICANN is based upon.
Each panel should be composed of 10 individuals with two representatives
from each of the five ICANN geographic regions: North America, Europe,
Africa, Latin/South America, & Asia/Pacific.12 Requiring global diversity of
the panel raises the level of confidence in the system that only those marks
that are truly famous on a global basis will be afforded this

C.	Procedural Safeguards:

35. Keeping with the two-thirds consensus definition set forth in the
Department of Commerce, ICANN, and NSI agreements, in order for a mark to be
deemed famous two-thirds of the eligible panelists must agree that it is
entitled to such status.13 Therefore, assuming a ten (10) person panel,
seven (7) votes would be required for a mark to be held famous.

36. Another procedural safeguard should be the background qualifications of
the panelists:
* at least seven of the panelists should be experts in the area of trademark
law and/or commercial brand recognition;
* at least one panelist must be an expert in consumer affairs; and
* at least one panelist must be an expert in the area of the United State
First Amendment14 and/or Article 19 of the Universal Declaration of Human

37. It has been noted by several individuals and organizations during the
WIPO RFC periods and this Working Group's discussions that one should not
focus exclusively on the Paris and TRIPS treaties. There have been arguments
that this group should consider the right of open communication, a protected
right under the United Nations' Universal Declaration of Human Rights and
the European Human Right Convention.15

38. Although this aspect of the proposal is sure to meet with strong
skepticism from the trademark community, I believe it would be prudent from
us to realize that there are limits on the scope of protections afforded
under trademark law, i.e. fair use, etc.. As the United States Supreme Court
noted in the Reno v. ACLU decision invalidating the Communication Decency
Act, "[t]he Internet is 'a unique and wholly new medium of worldwide human
communication.'"  Therefore, it would be prudent to entertain viewpoints
from experts in other practice areas in a decision that will directly impact
the root of all Internet communications, the DNS.

39. The fact that the trademark and brand manager community will retain a
super-majority position in the famous trademark certification process should
provide them with piece of mind that the panelists with the greatest
expertise will still retain ultimate control over what marks are deemed
globally famous.

40. After an initial in person meeting to handle the contemplated volume of
famous trademark applications, all future panel meetings should be held on a
periodic basis (i.e. bi-annually) via teleconference to review famous
trademark applications. 16 The purpose of requiring to have the panel meet
via teleconference is to help in minimizing the cost of the famous trademark
process.  Several participants have argued that there should be a high
monetary threshold for famous trademark holders to pay for this application
arguing that it will help defer bogus claims. However, a famous trademark
holder should not be penalized for its fame. Instead, those funds should be
used in connection with the enforcement mechanism described below. I submit
that a famous trademark application should cost no more than $2,500 dollars
due to the economy of scale that WIPO should be able to implement in the
bi-annual panels.17

V.	Implementation:

A.	Sunrise Provision:

41. Ninety (90) days prior to any new gTLD being recognized in the root, the
new registry authority will begin accepting applications and registry fees
from the famous trademark owners to reserve their famous trademark in the
new registry. To prevent a gold rush mentality, trademark owners will have a
thirty day window in which to submit their requests.

42. During this sunrise period a famous trademark owner will be permitted
the opportunity to submit a list of related domain names that it also wishes
to pre-register under its famous mark certification. In order to qualify as
a "related" domain the famous trademark owner must supply evidence to the
registry authority documenting prior instances in a gTLD where the famous
mark owner had to enforce intellectual property rights in connection with
the famous mark.

43. At the end of the thirty-day sunrise period, the registry will compare
applications to see if there are any conflicting applications. For example,
the registry received an application from Delta Airlines and Delta faucets
for the domain name DELTA in the new gTLD18. The registry would then forward
any multiple claims for the same second level domain to an ICANN accredited
dispute provider. This neutral third party would then have 60 days to
resolve this claim. The experts would then consider the nature of the new
gTLD and the goods and services of each claimant. For example, if the new
gTLD was .airlines, it would be within the scope of the experts authority to
assign the DELTA second level domain to Delta Airlines. However, if the gTLD
was less content specific, the panel of experts may not be able to resolve
the dispute at which time it would be left to the parties themselves to
resolve the dispute between themselves.19  Regardless of how the dispute is
or is not resolved, it allows the registry to go live while avoiding the
threat of legal action by a disgruntled trademark owner.

