Subject: GA-DIGEST V1 #53
From: [email-masked] (GA-DIGEST)
To: [email-masked]

GA-DIGEST            Sunday, April 9 2000            Volume 01 : Number 053

----------------------------------------------------------------------

Date: Fri, 07 Apr 2000 15:44:07 -0700
From: Jeff Williams <[email-masked]>
Subject: [ga] Re: I beg to differ ... RE: SBA betrays small business interests

Judith and all,

  Yes, this is my understanding from Eric directly on several conversations
on the phone that he and I have had in the not to distant past.

Judith Oppenheimer wrote:

> I think SBA's Advocacy makes it clear in these comments, below, that it is
> challenging the TM lobby, not being complicit with it ...
>
> Judith Oppenheimer
>
> 800 & Dot Com News, Intelligence, Consulting – FREE Daily HeadsUp Headlines.
> "...superb real-time source..." –– "...invaluable..." ––
> "...indispensable..."
> http://ICBTollFree.com –– http://1800TheExpert.com ––  (U.S.) 1 800 The
> Expert
> Judith Oppenheimer –– mailto:[email-masked] ––  +1 212
> 684-7210
>
> The Office of Advocacy of the U.S. Small Business Administration has the
> following comments on a proposal under consideration of Working Group B on
> the Internet Corporation for Assigned Names and Numbers ("ICANN"), which is
> tasked with the project of determining famous mark protection. Advocacy has
> serious concerns regarding the proposal and wishes to work with the Working
> Group to address them. We fear that the proposed protections for famous
> marks would preclude small businesses from using common, everyday words,
> like apple, ford, fox, and bell, as well as common family names like Hoover,
> McDonald, and Warner as domain names on the Internet.
>
> To our understanding, the current proposal contains the following elements:
> (1) The World Intellectual Property Organization ("WIPO") would create a
> famous mark list using the criteria below, which were put forth in its
> report on the subject last year:
>
> (a) degree of knowledge or recognition of the mark in the relevant sector of
> the public; (b) duration, extent and geographical area of any use of the
> mark; (c) duration, extent and geographical area of any promotion of the
> mark; (d) duration and geographical area of any registrations of the mark;
> (e) the record of successful enforcement of the rights in the mark; (f)
> value associated with the mark; and (g) evidence of registration of domain
> names that are the same or misleadingly similar to the mark.
>
> (2) Marks that are on the list would have the option of registering names
> during a "sunrise period" whenever a new general Top Level Domain ("gTLD")
> is added to the Internet. The sunrise period would be a brief period of time
> before the new domain is available for the general public to register.
>
> (3) During this sunrise period, famous marks could register the domain name
> identical to the famous mark and either five or 10 variations of the famous
> mark.
>
> (4) The owner of the famous mark would have to pay for each registration.
>
> (5) Once registration is opened to the general public, famous marks do not
> receive any further benefit. There would be no use of filters on domain name
> registrations.
>
> (6) The sunrise period would be inapplicable to gTLDs designated for
> personal and non-commercial use.
>
> Advocacy questions the need for the famous marks proposal, because the 1999
> Anticybersquating and Consumer Protection Act passed by the U.S. Congress
> last year and the Uniform Dispute Resolution Process already address much of
> what the proposal is attempting to rectify. In addition, Advocacy questions
> the legal basis for a supra-legal process. Therefore, we recommend that
> Working Group not adopt at this time a mechanism that would create or
> enforce additional protections for famous marks. Advocacy's position is
> focused on the following concerns.
>
> First, ICANN effectively is delegating policy-making authority to WIPO,
> which will expand that organization's responsibility beyond its treaty-based
> duties. WIPO is a private body, its decisions are not subject to oversight
> or review, and its role by treaty is advisory. However, this proposal will
> give WIPO quasi-governmental decision-making authority, which will
> substantively affect a trademark holder's rights by expanding the rights of
> those considered "famous" and contracting the rights of those who are not.
> What is proposed is seriously flawed. Any process that is adopted must be
> subject to checks and balances.
>
> Furthermore, Advocacy questions whether ICANN has the mandate and authority
> to defer to a third party on this issue. A WIPO panel of intellectual
> property attorneys deciding which names are available for domain name
> registrations is far removed from the bottom-up consensus process envisioned
> by the Commerce Department's White Paper. Democratic participation must play
> a role in formulation of rights of stakeholders in the Internet. ICANN
> cannot delegate the task given to it without insuring that the principles
> under which ICANN operates are met.
>
> Second, assuming any protection is given to famous marks, that protection
> must be limited to the segment of industry in which the mark is famous.
> Advocacy recommends that the Working Group define the scope of the industry
> in terms of the classes of goods and services associated with the mark.
> Classes should be based upon the International Classification of Goods and
