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[wg-b] Viewpoint

Since we have been asked to submit our viewpoints in a word processor
format, this is the response I sent yesterday to Michael Palage.  You have
read it all here before, but apparently it is not discussion on this list
isn't that gets incorporated into the Interim Report and I am reluctant to
send unsolicited attachments to the entire working group.

I have considered the sunrise proposal and, IMHO, it will placate one group
of Internet users--trademark owners or owners of famous marks--over all
others.  I think such preferential treatment is outside the technical
administration of the Internet for which ICANN has been chartered.

Working Group B - Famous Names

Viewpoint of Ellen Rony
Co-author, The Domain Name Handbook: High Stakes and Strategies
 in Cyberspace (R&D Books, 1998)

On June 25,  1999, the Names Council resolved to create Working Group B to
review the treatment of Famous Trademarks. [1]

On March 21, 2000, the Chair of Working Group B submitted a Status Report
to the Names Council.[2]   It outlines the position papers submitted to
date but does not represent a collaborative effort or consensus

On March 10, 2000, before Working Group B completed its Interim Report,
ICANN accepted a 1999 offer by the World Intellectual Property Organization
to prepare a list of globally famous trademarks.[3]  Although ICANN said
that such a list "would be helpful to its assessment of proper action on
expansion of the TLD space," there is no doubt that the list might be used
to offer exclusionary rights across all gTLDs for marks that are deemed
Further, in making the request for such a list without the deliberative
input of Working Group B, ICANN bypassed its own structural process and
placed WIPO in a quasi-judicial role, absent international agreement for
such authority.

The entrance criteria for what is globally "famous" are not defined and do
not exist.   In its Final Report, WIPO recommended the following criteria:

(a)     degree of knowledge or recognition of the mark in the relevant
sector of the public;
(b)     duration, extent and geographical area of any use of the mark;
(c)     duration, extent and geographical area of any promotion of the mark;
(d)     duration and geographical area of any registrations of the mark;
(e)     the record of successful enforcement of the rights in the mark;
(f)     value associated with the mark; and
(g)     evidence of registration of domain names that are the same or
misleadingly similar to the mark.

(a)  If famosity is defined in terms of knowledge or recognition of the
mark, it may have deep market penetration in one country while being
virtually unknown elsewhere.

(b)  If famosity is defined in terms of geographical area of any promotion
and use of the mark, the easy global reach of the Internet will quickly
blur these lines as a delineator.

(c)  If famosity is defined in terms of duration, newcomers to the
marketplace such as Netscape and Yahoo, who arguably have driven e-commerce
growth, may not pass this qualifier.  It is quite likely that another
successful start-up will come along which meets all the criteria save this

(d)  If famosity is defined in terms of the number of country trademarks
acquired, then famous only means having deep pockets, and reflects an
opportunity for companies to buy global ownership of a slice of the global
name space, exclusive worldwide rights to a domain name.

(e) If famosity is defined in terms of successful enforcement of rights in
the mark, how will this qualifier be applied to marks that remain untested
in the legal process.

(f) If famosity is determined by the value associated with the mark,
presumably defined in terms of sales receipts or advertising expenditures,
what happens if there is a financial reversal or an acquisition that
absorbs the famous name?

(g)  Using evidence of registration of domain names that are the same or
misleadingly similar to the mark to determine famosity is unworkable since
trademark registrations can issue for identical marks.  Individual
determination would be required to assess which trademarks were responsible
for which domain name registrations.  Further, how is "misleadingly
similar" to be determined? At what point does "misleadingly similar" become
something altogether different from the original mark.

Interestingly, none of these qualifiers acknowledge fanciful and invented
names nor the fact that the famosity of a mark is subject to change.
Woolworth's was famous for decades and was traded on the stock exchange by
the letter "Z". The stores are now closed, so does it lose its famosity
status?  A historian might say once famous, always famous, but most of us
in the high tech world for the past 20 years have seen companies both soar
and fall. Would loss of famosity be monitored annually?  Would loss of
famosity result in concurrent loss of the right to exclusivity?   Would
that result in a scrambling for those names released back into the
available pool?

The disputed rights to use a domain name should be reserved for the courts.
Sufficient legal protections for trademark owners (in the U.S. at least)
exist through the Trademark Cyberpiracy Act and Uniform Dispute Resolution
Policy so that exclusive worldwide protections for famous names seems
superfluous, not to mention potentially capable of unleashing a new bag of
worms. How many, which ones, how determined, who decides?  These are not
insignificant issues.   This famosity list could unleash a Pandora's box of
woes and paradoxical situations that have not been adequately assessed.
Most likely, the famous marks list will become politicized and result in
inconsistent determinations  and constant cacophony over which marks get

When you begin talking about rights in gross that cross international
boundaries, the debate should be moved up to the level of international
treaty.  Even judicial determinations that a mark is famous within a cause
of action arising under the Federal Dilution Act are only appropriate
within the U.S.The WIPO consultations reported that there may be no more
than 1,000 famous marks.  The burden of identifying them and, among
registrars, of providing them with gTLD exclusions seems excessive given
what a small percentage of the 11+ million domain name registrations such
famous marks represent.  A more fitting activity would be the creation of a
top level domain called .TMK, where a national trademark registration would
be a bright line qualifier.

Lastly, certainly not least,  determining famosity and enforcing the
definition against  third parties is not an appropriate function of a
private corporation whose charter is the technical coordination of the
Internet.  ICANN has exceeded its authority to manage and perform four
specific functions related to coordination of the domain name system:[5]

1) set policy for and direct allocation of IP number blocks to regional
Internet number registries;
2) oversee operation of the authoritative Internet root server system;
3) oversee policy for determining the circumstances under which new TLDs
are added to the root system; and
4) coordinate the assignment of other Internet technical parameters as
needed to maintain universal connectivity on the Internet.

In conclusion, I do not support the implementation of any mechanism for the
exclusionary protection of famous marks because legal mechanisms already
exist and because this exceeds the scope of ICANN's authority.  ICANN's
purpose is not to safeguard the Internet for a specific class of users--the
holders of purported "famous" marks.

Ellen Rony

March 30, 2000


[1]   Results of DNSO Names Council meeting on June 25th, 1999  -

 [2]   WG-B Status Update by Michael D. Palage (Chair)  -

[3]  Preliminary Report, Meeting of the ICANN Board in Cairo (March 10,
2000) - http://www.icann.org/minutes/prelim-report-10mar00.htm

[4]   Final Report of the WIPO Internet Domain Name Process (April 30,
1999) - http://ecommerce.wipo.int/domains/process/eng/final_report.html

[5]  U.S. Department of Commerce, Management of Internet Names and
Addresses,  National Telecommunications and Information Administration
Statement of Policy (June 5, 1998) -
Ellen Rony                    //          http://www.domainhandbook.com
Co-author                  *="  ____ /            erony@marin.k12.ca.us
The Domain Name Handbook      \     )                  +1  415.435.5010
                              //   \\             "Carpe canine"

          The more people I meet, the more I like my dog.