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[wg-b] Fwd: Commentary from the AIPLA on WG-B Position Papers
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[wg-b] Fwd: Commentary from the AIPLA on WG-B Position Papers
- To: <wg-b@dnso.org>
- Subject: [wg-b] Fwd: Commentary from the AIPLA on WG-B Position Papers
- From: "Michael D. Palage" <mpalage@infonetworks.com>
- Date: Fri, 7 Jan 2000 14:32:00 -0500
- Importance: Normal
- Reply-To: <mpalage@infonetworks.com>
- Sender: owner-wg-b@dnso.org
AIPLA's Views on Famous Names Issue
The American Intellectual Property Law Association (AIPLA) appreciates the
opportunity to contribute to ICANN's efforts in the areas of famous name
protection and related intellectual property issues.
AIPLA is a bar association with more than 10,000 members engaged primarily
in private and corporate practice, government service, and the academic
community. AIPLA members comprise a wide variety and diverse spectrum of
individuals involved directly or indirectly in the practice of patent,
trademark, copyright, trade secret and unfair competition law, as well as
other fields of law affecting intellectual property. Our members represent
both owners and users of intellectual property, including many small and
large businesses that make commercial use of the Internet in various aspects
of electronic commerce.
These views were prepared in response to the issues posed by the Chair of
Working Group B and to comments that were submitted to ICANN's Domain Name
Support Organization Working Group B by the public. This paper took into
account those comments along with comments from the members of AIPLA. As a
result, we are cognizant of the diverse points of view and interests
regarding the famous name protection issue. This paper provides AIPLA's
views on the protection of famous marks on the Internet as well as AIPLA's
response to other submissions to Working Group B including those submitted
by Deborah Shelton from Arent Fox ("Shelton"), the Intellectual Property
Constituency of the Domain Name Support Organization ("IPC"), the
Noncommercial Constituency of the Domain Name Support Organization
("Noncommercial Constituency"), and Chairman Palage of Working Group B
("Palage").
ISSUE 1 Should the factors used to determine what constitutes a famous mark
be: (a) objective factors (e.g., number of registrations); (b) subjective
factors (e.g., WIPO recommendations); or (c) a combination of objective and
subjective factors?
AIPLA's Views
The list of factors which should be weighed in any determination of fame
with regards to a mark in the domain name context should be comprised
primarily of subjective factors. The AIPLA proposes that the non-exhaustive
list of factors developed over the last several years by WIPO (via the
Committee of Experts on Well-Known Marks and the Standing Committee on
Trademarks, Industrial Designs and Geographical Indications (WIPO SCT)) be
used for famous name determinations. These factors include:
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 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 confusingly similar names as domain
names.1
AIPLA recommends that the body authorized to approve famous name
applications take the foregoing factors into account in such decisions,
weighing the above factors (and potentially additional ones, if warranted)
to determine whether or not the balance of interests at play tip towards
protecting the name at issue as being "famous". Inherent in the
non-exhaustive list of subjective factors is the use of objective criteria
including the number of "cybersquatting" incidents and the number of
trademark registrations a trademark owners owns worldwide. For example, one
way in which to provide evidence of factors 2 and 4 would be to provide the
number of trademark registrations secured for the mark. Notwithstanding the
foregoing, it is not recommended that such factors expressly include
objective, quantitative "bench mark" requirements for proving same, since
the specific facts of each application will dictate the importance (and
perhaps even the application) of each factor to the overall decision and
since required numbers of objective factors can promote attempts to
artificially qualify a name as being "famous".2
AIPLA's Response to Others' Comments
* Shelton - This published comment agrees with the position that WIPO's
non-exhaustive list of subjective factors be used. While it is further
pointed out that objective criteria (e.g., number of registrations) be
considered in the determination, it is acknowledged that objective criteria
cannot be solely determinative of the issue. For reasons outlined above,
the AIPLA agrees that objective criteria should be used, where appropriate,
as evidence of the subjective factors, but the AIPLA does not recommend that
quantitative measures of the factors be required.
