Sunrise+20:
The Numbers Tell the Story
- This
is a response to the Formal
Report of Working Group
B,
which was written by the Chair and submitted to the
Names Council on April 17, 2000. This response
wassubmitted
to ICANN
on May 2, 2000. See also Words
First! on this
website.
- The trademark
lobby must be placated because of its potential
ability and inclination to bankrupt new registrars and
wreck havoc on their registrant
databases.
- --Michael Palage,
Chair Working Group B (6-Jan-00), SBA Office of
Advocacy Rountable on Internet Domain
Names
-
Working
Group B was created in Berlin last summer explicitly to
address Chapter
Four
of the Final Report of the WIPO Internet Domain Name
Process, "The Problem of Notoriety: Famous and Well-known
Marks". The WIPO Report recommended that a mechanism be
established for granting exclusions to famous and
well-known marks when new gTLDs are introduced. This has
been the focus of the discussion in Working Group B for
nearly nine months.
The
Formal
Report of Working Group
B,
written by the Chair, identifies two consensus
conclusions:
- The
creation of a universally famous marks list does not
appear to be needed at this point in time.
There
appears to be a consensus that protection afforded to
trademark owners will depend upon the type of top
level domain.
- The
report also insinuates support for a Trademark
Sunrise+20 Proposal
submitted on deadline by the Intellectual Property
Constituency. Regrettably, too much attention is devoted
to this strawman proposal, which was not vetted at all by
members of Working Group B. Recommending a sunrise
exclusion for ALL trademarks exceeds both the scope of
WGB and ICANN's
charter
as the technical coordinator of Internet administration.
The sunrise proposal is inherently inequitable,
operationally impractical, internally inconsistent, and
nonconforming with the tenets of trademark law.
Domain
names possess characteristics that cannot be inferred to
marks. They are extraterritorial and require no
contextual association. And they are unique. The ISP
Sunrise+20 on-deadline proposal thus fails to present a
substantive solution to the problems confronting the
holders of famous marks. Instead, it represents a wish
list for two constituencies who have the most to
gain.
The
numbers tell the real story.
According
to the US
Patent and Trademark
Office,
the US alone has more than one million active registered
marks. Sunrise+20 variations therefore represents a
potential set-aside of 20 MILLION domain names before a
single, markless individual, association, organization,
foundation, cause or event gets even one. This proposal
gives trademark owners their top choice of domain names
without competition against other legitimate users, the
general public. And the registrars get an immediate,
potential windfall of 20 million registrations, which
would add in excess of $200 million to their coffers. Of
course, they will support such an immediate financial
opportunity.
The
WGB Formal Report comments, "This compromise would
eliminate the need for Registries to filter out domain
names that potential infringe a trademark on an ongoing
and permanent basis". This is a red herring. It has been
well-established that registries have *no* obligation to
engage in such filtering on behalf of the trademark
owners.
- "Nothing
in trademark law requires that title to domain names
that incorporate trademarks or portions of trademarks
be provided to trademark holders. Instead, the law
simply prevents others from making use of a company's
trademarks in a manner likely to confuse the consuming
public."
- --Washington
Speakers Bureau, Inc. v. Leading Authorities
Inc., 51 USPQ2d 1478, (E.D. Va.
1999)
- The
Sunrise+N (any number of variations) proposal does not
address how multiple owners of identical marks determine
which one gets the most desirable domain names. Nor does
it consider when the choice of a variation becomes an
unreasonable stretch of the imagination. And while
trademark offices in more than 130 countries follow the
same International Classification standard for goods and
services, the application requirements, examining
procedures, processing time and legal protections vary
from one country to the next. Thus, this proposal will
encourage trademark forum shopping and, perhaps drive-by,
48-hour turnaround trademark certifications.