> Services.
>
> Although the degree of prominence in the relevant market sector was one of
> the criteria that WIPO enumerated, Advocacy notes that the "sunrise" period
> allowing famous marks to pre-register will allow a mark to be registered
> without limitation across all market sectors, thereby substantially
> expanding the famous mark holder's substantive rights under the mark. For
> example, if "McDonald's Hamburgers" is considered a famous mark under the
> proposal, the McDonald's Corporation would have the opportunity to
> pre-register the word "McDonalds" (as a variation of "McDonald's
> Hamburgers") in every new gTLD. Even if non-commercial and individual gTLDs
> were exempted, no person named McDonald could use their own name for a small
> business's domain name, regardless of the type of industry and even if such
> party's goods or services were totally unrelated to fast food goods and
> restaurant services. It is Advocacy's position that any protection for
> famous marks must be limited to a particular mark's industry sector.
>
> Third, the criteria for determining a famous mark are too vague and easily
> could result in a countless number of famous marks on the list. The proposal
> does not specify the degree of proof needed to be considered a famous mark
> and gives too much discretion to the WIPO. Advocacy believes that the
> standard must be set very high. Furthermore, Advocacy believes that
> additional criteria are needed, such as a requirement that the famous mark
> must be arbitrary for its scope of business, and it must be a mark that
> other persons do not have a legitimate right to use (e.g., a surname, a
> generic, or a descriptive term). For example, "apple" is a generic term but
> is arbitrary when it is referring to computer hardware and software.
>
> Advocacy believes that under the proposal, WIPO will have no constraints to
> limit the number of famous marks. Rather, it will be under immense and
> continual pressure to add marks, thereby diluting the meaning of "famous"
> designation and ex-propriating for famous mark holders exclusive use of a
> substantial proportion of available domain names. A vast number of trademark
> holders would consider their marks famous and would apply for this special
> status. There are slightly less than 1 million "live" registered trademarks
> in the United States. If just 25 percent of these apply, and only 25 percent
> of those are approved, that is approximately 62,500 famous marks from the
> United States. This number is just a fraction of the total number of global
> trademark registrations. With the apparent ease of application and the
> benefits given, the Advocacy believes that the number of marks on the list
> will likely mushroom not to just 1,000 or even 10,000 but to hundreds of
> thousands. The expansion of famous marks will create a barrier of entry to
> new businesses, both large and small, joining the Internet. If a famous
> marks proposal is to be implemented, the number of famous marks must be
> limited to a small number of truly famous marks.
>
> In sum, Advocacy believes that the compromise proposal does not contain
> enough checks to prevent extensive abuse, will result in wholesale
> disenfranchisement of individuals and small businesses, and, furthermore,
> maybe unnecessary. Advocacy recognizes that these are complex issues and
> does not have ready-made solutions. It does not enjoy being a nay-sayer who
> does not contribute to the solution. Therefore, we will work with you to
> identify workable alternatives to address these issues and achieve a
> satisfactory result.
>
> Jere W. Glover Chief Counsel for Advocacy
>
> -----Original Message-----
> From: Owner-Domain-Policy [mailto:[email-masked]]On
> Behalf Of Gordon Cook
> Sent: Friday, April 07, 2000 12:57 PM
> To: [email-masked]
> Subject: SBA betrays small business interests Fwd: Famous Trademark
> Protection Roundtable Agenda
>
> >From: [email-masked]
> >Subject: Famous Trademark Protection Roundtable Agenda
> >Date: Fri, 7 Apr 2000 10:55:21 -0400
> >MIME-Version: 1.0
> >
> >Roundtable Discussion on Small Business Impact
> >
> >of Famous Trademark Protection
> >
> >April 10, 2000
> >
> >Agenda
> >
> >Introduction
> >2:00  p.m.
> >Eric Menge, Assistant Chief Counsel
> >Office of Advocacy, U.S. Small Business Administration
> >
> >Overview of U.S. Trademark Law
> >2:10 p.m.
> >Jonathan Pawlow, Assistant Chief Counsel
> >Office of Advocacy, U.S. Small Business Administration
> >
> >Overview of Working Group B Proposals
> >        2:25 p.m.
> >Michael Palage, Chair of Working Group B
> >
> >Break
> >2:50 p.m.
> >
> >Open Discussion
> >3:00 p.m.
> >All participants
> >
> >Concluding Remarks
> >3:50 p.m.
> >Eric Menge, Assistant Chief Counsel
> >Office of Advocacy, U.S. Small Business Administration
> >
> >--
> >Eric Menge
> >Office of Advocacy
> >U.S. Small Business Administration
> >(202) 205-6949; [email-masked]
> >www.sba.gov/advo
>
> ****************************************************************
> The COOK Report on Internet      Index to 8 years of the COOK  Report
> 431 Greenway Ave, Ewing, NJ 08618 USA  http://cookreport.com
> (609) 882-2572 (phone & fax)             Battle for Cyberspace: How
> [email-masked]                     Crucial Technical . . . - 392 pages
> just published. See  http://cookreport.com/ipbattle.shtml
> ****************************************************************

