WIPO Internet Domain Name Process

Transcript - part 2: Washington, DC regional consultation

Georgetown University
October 1, 1998

Ms. Deutsch: thanks Chris. Boy, that was not nice to make me go first. All right, I want to thank WIPO and the Panel of Experts for your commitment to this important process and for being here and for traveling all around the world doing what you are doing.

Bell Atlantic is one of the largest communication companies in the world and we are committed to the future of the Internet as a provider of Internet infrastructure and also as an Internet service provider. At the same time, we are a trademark owner of the famous "Bell" and "Bell Atlantic" brands. Our trademark infringement problems started several years ago and have quickly grown out of control. Although we continue to put out hundreds of fires, the ultimate goal should be to stop the arsonist and that is why we are here today. Many people do not and still are not taking the trademark concerns of the commercial sector very seriously and some of these same people still insist there is no serious trademark problem that requires WIPO’s involvement in this process. The evidence, however, I think, screams out for your help. Bell Atlantic submits Exhibit A for the Panel’s consideration, this is Exhibit A. This is a sample of our domain name watching service reports from the last nine months just for the "Bell" mark and this is just for .com, .net and .org, the existing gTLDs. In less than a year, we have already had 579 matters in the existing gTLDs. Out of the 579 matters, only ten of these could be resolved under NSI’s Dispute Resolution Policy and Exhibit A is filled with tons of Bell cybersquattings, pirate, pornographers and other companies in the telecommunications field who are trying to exploit the fame of our Bell mark. We even had a satanic cult try to use the Bell Atlantic mark and I think I may be the only trademark lawyer that has actually been prevailing against the devil. But for each of these matters it is really important to realize that we were required to spend considerable resources investigating every matter, monitoring to see if these people are actually using our marks, preparing cease and desist letters and suing if necessary to enforce our rights. And none of the matters can be resolved easily or quickly, they all drag on for at least a year and we are finding that this is becoming a literal piracy epidemic and we have spent more money and resources enforcing domain names this year than we have spent in past years combined. The report indicates that we now log-in an average of fifty new infringements a month, and this is just for Bell. The monthly breakdown shows that it is steadily increasing over time, we are also discovering that infringements in the CCTLDs are dramatically on the rise and we believe in the future the ccTLDs will be just as big a problem as what exists today in the gTLDs.

The overwhelming problems we face today lead to one conclusion. We need immediate, low-cost and effective solutions, when it is appropriate to add new gTLDs, we believe that only one or two should be added, slowly and deliberately. We need enough time to study the effects on trademark infringement. We also need to know whether these new gTLDs are serving their intended purpose, for example, are they actually opening up new spaces for the legitimate users who need them or are they just new places where people are running and flocking to infringe? A slow, deliberate approach will also allow WIPO to determine whether its proposed recommendations are working properly. A big part of our problem can be cured on the front end through dispute prevention. The goal should be to prevent as many infringements as possible from occurring in the first place. Not simply to send everything on to ACP Panel or arbitration or to the courts, really the watch-word should be prevention, prevention, prevention.