In
the trademark-centric view of the Internet, a domain name
alone gives rise to a "chance of confusion". Yet, with so
many creative variations of any word or mark by adding
prefixes and suffixes, plurals, numbers and dashes, the
days when people merely guess at a domain name to find a
particular site are over. If a domain name alone gives
rise to a chance of confusion, then the trademark owners
that register 20 variations will be the greatest source
of such confusion.
The
meta question here is what justifies giving owners of
trademarks or even "famous" marks" a preemptive right to
register any domain names or any variations. Why should
trademark owners receive preferential treatment in a
publicly accessible, global communications medium?
One
of the tenets of the Department
of Commerce Statement of
Policy,
a.k.a. the White Paper, is, "the new corporation should
operate as a private entity for the benefit of the
Internet community as a whole." A sunrise proposal for
trademarks or famous marks provides an unsupportable
pre-emptory bias to the commercial sector of the Internet
over all other legitimate uses of the same or similar
character strings. Indeed, this proposal condones
corporate hoarding of a significant percentage of domain
names before a single non-commercial user is allowed to
select an online moniker.
Registering
20 variations of a mark will not make the task of
policing marks disappear. But it will lead to stuffing
the registry database with redundant domain name
registrations and a multi-million set-aside of names
which have scant association to the registered marks.
While
people have sympathy for companies and individuals who
face true infringement and misappropriation of their
marks, these are not new problems to the intellectual
property community, and strong legal sanctions already
exist in the U.S, and elsewhere to address such concerns.
Instead
of providing pre-emptory registration rights for one
segment of the Internet community, encourage ICANN to
establish a new, chartered top level domain, .TMK. Bid
adieu to the sunrise proposal, to exclusion, preemptive
variations and take downs. Bid adieu, too, to those who
want to exploit the goodwill developed in those marks.
Let .TMK be an exclusive sandbox only for those who
possess a trademark registration certificate.
In
summary:
- There
are sufficient existing protections for trademarks,
including federal law and statutes, the UDRP and
monitoring mechanisms. Preemptive exclusions or a
sunrise proposal are unnecessary.
- A
famous marks list used for exclusionary registrations
creates new preemptive rights that do not exist in
law.
- A
sunrise period is not likely to reduce the number of
cybersquatters nor diminish the trademark owners
concerns over policing the use of their
marks
- Introduction
of a top level domain solely for registered owners of
trademarks is the most efficient way to assure that
users find the sites associated with those marks and
limit the value of cybersquatting.
By
Ellen Rony
April 28, 2000
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This
text is endorsed by the following individuals:
- Ellen
Rony, Co-author, The Domain Name Handbook; Member
WG-B
- Michael
Froomkin, Professor of Law, University of
Miami
- Milton
Mueller, Associate Professor, Syracuse University
School of Information Studies; Member WG-B
- Christopher
Ambler, Founder, Image Online Design,
Inc.
- Mikki
Barry, President, Domain Name Rights Coalition;
Member WG-B
- Gordon
Cook, Publisher, The Cook Report
- Jay
Fenello, New Media Strategies
- Judith
Oppenheimer, President, ICB Inc.; Member
WG-B
- M.
Hope Aguilar, Esq., Gazillion Interactive
- Donald
R. Mitchell, Dunn Loring, VA
- Leah
Gallegos, Owner, Creative CompuSec and J&L
Enterprises
- David
Schutt, IS Manager, Speco, Inc.
- Peter
Rony, Co-author, The Domain Name Handbook
- Rod
Dixon, Visiting Asst Professor of Law, Rutgers
University School of Law
- Harold
Feld, Esq., Member WG-C
- Jonathan
Weinberg, Professor of Law, Wayne State
University
- Greg
Skinner, Programmer
- Dean
Robb, Owner, PC-EASY
- Gregory
W. Krajewski, Technology Inventor
Other articles,
editorials and domain-related comments by this
author:
  At
Large Membership: ICANN's Ultimate Tarbaby
Whither
.ORG?
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!
Famous
Marks
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
Cyberwocky
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