Regards,

- --
Jeffrey A. Williams
Spokesman INEGroup (Over 95k members strong!)
CEO/DIR. Internet Network Eng/SR. Java/CORBA Development Eng.
Information Network Eng. Group. INEG. INC.
E-Mail [email-masked]
Contact Number:  972-447-1894
Address: 5 East Kirkwood Blvd. Grapevine Texas 75208

- --
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Send mail to [email-masked] to unsubscribe
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------------------------------

Date: Fri, 07 Apr 2000 15:49:51 -0700
From: Jeff Williams <[email-masked]>
Subject: [ga] Re: SBA's critique of ICANN WG-B Proposal

Michael and all,

  I agree with you for the most part here Michael as do most of our
members.  The only place where we may differ is the end result.
For a time the large TM interests may get their way, but not indefinitely.
I say this because I believe that should a joint class action suit be
generated as a result of the desires of the large TM interests in
conjunction with ICANN/WIPO it is likely that serious changes
will occur, much as is happening with the Microsoft case now.

Michael Sondow wrote:

> This is an excellent critique of the proposal from WG-B for
> protection of famous marks. The SBA is perfectly correct that the
> WG-B proposal gives unwarranted predominance in name registration to
> special interests, and illicit authority to non-mandated agencies.
>
> Unfortunately, without clout or an equal voice on the ICANN Board -
> the only real authority in this process - neither the SBA, nor the
> Nader Organization, nor even united Internet users will be able to
> stop the trademark interests, who have an undemocratically-won
> majority on the DNSO Names Council, from putting into effect their
> anti-user, anti-public interest regulations.
>
> Only power determines policy. Petitioning your opponent for
> leniency, once you have let him have the power, means defeat. As the
> SBA and Nader will soon see, there is only one way for their voice
> to have its rightful effect: the dissociation of ICANN and the
> creation of an entity that does adhere to the principles of the
> White Paper.
>
> Without democratic process there can be no democratic and just
> regulation.
>
> > Jere W. Glover Chief Counsel for Advocacy wrote:
>
> > The Office of Advocacy of the U.S. Small Business Administration has the
> > following comments on a proposal under consideration of Working Group B on
> > the Internet Corporation for Assigned Names and Numbers ("ICANN"), which is
> > tasked with the project of determining famous mark protection. Advocacy has
> > serious concerns regarding the proposal and wishes to work with the Working
> > Group to address them. We fear that the proposed protections for famous
> > marks would preclude small businesses from using common, everyday words,
> > like apple, ford, fox, and bell, as well as common family names like Hoover,
> > McDonald, and Warner as domain names on the Internet.
> >
> > To our understanding, the current proposal contains the following elements:
> > (1) The World Intellectual Property Organization ("WIPO") would create a
> > famous mark list using the criteria below, which were put forth in its
> > report on the subject last year:
> >
> > (a) degree of knowledge or recognition of the mark in the relevant sector of
> > the public; (b) duration, extent and geographical area of any use of the
> > mark; (c) duration, extent and geographical area of any promotion of the
> > mark; (d) duration and geographical area of any registrations of the mark;
> > (e) the record of successful enforcement of the rights in the mark; (f)
> > value associated with the mark; and (g) evidence of registration of domain
> > names that are the same or misleadingly similar to the mark.
> >
> > (2) Marks that are on the list would have the option of registering names
> > during a "sunrise period" whenever a new general Top Level Domain ("gTLD")
> > is added to the Internet. The sunrise period would be a brief period of time
> > before the new domain is available for the general public to register.
> >
> > (3) During this sunrise period, famous marks could register the domain name
> > identical to the famous mark and either five or 10 variations of the famous
> > mark.
> >
> > (4) The owner of the famous mark would have to pay for each registration.
> >
> > (5) Once registration is opened to the general public, famous marks do not
> > receive any further benefit. There would be no use of filters on domain name
> > registrations.
> >
> > (6) The sunrise period would be inapplicable to gTLDs designated for
> > personal and non-commercial use.
> >
> > Advocacy questions the need for the famous marks proposal, because the 1999
> > Anticybersquating and Consumer Protection Act passed by the U.S. Congress
> > last year and the Uniform Dispute Resolution Process already address much of
> > what the proposal is attempting to rectify. In addition, Advocacy questions
> > the legal basis for a supra-legal process. Therefore, we recommend that
> > Working Group not adopt at this time a mechanism that would create or
> > enforce additional protections for famous marks. Advocacy's position is
> > focused on the following concerns.
> >
> > First, ICANN effectively is delegating policy-making authority to WIPO,
> > which will expand that organization's responsibility beyond its treaty-based
> > duties. WIPO is a private body, its decisions are not subject to oversight