We agree with all the elements WIPO has raised in RFC 2 to improve the domain name application process and beef-up registration contracts. We frequently battle infringers who give phoney identifying information in their application and Exhibit B which follows the first sheet of your page are some of the examples of false information we have found in the last several months, it includes peoples who give phony addresses, phone numbers like: 555 12 12, post office boxes that are false and all sorts of things. Although we have many suggestions for effective dispute prevention, here are a few critical ones: first, we believe that registrars should adopt a uniform policy banning false information in the domain name application, knowingly placing false information in an application should be a material breach of the contract and result in the automatic suspension of the registration. Another must, from our point of view, is prepayment of registration fees, no-one should be allowed to register a domain name before payment is received. We find that many of our infringers have not paid for their domain names and prepayment would certainly cut down on much of the cybersquatting. We also support WIPO’s role in establishing recommendations for famous marks and for protecting them. In addition to the usual indicia of fame, I believe that if a mark has been subject to 50 or more separate incidents of cybersquatting that should be prime facie evidence of fame. We also believe that registrars should adopt a uniform policy that bans cybersquatting and warehousing of famous marks. The members of our Private Sector Working Group are finding that the same people are stealing our trademarks over and over again and here is a creative idea to deal with this problem: if the trademark owner submits evidence of cybersquatting to the registrar or registry and agrees to indemnify them, they should take down the domain name, this is similar to the U.S. copyright legislation containing the concept of notice and take-down, service providers in that context have agreed to take down infringing materials to assist in halting copyright piracy on the Internet and it could work the same way with trademark infringement. In addition to these steps, we still support both the creation of national laws and an international treaty banning cybersquatting. We also support the idea of a pro-active exclusion in the new gTLDs for famous marks, depending on how it is implemented it could help cut down on the most obvious cases of cybersquatting and although it will not solve every problem, it certainly would be a good additional deterrent. WIPO should also seriously consider the use of a waiting period, the waiting period is a familiar concept to all trademark owners, it is also good as a matter of public policy and the pros include: 1) provide notice to people of the new domain name applications, 2) it prevents applicants from prematurely investing in names that may not be available and 3) it also provides greater business certainty for applicants who successfully register a domain name after the waiting period has expired. Dispute resolution is also important, the same dispute resolution policy should apply across the board to both gTLDs and CCTLDs. Dispute resolution should not be the dumping grounds for all problems however. It should be a reasonable last resort alternative for trademark owners, no matter how reasonable one might think the fee is for such matters, if all the thousands of disputes we face today were sent to litigation collectively the cost would become unreasonable. These costs in many cases are unnecessary and will ultimately be passed on to the consumer, making electronic commerce more expensive for all of us. Expedited on-line dispute resolution is an excellent option for trademark owners, but it should not be the only option, the trademark owner should also have the option to go to court, the trademark applicant must agree in its contract with the registrar that it submits to jurisdiction in a wide variety of places, including submission to the ACP process. If the trademark owner goes to the ACP panel, the loser should pay all costs associated with the action, this determination could, of course, be appealed to a national court if necessary and, of course, trademark harmonization is still a goal that will be needed in the immediate future. However, loser pays is yet another deterrent to willful piracy on the Internet and of course the registrars and registries must agree to be bound by these judicial determinations. These are only some of our major concerns, I hope they have been helpful and constructive to the panel and, at the same time, I reach out to the rest of the Internet community to work with us to solve these problems and move forward constructively on the exciting challenges that lie ahead. Thanks.

Chairperson: Thank you very much Sarah Deutsch. May I ask you just to stay there for a few moments so if there are any observations or questions that anyone might wish to make. Sir, please. I wonder if I may ask you to, perhaps there are microphones, but to identify yourself for the record each time you make an observation or ask a question.

Mr. Feld: Is this on? I am sorry, first of all I have an ear infection therefore I cannot even tell if this microphone is on or not but I will assume that it is. Harold Feld, Domain Name Rights Coalition. I just would ask two points of clarification if I may: one is, on your proposal that the loser should pay for the dispute resolution process, is there any consideration on the effect this might have for people who have legitimate claims in the United States where the rule is: "each side pays", one of the arguments that has been raised against adopting this sort of "‘loser pays" system is that it unfairly penalizes people with fewer resources. That small companies simply cannot risk going to a court even if they have a high percentage chance of winning because it is a make or break issue for them, whereas a large corporation can certainly afford to pay its own legal fees. The other question I would ask is: do you have any suggestions or any observation on how this process would apply in the case of what is know as "reverse hi-jacking" which is where a large corporation comes and makes a claim which would not be supported under traditional trademark law but because it is an individual or small business that is the nameholder, the nameholder has the choice of either a lenthy or expensive process defending itself or giving in to the large corporation’s demand and I cite as one example of this the case of polky.org where a large toy company decided to come after a small boy on a name which, under any standard of trademark law, was clear was not conflicted.

Chairperson: Thank you Mr. Feld. Ms. Deutsch?

