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Re: [wg-b] wg-b

Only marks that have been *legally* determined as famous in a court
proceeding deserve to be on such a list, if indeed ICANN pursues its course
to create such a document.  Cases brought under the Federal Dilution Act of
1995 have identified some marks as famous, but those marks are only deemed
famous in the U.S.,  not elsewhere.  Perhaps someone can post whether any
other country gives special protection to marks deemed famous, and what
criteria are used to identify them.

Nonetheless, I find it doubtful that the owners of marks that are deemed
famous by whatever mechanism/criteria are chosen would be satisfied with a
provision that stays their objection to "confusingly similar" marks
registered as domain names beyond a proposed set limit.  I can imagine the
outcry when a famous mark holder has grabbed the trademark name and an
allotted number of variations in all TLDs and even ccTLDs and then says
that the limit set by ICANN denies them their opportunity and obligation to
police use of the mark worldwide.  Extrapolating from that concern, I
imagine that the famous marks list will  be the camel's nose under the ten;
those on the list will eventually demand the right to determine what *they*
consider is confusingly similar and claim the worldwide exclusion over all
those names, as well.

Even if Iwe lose the battle to prevent the creation of a famous marks list,
this group should absolutely recommend against any provision of exclusion
for anything other than an *exact* match of the mark.  To offer more than
that gives one set of Internet users a priority right over other uses of
alternative names.

Eileen Kent wrote:

>Can companies and organizations request that their names be included in the
>list? If a company which believes itself to be famous finds that it is not
>on the list, to whom does it appeal this decision? On what is the decision
>based? Michael Palage talked about a
>combination of objective and subjective. How can you form a list if there
>has been no determination of the objective requirements? Or can you? Or did
>you? We have never managed to define fame. I've heard various suggestions
>but no "consensus" (that I can ascertain) regarding the various benchmarks,
>never mind fame itself. I have yet to see a list that WIPO has composed and
>no matter what anyone thinks about WIPO as an organization, it would be hard
>to deny that they are more appropriate than this working group to stipulate
>who's on the list. As foreshadowed by the post from Mr. Berryhill, the
>creation of the list will generate an incredible number of lawsuits. I
>thought that at least a peripheral goal of trying to give famous names
>special consideration was to relieve overburdened legal systems.
>And once the fame list is created what does it do for those on the list? It
>essentially forces them to buy domain names during a sunrise period in the
>new gtld. So they are able to protect their marks as circumscribed by the
>rules and regs. After the sunrise period-- or for that matter, during the
>sunrise period--all other incidences of the mark (read "string") can be
>registered. Just exactly where does this get anyone? I don't believe that
>this is enough of an advantage to the companies in question (famous names)
>to warrant the consequences i.e., years of lawsuits over who is or is not on
>the list.
>But I am nothing if not pragmatic. Mr. Berryhill wants to make sure his
>clients are on the list. Me too!
>Is this what the I.P. constituency really wants?
>----- Original Message -----
>From: "Mark Measday" <measday@josmarian.ch>
>To: "Harald Tveit Alvestrand" <Harald@alvestrand.no>
>Cc: <wg-b@dnso.org>
>Sent: Tuesday, April 04, 2000 3:41 PM
>Subject: Re: [wg-b] wg-b
>Harald Tveit Alvestrand a écrit :
>> I'll be happy to provide a mailing list, if that's required.
>Yes, please
>> There was no original WIPO list - they too never got past the "platitudes"
>> stage.
>Exactly why an uncritical listing of possible FM's is needed at this stage.
>> I'd suggest you sending a message to the people you want to have in on
>> this, giving 2 attachments:
>> - A list that you feel very certain is famous
>> - A list that you feel could be considered for famousness
>Yes, but my opinions are unimportant. What is important is what INTA and
>friends would like.
>> My greatest doubt is whether enough people would be willing to go out on
>> a limb and commit to defending such a list.
>No doubt. Which is why I suggest only additions to the list, whatever they
>be. Defence is a later stage.
>If you find setting up a list for this purpose impossible I quite
>I ask because of your original inclusion in the WIPO working group.and
>technical background. No inference is made to Elisabeth's recent post.

Ellen Rony                    //          http://www.domainhandbook.com
Co-author                  *="  ____ /            erony@marin.k12.ca.us
The Domain Name Handbook      \     )                  +1  415.435.5010
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