* Noncommercial Constituency - This published comment takes the position
that no famous name determinations should take place since it is impossible
to create a universal definition of a famous mark. While we acknowledge
that such determinations are difficult at best, ICANN (through the
appointment of a neutral third party, such as WIPO) is capable of creating a
fair and balanced approach to the issue in which the interests of the
noncommercial community are addressed. iFor example, one concern
articulated by the noncommercial community with respect to famous name
determinations and domain name treatment based upon same is that basic and
generic words will be removed from root server databases and Internet users
will be denied fair usage of same. First it should be noted that the
internationally recognized criteria (TRIPs Article 16) generally precludes
the use of a generic term associated with particular goods or services as a
mark for those goods or services. Moreover as outlined more fully below,
the proposed exclusionary process for names which are determined to be
famous and qualify for different treatment with respect to new gTLDs
includes the availability of an appeal process which would provide Internet
users the ability to make noncommercial uses of such basic and generic
words. And while the noncommercial community's articulated desire to have
famous name determinations carried out by traditional sources (e.g., courts)
is understood, such sources are impractical for purposes of determining such
issues in the domain names context given the speed with which domain names
are required by the public.
* IPC- This published comment also agrees with the position that the
subjective factors developed by WIPO should be utilized in a determination
of whether a name is "famous". The IPC points out that WIPO has expended
considerable time and effort to develop the list of factors and that such
development included international input from a variety of sources of
interest on the topic.
* Palage - It is proposed in this document that a combination of
subjective and objective factors be used. More specifically, a two-step
process is proposed in which certain objective criteria be used as a
"gatekeeper" to prevent frivolous attempts to qualify a name as "famous'.
If an applicant cleared the objective criteria threshold (step 1), then step
2 of the process would apply WIPO's subjective factors (listed above) to
make a final determination regarding fame of the subject mark. Step 1 of
the process is touted as providing a measure of certainty for mark owners as
to whether their mark likely qualifies for protection as being "famous" and
further provides the Internet community with an objective standard by which
to monitor the process. For the reasons set forth in AIPLA's Position
section of Issue 1 above, it is not recommended that objective factors be
used as a bench mark threshold for the famous name application process.
ISSUE 2 Should substring protection be provided for famous names?
AIPLA's Views
AIPLA proposes that limited protection of names which have been found to be
famous be provided. Such protection should be extended to protecting only
against the attempted registration of a domain name containing the identical
mark deemed to be famous. Although, ideally, AIPLA would like to see this
protection extended to protect widely-recognized, minor variations of same,
such as use of a famous name combined with a number (e.g., eexample1.com
where "eexample" is the famous name) or the mere addition of a hyphen (e.g.,
e-example.com where "eexample" is the famous name), it is not only
impractical to ask a registration authority (be it a registry or registrar)
but also improper for determinations of confusing similarity to be made by
ICANN, its panels, registries and/or registrars. There are many reasons why
registrars and registries should not be placed into a position of making
determinations of whether an attempted domain name registration is
confusingly similar to an "excluded" famous mark stemming from many sources
including United States case law. In the United States, case law has
determined that a registrar (or for that matter a registry) currently enjoys
immunity from suits of contributory trademark infringement, for example,
because courts have recognized that registrars perform only the mere
function of distributing and assigning web addresses. If a registrar (or
any other appointed panel) begins to make determinations on whether a domain
name is confusingly similar to another party's trademark, it is likely that
that registrar will open itself up to claims of contributory infringement
and/or dilution if it makes the determination that a mark is not confusingly
similar to a famous mark and allows the domain name registration to proceed.
AIPLA's Response to Others' Comments
* Shelton - This published comment proposes that substring protection
for famous names be provided, including protection of common misspellings
and use of numbers and hyphens in connection with the famous name. The
submission further recommends that a publication and opposition period be
implemented so that mark owners could monitor other types of uses and invoke
the UDRP, if necessary, to address same. As mentioned above, although
protection against improper registration of domain names including minor
variations is desirable, it is impractical to expect ICANN or its panels to
decide issues of confusing similarity. Although AIPLA understands and
defends the rights of trademark owners, a balance must be struck in such a
way that first the right to make noncommercial and fair uses of marks (even
ones deemed to be famous) are not ignored. The use of a publication and
opposition period would seem to require an unrealistic administrative burden
on the process and would undoubtedly significantly slow the domain name
registration process.