Ms. Deutsch: Thanks. I just want to say that, you know when you look through our Exibits, you know, the 579 infringements you are not finding any of the examples usually where is the little person and we are reverse hi-jacking, we are finding that we have got people cybersquatting all over the place. So I think the majority of these matters that would go to an APC panel would be something that does involve true infringement and not, you know, the reverse hi-jacking. The costs for the ACP process are going to be relatively low, if somebody can afford to register a domain name they should be willing to pay those, you know, relatively low costs to fight for and, you know, the problem for us is that it becomes; we have the reverse problem which is when you put all the fees together and if we have 579 of these in nine months from one of our marks, we are going to be spending a fortune litigating so we think it would be fairer for the parties to fight and if you believe you are right then you should be willing to go to the court and know that if you lose, you pay. The people who are doing this illegally, I think, will drop out because they are not going to want to pay because they know they do not have a claim.

Chairperson: Thank you. May I ask you a question? It is a question on the mechanics of pre-payment, one of the things that you recommended was that there should be a rule that if you do not prepay or you do not activate the domain name until such time as payment is received. Mechanically, how do you envisage that working, as I understand it, we will have registries and multiple registrars and I imagine that there will be some arrangement between registrars and registries whereby there is perhaps a deposit account with the registry for particular inlet ISPs who are acting as registrars, they may prepay a certain amounts. Where will the contractual relationship about the payment come into play which can cause the registry not to activate the domain name?

Ms. Deutsch: I think there would be a couple of options, one would be, as you said, to open a deposit account and you simply would debit your deposit account the way you do at the PTO today. You would have the funds there and you would have prepaid. I think there should be options for charging it, you know with electronic commerce the way we are developing payment systems today it seems to be relatively easy, the same way amazon.com does not send you a book before you pay, we can, I am sure, work out the mechanics of payment.

Chairperson: Yes. I wonder if you could just give some thought to that at some stage because it is something we would need to address if that were an option that were to be considered and it is a question, really, of where the economic burden lies for this: on the registrar or on the registry in respect of the non-payment. Mr. Ken Fockler please.

Mr. Fockler: I heard you say for new top domains to go slow but I think I may have missed a sentence or two before that, did you have a comment or opinion about whether there should be new top level domains or you expect them or will help or hinder?

Ms. Deutsch: Well, what I am personally hoping is that we get some of these, that I view the WIPO process as critical and I see what you recommend is critical and if you can get into place some of these principles like prepayment and banning cybersquatting and other practical means to help the trademark owner then I think we could add one or two as an experiment to see what happens but just to add them now on top of everything with no other relief, I think would be a mistake.

Mr. Fockler: So, process first.

Ms. Deutsch: Right.

Mark Partridge: I have a couple of question on how a waiting period might effect different interests. One question or one concern that has been raised about a waiting period is the risk that legitimate domain name claimants might face from people who would oppose simply to hold the domain name up for ransom and hoping to receive some payment. So, in addition to the cybersquatting we could face a new kind of problem. Another concern is, can we find a way to accommodate legitimate domain name users who are seeking to use the medium quickly for political purposes or other kinds of non-commercial purposes. Can you accommodate those interests without a waiting period?

Ms. Deutsch: There may be a few creative solutions around this. One, would be maybe to grant people immediate registration if they pay maybe more money up front, or a bond or something. I think that could get them on the books quicker than the people who are willing just to go through the normal process and I do think that there should be severe penalties built in somewhere for people who would misuse this process, including punitive damages and whatever other very harsh deterrants there would be to make sure that people do not do that kind of mischief but it is a very difficult issue, I realize that.

Chairperson: Mr. Don Heath please.

Don Heath: I wonder if you could elaborate a little bit more on the creative thought you had regarding the take-down, could you go over that a little bit more?

