Famous
Marks
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
recommendation.
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 famous. 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:[4]
- degree
of knowledge or recognition of the mark in the
relevant sector of the public;
- duration,
extent and geographical area of any use of the
mark;
- duration,
extent and geographical area of any promotion of the
mark;
- duration
and geographical area of any registrations of the
mark;
- the
record of successful enforcement of the rights in the
mark;
- value
associated with the mark; and
- 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 beingvirtually 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 quicklyblur 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 one.
(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 to render exclusive worldwide protections for
famous names 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 anointed. When you begin
talking about rights in gross that cross
internationalboundaries, 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.
Last,
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 theexclusionary 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.
In
my humble opinion.
By
Ellen Rony
t© March 31, 2000