* Noncommercial Constituency - Since this published comment takes the
position that no protection for famous names should be extended, it is
presumed that the noncommercial community would not advocate substring
protection. However, AIPLA believes that the position it is advocating in
this comment attempts to balance the noncommercial interest with those of
owners of famous marks world-wide.
* IPC Submission - This published comments does not specifically
address this issue, but appears to support the position that protection
being extended to only the "protected string". This submission also agrees
with the proposed system which would have automatic denials issued in
response to attempts to register a protected string, as well as a process to
appeal same.
* Palage - This document does not address this issue.
ISSUE 3 Should there be an exclusion process or a right of first refusal
involving famous marks and new domain names?
AIPLA's Views
AIPLA advocates that there should be an exclusionary process in place for
the protection of globally famous marks with respect to the registration of
new domain names in any new gTLDs (See the response to ISSUE 7 below). As
noted in ISSUE 2 above, the exclusion should protect only the identical form
of the famous name. Ideally, this process should include the following
components: (1) a panel appointed by some qualified body such as WIPO and
having sufficient global diversity would receive and act on applications to
have a name declared famous for purposes of the domain name exclusion; (2)
online publication of all marks which have applied for a determination of
fame; (3) a reasonable period of time for opponents to submit written
comments against the granting of an exclusion for the particular mark; and
(4) determinations made by the panel considering evidence submitted both by
the famous mark applicant and opponents using the WIPO factors outlined in
ISSUE 1 above.
If it is determined that a mark is "famous", then an exclusion should be
granted by the panel, and submitted to ICANN for implementation through the
contractually-bound registries. If a domain name is excluded on the ground
that it is a famous mark, a domain name applicant who applies to register
that famous mark as a domain name and is rejected should have an opportunity
to appeal such rejection in the UDRP process. Grounds for seeking such an
exception should be limited to (i) a proposed fair or noncommercial use of
the mark or (ii) valid rights in the mark. In the UDRP, the rejected
applicant need only have the slight burden of showing a noncommercial or
fair use of the mark (along with a contractually bound promise to use the
mark as such), or that it has a valid trademark registration in the exact
mark from any country in the world. Once the domain name applicant meets
this slight burden, he or she should automatically be granted permission to
use the domain name. If the exception is granted, the domain name
applicant may not transfer, sell, or otherwise assign the domain name to a
third party (unless that third party is the holder of the famous mark).
AIPLA's Response to Others' Comments
* Shelton - This submission agrees that there should be an exclusion
model implemented, and further advocates use of a publication period to
address substring issues. Such a publication period could severely slow
down the registration process, in effect setting up a mini-trial of the
issue of registration..
* Noncommercial Constituency - The position of this submission is clear
that no exclusion process should be implemented. We disagree with the
position that the use of a sufficiently structured exclusion process would
result in an imbalance of the interests of commercial and noncommercial
users of the Internet.
* IPC Submission - This submission agrees with the position that an
exclusion model should be implemented. The IPC proposes an exclusion model
which would post preliminary determinations of fame, and an opportunity to
challenge such determination by third parties before such determination
became effective, much like the opposition period associated with
registration of marks in an industrial property office. Such an opposition
process could be interposed in bad faith or to effectuate delay. The
proposed scheme would also include an appellant process for applicants who
were denied famous name protection. Such appeals would be handled by a
panel different from the first panel, and the appellant panel's decision
would be final. Attempts to register domain names constituting an excluded
string would produce an automatic rejection response, which could be
appealed. To appeal, a third party would have to show that it had "valid
rights" to the excluded string and that those rights do not unfairly dilute
those of the mark owner. The appellant panel for this appeal would not
include any member of the original panel. The decisions of the appellant
panel would be final. It seems to place an unreasonable burden (and
possible require a panel to engage in impermissible activities) to ask the
appellate panel to make determinations regarding whether one party's rights
dilute that of another. For example, what standard of dilution would be
used?