Ms. Deutsch: Sure. I was part of a process for the last three years as a service providers trying to get out of liability from the copyright community, who wanted to hold us lible for third party copyright infringements that went over our telephone systems and we worked out a solution which is now in a legislation that is in Congress and maybe will pass this year where we agreed to take some steps to help the copyright owners take their materials down from our websites. In exchange, we are given a limitation on our copyright liability and it gives us a lot of business certainty that we are not going to be the deep pocket for all infringements, and at the same time, we are helping the copyright owners through this process of notice and take-down. Basically, what the copyright owner does is fill out a form with about 18 elements telling us, you know, that they have got a copyright, that it is being infringed, where it is being infringed, there are probably 10 or 12 different elements they have to send in and when they send that in, we take the material down from our server and we think it will work very well to help them and it will also help us. And I think a similar principle could apply, just for cybersquatting, not for all other domain names, but if we come up with the indicia, what the criteria are for cybersquatting, submit this to the registry, agree to a registrar, agree to indemnify them. It should really be a no-brainer that they should take this down.

Don Heath: Are you suggesting that ISPs or people who provide web sites or server capabilities should, if a trademark owner or intellectual property owner requests or shows proof that their mark or their copyright has been infringed, that then the ISP or the service provider would take it down.

Ms. Deutsch: Oh yeah. I mean that is what the whole industry agreed to and basically we found the same thing worked very well with the satanic cult I was telling you about. They were using one of our trademark on an ISPs website and the ISP had a policy against infringing trademarks and we simply wrote to the ISP, showed what they were doing, showed them how offensive the content was and they took that page down from their server.

Don Heath: And with regard to registrars or registries, I guess you would cover that through the preemptive or proactive challenge before were used, right, a domain name registration.

Ms. Deutsch: The Proactive Exclusion?

Don Heath: Yeah.

Ms. Deutsch: That would help part of it but they could simply change, you know, there is always going to be ways to get around the proactive exclusion, they could change your name in such a way that it does not get picked up and so they get through, but they are still cybersquatting and, you know, if I give the registrar a hundred examples of other famous marks this person has taken, I think it should kind of be a no-brainer that that registrar would take those people down.

Chairperson: May I follow up on this also with one or two points? So, as I understand it in the copyright on-line service providers scheme, the decision, the take-down decision is, you have just said, made by the ISP, if you provide the 18 elements then it is the ISP that takes it down. What happens then, that is to say, if the party whose website has been taken off has a disagreement with the decision, what are its options?

Ms. Deutsch: There is a provision in the legislation that if the material was taken down by mistake or let us say a competitor was playing some games and did you some harm, you could get your material put back up. At that point the matter would probably go to court and there is also a very severe penalty built into the legislation for people who maliciously use the process for false purposes.

Chairperson: Right, so, given that we are probably talking about a contractual solution here, as opposed to a legislative solution which was possible in the case of the copyright on-line service providers. If it is a contractual provision you could not, it is difficult to imagine, include a penalty provision for misuse, abuse of the process.

Ms. Deutsch: That is right, but on the other hand, with the copyright, you are really not sure that the person is the owner, it is not easy to search, but with cybersquatting, if I send you 100 records that show these people own all sorts of names, it is not too far-fetched to imagine that they truly are a cybersquatter. The chances for mistake with this limiting it to cybersquatting, I think, are very narrow.

Chairperson: Yeah. And now what is going to be my other question is: how would you define cybersquatting when looking at these 18 elements that have to be provided before and ISP takes the action, or the registry acts on a recommendation of an ISP, what sort of criteria would you establish to define what is cybersquatting?

Ms. Deutsch: I think there should be a numerical threshhold probably, either the same person or, for example, if you look at our Exhibit B, you will see that somebody has registered bagte.com, atlanticgte.com, gteatlantic.com, gtebell.com, all the owners are listed as the same names as the domain names. So, you might not know that that is a cybersquatter but when you do an address search, it all comes up as the same address, so the numerical threshold combined with some sort of linkage to the same entity but it does not have to be by the same name, I think would be good proof that they are a cybersquatter, combined with what you find in terms of the indicia for famous marks and if you are getting a number of famous marks on that list, you are going to get some clue.