44. This right of first refusal offers significant benefits to famous
trademark owners over the safeguards outlined in the WIPO report. Under the
current WIPO proposal, a famous trademark owner would be granted no
sub-string protection, instead the famous trademark owner would be granted
an evidentiary presumption in future dispute proceeding. This is a small
consolation to the famous trademark owner since they will be forced to
expend significant amounts of resource under the Uniform Dispute Policy.

45. This process is also registration authority friendly. The implementation
of filters is frowned upon in the registration authority business because it
compromises the efficiency of domain name registration. Moreover, NSI has
recently announced that it is considering removing existing filters from
their registration process. Therefore, this proposal appears to be
consistent with the approach taken by most ICANN accredited registrars.

VI.	Scalability

46. Another added benefit of this system is its scalability. Specifically,
this system allows a registry authority to provide greater levels of
protection to trademark owners if the registry so chooses for marketing or
other purposes. For example, suppose that a new content specific gTLD
(.CAMERAS) has been approved by ICANN to be added to the root.20 The
registry authority in an attempt to maximize protection for trademark owners
while simultaneously maximizing its marketing potential could provide for a
sunrise period for all trademark owners in International Trademark Class
00921. This flexibility allows a registry authority to exercise more
stringent control over its secondary level domains than today's existing
gTLDs. This scalability feature should be completely voluntary and up to the
individual registry authority.

VII.	Miscellaneous

A.	Test-Bed gTLD

47. Working Group C has been tasked with addressing the issues surrounding
the addition of new global top-level domains (gTLDs) into the root server.
As a silent participant of Working Group C, the obstacles we have faced in
Working Group B pare in comparison. According to the Working Group C interim
report discussed at the recent ICANN annual meeting in Los Angles: Working
Group C has reached rough consensus on two matters. The first is that there
should be new global top-level domains (gTLDs); the second is that it would
be appropriate for ICANN, in expanding the name space, to begin with a
testbed in which it adds six to ten new gTLDs, followed by an evaluation

48. Wishing to respect the autonomy of Working Group C, I strongly suggest
that Working Group C consider a single test-bed commercial gTLD to ensure
that the procedures we have developed in theory work in practice. I believe
this is crucial to protect the interests of a wide cross section of
individuals and organizations. Although I understand the basis for the six
to ten gTLD number, I believe trying to remedy any defects in the Working
Group B process would be much easier across one gTLD than across ten

B.	Famous Marks Task Force

49. According to the ICANN by-laws this Working Group is to be disbanded
upon the submission of our final report to the Names Counsel. Learning for
the history of Working Group A and some of the issues that are now surfacing
in connection with the Uniform Dispute Policy, I believe it is prudent that
upon the dissolution of Working Group B there be established a three to five
person Famous Mark Task Force. This Task Force would work on the drafting of
any implementation documents and would closely observe the inaugural famous
trademark panel process. I believe that it is important that the people that
worked so hard in reaching a compromise are provided the opportunity to
ensure that what was envisioned is actually realized and provide a report
back to the Working Group member and the Internet Community at large.

Respectfully Submitted

Michael D. Palage
CIO InfoNetworks
Co-Chair Working Group B

Author's End Notes: I would personally like to thank all the participants of
Working Group B for their effort to date, especially those individuals that
were so critical of my administration of the group. It only made me work
that much harder. Although the hardest part of our journey lies before us, I
believe we can see the light at the end of the tunnel.  I would especially
like to thank the following individuals and organizations for their extra
effort in the consensus building process (listed alphabetically): Harald
Tveit Alvestrand, Mikki Barri, Lynne Beresford, Jim Bramson, Victoria
Carrington, Marilyn Cade, Jonathan Cohen, Frank Cona, Timothy Denton, Sarah
Deutsch, Christhoper Gibson, Mike Heltzer, Japanese Patent Office, Eileen
Kent, Mark Measday, Eric Menge, Milton Mueller, Hiko Okuda, Carl Oppedahl,
Judith Oppenheimer, Ellen Rony, Otho B. Ross, Phil Sbarbaro, Martin B.
Schwimmer, Philip Sheppard, Ken Stubbs, and Dave Wilson. Finally I would
like to apologize to my wife and our four month old son for not being able
to spend as much time as I would have liked with them over the past several