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[comments-wipo] Don't Create List of Famous Names & New Proposal
As an attorney, I, Mark Leventhal, hereby submit the following comments:
Don't create a list of famous names that would either (a) get first crack at registering names in the new top level domains (via a sunrise period), or (b) get a "special" top level domain (e.g., .TMK or .FAME). Having WIPO and/or ICANN decide what names are "famous" would be disasterous. U.S. courts have had a tough time deciding what names are "famous" under the Federal Trademark Dilution Act (FTDA) (15 USC Section 1125(c)), and what one judge might determine is famous, another judge may not. In addition, there is the issue of whether fame should be determined by whether a name is famous in a given industry or on an at-large basis. Further, for ICANN and/or WIPO to say name A is famous, name is not famous, etc., is not necessary. In the alternative, I propose the following:
If a registrant comes forward with a certified copy of a trademark registration form the United States Patent and Trademark Office (or from the analogous government agency in any other country), then the registrant will be able to get that same exact (identical) trademark in the new top level domains during the so-called "sunrise period." This proposal is based on the old Networl Solutions, Inc. dispute resolution policy by which the "cybersquatted" name had to be identical to the trademark for the trademark owner to get the "cybersquatted" name back. So, for example, if McDonalds had a trademark with the US PTO for "McDonalds", then they would be able to get "McDonalds" in the new top level domains during the "sunrise period." McDonalds, however, would not be able to get "McDonaldsrestaurant" in the new top level domains if they did not have a trademark with the US PTO for "McDonalds Restaurant". If someone registered "McDonaldsrestaurant" in the new top level domains, McDonalds could still get these domain names, either by (a) registering these names first (after the "sunrise period" ends), (b) filing an arbitration proceeding under ICANN's Uniform Dispute Resolution Policy, or (c) paying the person who registered these domain names.
My proposal prevents WIPO and/or ICANN from having to decide whether a name is "famous". It also prevents WIPO and/or ICANN from having to decide whether to give a company a "substantially similar" name that is "confusingly similar" to its trademark. Moreover, this proposal implements the best of the old Network Solutions, Inc., dispute resolution policy and the new ICANN Uniform Dispute Resolution Policy.
If you have any questions about this proposal, please feel free to contact me.
Mark Leventhal, Esquire