Don Heath: What do you think a number, I know we cannot be exact in this but, would you say that number, if you are going to quantify the number of names that somebody may be hoarding or cybersquatting, would you prefer or would you think it should be fairly low or middling or fairly high or low, less than ten say or even less than five, middle, say ten to twenty?

Ms. Deutsch: Probably in the middle.

Chairperson: I am sorry to keep repeating the person’s name but I am thinking of the typist in one week’s time. Frederick Mostert please.

Mr. Mostert: To pick up on those last two questions in your previous statement about 50 incidents of cybersquatting should be enough to prove that a mark is famous or well-know, as a practical matter, how would you have that threshold work in terms of evidence, providing evidence, would you just have a list with simply 50 dead-heads or, as a practical matter, how should one ideally present evidence before you can get the threshold of showing a mark is famous or well-known?

Ms. Deutsch: I think you should, well I would say that this is in addition to other indicias, not by itself, but assuming everything is equal, the fact that somebody has taken your mark this many times shows that there is a market value for it, it must be famous otherwise they would not be cybersquatting and I think it, you know, if there was a name that you were not quite sure whether it was famous and you found 50 or 100 incidents of cybersquatting it, it would be very clear and the evidence you would submit would be the records from the registry, showing it was taken and, of course, if some of the cybersquatters had also taken lots of other names along wiht it, you would want to provide that to show that this was a pattern or practice, not just some individual who happened to erroneously take your exact name. We usually find that cybersquatters are not just taking one or two marks, with our Private Sector Working Group we find that the same group of people are stealing all our marks so it really is much bigger than a single incident.

Mr. Mostert: If I could just pick up on that last point, you also suggest, in other words, that as in the physical world, in the real world where bad faith sometimes is a factor to infer the fact that there is a taking and that the mark is well-known, would you suggest the same principles apply?

Ms. Deutsch: Yes. I would, I think that is exactly right.

Chairperson: Right. Now, I will take one more speaker or commentator on this issue and then I am afraid we are going to have to move on. Mr. Ken Fockler please.

Mr. Fockler: Yes, we do have to move on but I am on but I have followed the notice and take-down procedure and I think the Canadian Association of Internet Providers is pursuing the same matter because you have to do it within your jurisdiction. It makes me wonder why can you not move forward with the same thing right now with these situations? Why could you not have pursued a notice and take-down procedure legislation for these situations, achieve some legislation, I guess you have one entity to deal with names NSI, why do you need, do you need a WIPO recommendation, do you need some other action? I am just sitting here drawing the parallels between the notice and take-down on the content and copy and this and saying what is preventing you from going ahead and trying to achieve the same thing in this situation?

Ms. Deutsch: It was very contentious. It took three years and fights at the World Intellectual Property Organization, holding up two bills in Congress, it was nasty. We would love to just work constructively on this process and move forward and we do not just have NSI, we are soon going to have all sorts of registries and so it is very important that there be a uniform set of recommendations that comes from WIPO on this.

Mr. Fockler: But we could be moving to that same, just parallels. OK.

Chairperson: I think also, you need either a legislative or a contractual basis. I did say only one more but the gentleman down the back has been very patient so the last one please.

Hugh Latimer: My name is Hugh Latimer, I am in private practice with Wild & Fielding in town here and I come at this from the same direction that Sarah does, trying to defend or stop hundreds of trademark infringements so perhaps I am a little biased on this whole question but maybe this is more for the panel, is there really a need for more generic top level domains? That might be a naieve question but maybe somebody could explain why there is any need for that at all.

Chairperson: Sarah please?

Ms. Deutsch: Well, I agree! I do not know why either. I think you have to prove there is a need. Like I said, I mean, are people really, are these really opening up new name spaces? Who is going to study that? Are there going to be numbers to show that people are going to the new name spaces and it is freeing up all the imprisoned names that were formerlly not available? And how many cases of infringement are occurring? That is, I think, very critical as a follow-up study for WIPO.

