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RE: [wg-b] Sunrise Genealogy
Right of first refusal in the toll free space was not even
remotely trademark related:
FCC CC Docket No. 95-155 Toll Free Service Access Codes ) , FOURTH REPORT
AND ORDER AND MEMORANDUM OPINION AND ORDER , Adopted: March 27, 1998
Released: March 31, 1998
Para 7.: "Lastly, the Commission asked whether, in the event that we deny a
right of first refusal, trademark law provides sufficient protection to
current holders of 800 numbers."
Para 22.: "Although we recognize commenters' concerns regarding trademark
infringement and unfair competition, we find that those issues properly
should be addressed by the courts under the trademark protection and unfair
competition laws, rather than by the Commission."
It applied to 888 numbers only, and had an official shelf life of
That said, 888 replication was never addressed by the industry as a
trademark issue, but rather a misdial issue.
Replication was granted to 800 users without regard to trademark or
service mark status of the 800 number or its alpha vanity portion.
Numbers that spelled something could be and were replicated.
Numbers that spelled nothing, could be and were replicated.
Replication orders were accepted only in numeric form, not alpha form.
The replication set-aside database was maintain only in numeric form as
Of course, trademark interests spoke of it in terms of trademark protection,
and petitioned the FCC for replication in terms of trademark protection.
But the FCC has consistently taken the position that trademark issues should
be resolved by the courts. (See above.)
I was invited to join WG-B by some members who were concerned that 888
replication was being misrepresentated to non-telecom WG-B members
as an FCC-endorsed model for trademark right of first refusal, even if
only by inference.
Having clarified this issue in some detail at that time, I'm disturbed
to see it resurface, again posing as a legitimate basis for the IPC
Any representation of the toll free replication process as being even
remotely related to or a model for any trademark rights in DNS or elsewhere,
is a gross misrepresentation of spirit and fact; a knowingly erroneous
foundation, and poor excuse, for the IPC proposal.
ICB Toll Free Consultancy
From: email@example.com [mailto:firstname.lastname@example.org]On Behalf Of
Michael D. Palage
Sent: Friday, April 14, 2000 3:48 PM
To: Wg-B@Dnso. Org
Subject: [wg-b] Sunrise Genealogy
The genesis of the Sunrise principles started approximately eight months ago
when I came across an old legal article about the right of first refusal
used during the expanse of the toll-free phone numbers here in the US. I am
aware of the distinctions and how this right of first refusal was not
extended to 877. Judith has provided valuable insight on this matter and for
anyone interested please check the WG-B archives available at
Although the analogy is not all fours, I believed it provided a unique
starting point to explore consensus building efforts. During the course of
the next several months I spoke with numerous people about the concept of a
Sunrise Period. Some of the people that I spoke with in person or over the
phone included: Michael Froomkin, Ellen Rony, Carl Oppendale, Milton
Mueller, Phil Sbarbaro, Kathy Klieman, Mikki Barry, Sarah Deutsch, Jim
Bramson, Marilyn Cade, Mike Heltzer, Francis Gurry, Eric Menge, Lynne
Beresford to name just a FEW. The reason that I saw some promise for the
Sunrise concept was that most people did not shoot it down from the sky
initially. Instead, they listened asked questions and THEN decided they had
problems with it. For anyone involved in the ICANN process, this is actually
a sign that there may be some common ground to advance upon.
After talking to the various people I decided to submit a position paper
during the position paper comment period. In summary my paper called for the
creation of a famous marks list using a dual objective and subjective
criteria, instead of the purely subjective criteria set forth in Chapter
Four of the WIPO report. This decision was based upon the feedback from
comment from the 50+ people that attended the LA ICANN meeting. Those mark
holders appearing on the list would then be able to exercise a right of
first refusal during a defined Sunrise period. My original position paper
posted on Dec. 9, 1999 can be found at
No one commented on my paper. Instead most of the attention turned to the
Non-Commercial .TMK proposal and the Intellectual Property Constituency's
(IPC) proposal that primarily backed the WIPO proposal.
The Registrar Constituency of which I am member in addition to being its
Secretariat, was concerned about some of the proposals that were being
advanced by the IPC and other members with strong trademark interests. Their
most pressing concern was the use of filters in connection with the
registration process. The registrars then held a teleconference to
formulate a registrar proposal to advance in Cairo. Some of the registrars
expressed concern about ICANN's authority to back the commissioning of a
universally famous marks list. Therefore, in an effort to appeal to the
Non-Commercial constituency which vehemently opposed the creation of the
famous marks list, backed a Sunrise program in which all registrars
trademark could participate.
This proposal was discussed on Tuesday evening Working Group B meeting in
Cairo attended by approximately 80 people. This meeting lasted for two
hours. The discussions of this meeting and the proposal in general where
discussed on Wednesday to the NC and the GA. See the RealAudio archives
Wednesday afternoon, a group of registrars and members of the IPC held a one
hour cross-constituency meeting to discuss possible points of agreements. At
that point in time, the IPC members in attendance expressed interest in my
original Sunrise Proposal involving the creation of a list used in
conjunction with a Sunrise period. After further consultation with the
registrars in attendance, the registrars decided to publicly express an
interest in a Sunrise period involving a WIPO created famous marks list.
This gesture was an attempt to build consensus on some common ground. At
this point in time no other constituency had approached the registrars with
a potential compromise. Based upon the consensus reached between the IPC and
the Registrars with regard to Working Group A and the UDRP, it made sense to
explore other consensus building discussions.
A week or so after the Cairo meetings, representatives of the IPC asked me
in my capacity as Secretariat of the Registrars Constituency were the
Registrars stood. I told the IPC representative that the Registrars were
opposed to any ongoing filter based solutions and supported an equitable
With regard to the SBA - Office of Advocacy teleconferences. I have had
detailed discussions with Eric Menge and his office since the LA meeting
last year. I originally asked Eric if it was possible to host a
teleconference for the benefit of those WG-B members that did not belong to
a constituency that held formal teleconferences. Graciously enough and in
the interest of small business the SBA hosted the two teleconferences this
week. The SBA -Office of Advocacy has also provided me with written comments
raising their concerns about various aspects of the Sunrise Proposal. This
will be incorporated into the WG-B Interim report.
Today I received the latest IPC proposal. I cannot discuss the specifics of
this document because I was not involved in its drafting. However, I am
happy to say that it seems to have built on the efforts of the last couple
of months. Obviously, other people will disagree with this latest consensus
building efforts. I respect these opinions and will properly note them in my
Your much maligned, unrelenting Working Group B Chair.