* Palage - This document is unique in its proposal of a dual
exclusion/right of first refusal scheme. Under the proposed scheme, one or
more "Famous Trademark Panels" would be created by WIPO and would mirror the
global diversity of ICANN. Each Panel would be comprised of 10 individuals
(2 representatives from each of the five ICANN geographic regions). Global
diversity associated with the panels would likely confer credibility and
reduce skepticism surrounding same. In order for a mark to be deemed
"famous", two-thirds (i.e., seven) of the members of the Panel would have to
agree that fame exists. The background of the panelists is also outlined;
at least 7 members should be experts in the trademark law or commercial
brand recognition areas; at least one member must be an expert in consumer
affairs; and at least one member must be an expert in U.S. First Amendment
law or Article 19 of the Universal Declaration of Human Rights. We disagree
with this last requirement since the proposed exclusion scheme does not
require the panel to make determinations regarding fair use or U.S.
constitutional issues. The dual scheme proposed by this submission includes
a "sunrise" component which would afford mark owners a limited time period
(90 days) prior to the roll out of new gTLDs in which to submit a list of
domain names related to its famous name that it wishes to pre-register. To
qualify as a domain name "related" to its famous name under this provision,
a mark owner would have to submit evidence of having to enforce intellectual
property rights in a pre-existing gTLD regarding such related name. After
the first 30 days of the sunrise period, the registry would compare the
requests for pre-registration and would refer any over-lapping requests to
UDRP for resolution. The UDRP would then, within the remaining 60 days of
the period, resolve the dispute and instruct the registry on the identity of
the party entitled to the domain name at issue. The scheme is touted as
being more protective of mark holders, pleasing to the registration
authorities, and as having scalability. While this scheme would involve
the protecting of well known marks, AIPLA favors a more streamlined
procedure as outlined in our comments above.
ISSUE 4 How should costs be allocated involving third-party challenges to
famous trademark applications, exclusions, or right of first refusals?
AIPLA's Views
The costs associated with applying for an exclusion should be borne
exclusively by the applicant. In the event there is a challenge by third
parties to the finding of an exclusion, such third party should bear the
costs associated with same.
AIPLA's Response to Others' Comments
* Shelton - This submission agrees with the position proposed by AIPLA
in as much as it advocates a system in which the applicant for an exclusion
would bear its costs, and a challenger to same would bear its costs. It is
further proposed that the fees charged the applicant be substantial enough
to stem demand for the creation of panels so that the determining body is
not overburdened. AIPLA believes it is debatable whether increasing the
costs of the application would necessarily prevent frivolous applications.
* Noncommercial Constituency - Since this published comment takes the
position that no exclusion for famous names should exist, it is difficult to
ascertain a position with respect to this issue.
* IPC Submission - This submission advocates the costs of the
application for exclusion process be borne by the applicant. It is further
recommended that the costs be of sufficient amount ($500 - $1000/application
is suggested) to prevent frivolous applications. As noted above, AIPLA
believes it is debatable whether increasing the costs of the application
would necessarily prevent frivolous applications.
* Palage - This document proposes the applicant to bear its own costs
associated with the application process and that the fee per application be
no more than US$2,500.00. Again, AIPLA believes it is debatable whether
increasing the costs of the application would necessarily prevent frivolous
applications.
ISSUE 5 Should WIPO serve as the centralized administrative authority to
handle famous trademark classifications?
AIPLA's Views
Given WIPO's long-term study of the famous name issue and collection of
geographically-representative experts, it is uniquely qualified to serve as
the centralized administrative authority to handle famous name
classifications. Given its relationship to the United Nations, WIPO also
has instant credibility on an international level.
AIPLA's Response to Others' Comments
* Shelton - This submission agrees with the AIPLA position that WIPO
has the requisite expertise to serve as the centralized administrative
authority regarding famous name determinations within the context of domain
names. The United Nations tie is noted as well.
* Noncommercial Constituency - This issue is not directly addressed in
this submission given its position that no exclusion for famous marks should
exist.