Chairperson: Thank you very much, Sarah Deutsch for what was an extremely constructive and thoughtful contribution. We will now move, if I can just let you know the programme, we will now hear from Mr. Bob Connelly from the Council of Registrars from Core and then Christopher Gibson, my colleague, had indicated that we would hear from Mr. Scott Evans and Mr. Harold Feld which would be after the coffee break. We have two more registrations for speakers, one of whom is Michelena Hallie, who has come from New York as Senior Counsel, Vice President for Intellectual Property of Viacom and, with the permission of Mr. Scott Evans and Mr. Harold Feld, I would take that person as 3 and move you to four and five. So, Mr. Bob Connelly and while you are on your way, may I introduce Professor Michael Froomkim whom I introduced in words earlier and who has subsequently arrived. I am sorry we do not have a seat for you here, yet. Mr. Bob Connelly, sir.

Robert Connelly: Thank you. So, I echo Sarah’s appreciation for WIPO making these opportunities for public input on the proposals. I spoke at Sanford having heard only five days before that there was to be a meeting and subsequently had the opportunity to study the RFP, number 2 and have now recorded, in paper, what I gave extemporaneously at the prior meeting and, appended to sections, references, RFC 2-14.2 would refer to your paragraph 14.2 so that they can be tracked against your RFP. I mentioned in a prior meeting that when I learned first of the work of the International Adhoc Committee (IAC), I learned of it February of last year and just about that time saw the first iteration of the WIPO proposals and I saw them to be a very good step forward and what Sarah has referred to as proactive, I have referred to as preemptive exclusions. I considered these to be really the centerpiece of the IAC propals and without it, I do not see how things can advance in an orderly fashion. I somewhat was amused by your distributing the white pages and then expecting you to come forth with the yellow pages before you were done but as someone who is receiving registrations, I should say applications at this time, I know that they are all out there, the cybersquatters are out there in force. I will skip through my written text and I have given Christopher this copy of my comments so that he can go down correctly. I saw something, some e-mail was passed to me, a summary of the Sanford Meeting and said, excluding the first hour, which meant to me that the recording did not work so I felt that it was necessary to come again and to make sure I got recorded. If the other was not true, why nonetheless I have been able to append the relativity of the portions of references to the RFP 2. I have been very much involved in the intellectual property issues in Japan, I have been in Japan 27 years now. My firm, ............................. Services International, I refer to as the elder PSI, the PSI initials are well-known on the Internet, as our my initials, RFC quite by coincidence. I cannot emphasise enough that the preemptive exclusions are very important and I hope that if this process which is undergoing here is not going to be concluded until March of next year that if any new gTLDs are delegated to CORE that there be some interim procedure for a similar type of thing. I believe such was promised to the Disney people at meeting related to the Green Paper and White Paper and how that will be done I do not know because I have not seen anything further on it within my own distribution, e-mail system with CORE. I would like you all to recognize that CORE is done by a memorandum of understanding, each registrar has agreed to this memorandum of understanding and many of the points which you have mentioned Sir are covered in that memorandum of understanding. For example, CORE shall establish and enforce requirements that registrars shall not register as SLDs, for their own account or the accounts of an affiliate, for the purpose of trafficking and SLDs for sale, resale or transfer to applicants and I have referenced that to paragraph 14.5 for example. You mention fees, CORE shall establish and enforce procedures and requirements for the payment by registrars of the fees specified in article such and such before registration of SLDs, whether this passes on upstream to the actual registrants is a business decision for the registrars and one with which we are all very concerned because we do not want to be holding the bag for people who are cybersquatting and then do not actually pay for the domains that they have taken out. Each registrar shall enter into registration agreements and accept applications for the SLDs only on forms containing at least the requirements for information and legal language set forth and that includes a statement of intended use and that the applicants must have completed the form, no discriminatory conditions to assigning them, the applicant acknowledges that by virtue of the provisions of the gTLD MoU any third party may challenge the assignment so the ACPs are in our bible under which we operate. Registrars, of course, shall cooperate with WIPO center by promoting, by promptly providing any information materials required. I presented to the panel at the meeting in Sanford this document which is the WIPO interface for our shared registry system so everything which is required by the Appendix C of the MOU has been considered carefully and