> > or review, and its role by treaty is advisory. However, this proposal will
> > give WIPO quasi-governmental decision-making authority, which will
> > substantively affect a trademark holder's rights by expanding the rights of
> > those considered "famous" and contracting the rights of those who are not.
> > What is proposed is seriously flawed. Any process that is adopted must be
> > subject to checks and balances.
> >
> > Furthermore, Advocacy questions whether ICANN has the mandate and authority
> > to defer to a third party on this issue. A WIPO panel of intellectual
> > property attorneys deciding which names are available for domain name
> > registrations is far removed from the bottom-up consensus process envisioned
> > by the Commerce Department's White Paper. Democratic participation must play
> > a role in formulation of rights of stakeholders in the Internet. ICANN
> > cannot delegate the task given to it without insuring that the principles
> > under which ICANN operates are met.
> >
> > Second, assuming any protection is given to famous marks, that protection
> > must be limited to the segment of industry in which the mark is famous.
> > Advocacy recommends that the Working Group define the scope of the industry
> > in terms of the classes of goods and services associated with the mark.
> > Classes should be based upon the International Classification of Goods and
> > Services.
> >
> > Although the degree of prominence in the relevant market sector was one of
> > the criteria that WIPO enumerated, Advocacy notes that the "sunrise" period
> > allowing famous marks to pre-register will allow a mark to be registered
> > without limitation across all market sectors, thereby substantially
> > expanding the famous mark holder's substantive rights under the mark. For
> > example, if "McDonald's Hamburgers" is considered a famous mark under the
> > proposal, the McDonald's Corporation would have the opportunity to
> > pre-register the word "McDonalds" (as a variation of "McDonald's
> > Hamburgers") in every new gTLD. Even if non-commercial and individual gTLDs
> > were exempted, no person named McDonald could use their own name for a small
> > business's domain name, regardless of the type of industry and even if such
> > party's goods or services were totally unrelated to fast food goods and
> > restaurant services. It is Advocacy's position that any protection for
> > famous marks must be limited to a particular mark's industry sector.
> >
> > Third, the criteria for determining a famous mark are too vague and easily
> > could result in a countless number of famous marks on the list. The proposal
> > does not specify the degree of proof needed to be considered a famous mark
> > and gives too much discretion to the WIPO. Advocacy believes that the
> > standard must be set very high. Furthermore, Advocacy believes that
> > additional criteria are needed, such as a requirement that the famous mark
> > must be arbitrary for its scope of business, and it must be a mark that
> > other persons do not have a legitimate right to use (e.g., a surname, a
> > generic, or a descriptive term). For example, "apple" is a generic term but
> > is arbitrary when it is referring to computer hardware and software.
> >
> > Advocacy believes that under the proposal, WIPO will have no constraints to
> > limit the number of famous marks. Rather, it will be under immense and
> > continual pressure to add marks, thereby diluting the meaning of "famous"
> > designation and ex-propriating for famous mark holders exclusive use of a
> > substantial proportion of available domain names. A vast number of trademark
> > holders would consider their marks famous and would apply for this special
> > status. There are slightly less than 1 million "live" registered trademarks
> > in the United States. If just 25 percent of these apply, and only 25 percent
> > of those are approved, that is approximately 62,500 famous marks from the
> > United States. This number is just a fraction of the total number of global
> > trademark registrations. With the apparent ease of application and the
> > benefits given, the Advocacy believes that the number of marks on the list
> > will likely mushroom not to just 1,000 or even 10,000 but to hundreds of
> > thousands. The expansion of famous marks will create a barrier of entry to
> > new businesses, both large and small, joining the Internet. If a famous
> > marks proposal is to be implemented, the number of famous marks must be
> > limited to a small number of truly famous marks.
> >
> > In sum, Advocacy believes that the compromise proposal does not contain
> > enough checks to prevent extensive abuse, will result in wholesale
> > disenfranchisement of individuals and small businesses, and, furthermore,
> > maybe unnecessary. Advocacy recognizes that these are complex issues and
> > does not have ready-made solutions. It does not enjoy being a nay-sayer who
> > does not contribute to the solution. Therefore, we will work with you to
> > identify workable alternatives to address these issues and achieve a
> > satisfactory result.
>
> ============================================================
> Michael Sondow           I.C.I.I.U.     http://www.iciiu.org
> Tel. (718)846-7482                        Fax: (603)754-8927
> ============================================================