* IPC Submission - This submission proposes that WIPO or "another
qualified organization" work in conjunction with the international
intellectual property community to develop one or more independent panels to
handle famous name determinations in this context. It is further noted that
the submission characterizes WIPO as possessing the "requisite expertise,
willingness, and equally important, the financial resources and existing
administrative infrastructure" to handle this issue.
* Palage - WIPO is characterized in this document as being "uniquely
qualified" to administer famous name proceedings. Again, it is suggested in
this document that one or more "panels" be created by WIPO to handle this
process.
ISSUE 6 If an exclusion model is adopted, does the ultimate responsibility
rest with the registrar or the registry?
AIPLA's Views
Since the registry will maintain the master database for a top-level
domain, it seems logical that it should bear the ultimate responsibility of
implementing the exclusion model. Technological filters can be implemented
to simply "bounce" applications for domain names within a gTLD which violate
one or more famous name exclusions. The responsibility of the registry for
implementing the exclusion model would not preempt a mark owner or a domain
name applicant from judicial recourse.
AIPLA's Response to Others' Comments
* Shelton - The registry is named in this submission as the entity
having ultimate responsibility for implementing the exclusion.
* Noncommercial Constituency - This submission is silent on the issue.
* IPC Submission - Although this submission does not directly address
this issue, the context of the submission suggests that the registries be
ultimately responsible for implementing the exclusion model. The submission
further recommends that a list of all famous name exclusions be maintained
at an online location. This seems to be a logical component of the model
which would assist domain name applicants in the selection of potential
domain names of interest.
* Palage - In the dual exclusionary/right of first refusal scheme
proposed in this document, it appears that the registries are ultimately to
be responsible for implementing same.
ISSUE 7 Should there be a test-bed period for the roll-out of one new
commercial gTLD to see how any proposed famous trademark safeguards work?
AIPLA's Views
AIPLA has been very concerned about the introduction of new gTLDs before
having in place a system for protection of famous marks. To that end,
AIPLA strongly believes that after mechanisms are in place for protecting
famous marks, that a test-bed of a single new gTLD should be implemented to
test the new mechanisms, and only after the test of the mechanisms is
acceptable to all parties should further new gTLDs be rolled out. Given the
wide variety of interests associated with such procedures, this cautionary
approach to implementation is reasonable.
AIPLA's Response to Others' Comments
* Shelton - This submission agrees that a test-bed of gTLD should be
conducted to test the efficacy of the adopted procedures. It further
proposes that no additional new gTLDs be rolled out until any serious
concerns over the test-bed is resolved.
* Noncommercial Constituency - This submission is silent on the issue.
* IPC Submission - This submission is silent on the issue.
* Palage - It is "strongly suggest[ed]" in this document that a single
test-bed commercial gTLD be rolled out to test any procedures.
ISSUE 8 Should the non-retroactivity provision contained in Paragraph 276
(of WIPO's Final Report) impact a domain name transfer between third
parties?
AIPLA's Views
AIPLA does not condone the unfettered transfer by third parties domain
names that contain well known marks. AIPLA believes that once a mark has
been determined to be well known, third party transfers to other than the
owner of the well known mark should be prohibited.
AIPLA's Response to Others' Comments
* Shelton - This submission proposes that transfers between unrelated
third parties should be prohibited.
* Noncommercial Constituency - This issue is not addressed in the
submission.
* IPC Submission - This submission is silent on the issue.
* Palage - This document is silent on the issue.
____________________________________
1 It is noted that factor 7 was not adopted by WIPO SCT, but was included in
WIPO's Final Report of the Domain Name Process of April 30, 1999, titled The
Management of Internet Names and Addresses: Intellectual Property Issues.
2 For example, the mere number of registrations of a mark may not
necessarily correlate with its fame. A party could theoretically obtain
numerous registrations for a mark which was virtually unknown to the public.
Conversely, a mark known by virtually everyone in a relevant public segment
may not be the subject of even a single registration. However, AIPLA
acknowledges that these may indeed be relevant factors that may show
purported fame of a trademark, and thus, should be considered as evidence
supporting the presence or absence of the subjective criteria.
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