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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]

  1. degree of knowledge or recognition of the mark in the relevant sector of the public;
  2. duration, extent and geographical area of any use of the mark;
  3. duration, extent and geographical area of any promotion of the mark;
  4. duration and geographical area of any registrations of the mark;
  5. the record of successful enforcement of the rights in the mark;
  6. value associated with the mark; and
  7. 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


Other articles, editorials and domain-related comments by this author:

At Large Membership: ICANN's Ultimate Tarbaby

Whither .ORG?

The ICANN-VeriSign Agreement: A Sweetheart Deal

The Divine Right of Names: New TLDs Prep for Start-up

The Envelope, Please: New Top Level Domains on the Horizon

 Procter & Gamble Bids Adieu to SINUS, THIRST and FLU

Words First!

Sunrise+20: The Numbers Tell the Story

Clicks or Mortar: Are Domain Names Property?

Res Ipsa Loquitur

RDND: Reverse Domain Name Denigration

IIR: Internet Impact Report

The Devil is in the Details

An Alternative to ICANN?

Comments on the WIPO Interim Report RFC-3


















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