Regards,

- --
Jeffrey A. Williams
Spokesman INEGroup (Over 95k members strong!)
CEO/DIR. Internet Network Eng/SR. Java/CORBA Development Eng.
Information Network Eng. Group. INEG. INC.
E-Mail [email-masked]
Contact Number:  972-447-1894
Address: 5 East Kirkwood Blvd. Grapevine Texas 75208

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------------------------------

Date: Sat, 08 Apr 2000 18:09:24 -0700
From: Jeff Williams <[email-masked]>
Subject: [ga] Network Solutions Releases Domain Name Data Statistics

All assembly members,

  Contrary to some of the rather inpertinant members of this assembly
and ICANN's insistance, it seems that some recent statistics from
NSOL have been quite reveling.
See:
 http://cnniw.yellowbrix.com/pages/cnniw/Story.nsp?story_id=9858023&ID=cnniw&scategory=Internet%3ARegulations

and,
http://www.NSOL.com/statistics/
for further details.   Very interesting....

Regards,

- --
Jeffrey A. Williams
Spokesman INEGroup (Over 95k members strong!)
CEO/DIR. Internet Network Eng/SR. Java/CORBA Development Eng.
Information Network Eng. Group. INEG. INC.
E-Mail [email-masked]
Contact Number:  972-447-1894
Address: 5 East Kirkwood Blvd. Grapevine Texas 75208

- --
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Send mail to [email-masked] to unsubscribe
("unsubscribe ga" in the body of the message).
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------------------------------

End of GA-DIGEST V1 #53
***********************