necessary information stored in the SRS and provisions are made for WIPO to make any necessary changes removing names etc. You mentioned the uniformity of rules and this is something which has not been discussed, it was not discussed at the Standford meeting but I firmly believe that all, certainly all gTLD registries should have a set of rules coming down hopefully from the new corporation, whatever we call, the new Iaona or Icann that there should not be an opportunity for there to be a difference between registries and thus encourage cybersquatters to shop the market for where they can get away with something, we should all be playing by the same rules. I would suggest here that, in my opinion, Icann should tell all registries you cannot engage in any practices different from the rules Icann establishes. The question of out of date or deliberately incorrect data in the database was brought up by almost every speaker at the last meeting as you have done. I propose a suggestion here that this should be relatively simple for the registry to ping on a period basis, once a week, once a month, the domain given in the electronic mail address of the administrative contact, the billing contact, the third contact being, yes, payment so that that can be verified also the primary and secondary DNS and if a sufficient number of tests prove bad there should be an amber light above some threshold a red light and a corrective action required. It would even be possible to have a robot telephone call made to telephone numbers to make sure that they are real and if they are not real again light a red light so that an administrative intervention will have to be made. Certainly, this was clear from the Porsche, that he had over 190 cases, many of which he could not track down. In that same regard is that we have thought of terms of proactive or preemptive exclusion and when I began to see the kind of things which the Porsche people were complaining about, let us see if I can give you the examples here; one began with a 46porsche another one was part4porsche. I would think that it would even be possible to test the string that is being applied for, for the presence of a string of letters which are subject to a proactive exclusion, for example, if it were Porsche and that was already set up as a preemptive exclusion that at the same time it would be possible to then make a test like you would make an end string test in any one of the programmes, computer programming languages and if you find that, at least require an administrative action before that would be listed, for example, the GTEs that you mentioned, if there were a proactive exclusion of GTE you would not have to then say think up everything else that somebody might think of but it would at least not necessarily prevent it but it would require some justification if that string appeared. The same thing would be done, I would think, in the way of which trademark watch services operate, they look alike, sound alike, that these might be also subject to the preemptive exclusions. There are some things which CORE has done which we were not required to do and I think they do show you the calibre of the people who are running CORE. Some of the members of CORE wanted quantity discounts, they argued that, well, they could get 800 number minutes, if they bought a million minutes they could get a good price. Or, you know, you could get seats in a plane or on a theatre. Others have argued that each domain is really a unique resource and they are not subject to comparison to minutes or seats at the opera, we took a vote on this and we voted unanimously no quantity discounts to CORE registrars. In same way, the larger registrars are lobbying for a flat fee for a month for all registrations, some of us felt that would be unfair to small registrars, especially in less-developed countries which would render them uncompetitive and since one of the plans for the IAHC was to have regional diversity, that this would be inappropriate and we vote that and so our fees are all on a per registration basis. One last item, on the round robin idea, those who have large queues of maybe duplicated words that wanted to have any turn rejected, any rejection to have a second chance, third chance, fourth chance and we vote overwhelmingly that a failed attempt was a failure and they would pass over to the next chance. So, thank you very much and you have this all in writing this time.

Chairperson: Mr. Bob Connelly. Thank you sir. Are there any observations or questions that anyone would like to address to Mr. Connelly? Please, Cathy.

Catherine McGuffy: Hi. I am Catherine McGuffy from MCI Worldcom and I just wanted to get a clarification. When you were mentioning about, for example, your Porsche example where, you know, parts for Porsche and things like that, were you inferring that that would be included in the cybersquatting or were you talking about the checking? Could you clarify a little bit because one concern I would have is if we were to have that as a criteria that any use of a mark might be considered cybersquatting that we might perhaps be expanding upon what is considered traditional trademark infringement. So, if you would not mind just clarifying that point please.

Robert Connelly: We are dealing primarily in the field of, and I ........... in my text use the word "famous trademarks", I have avoided using "well-known" trademarks. They are different. Mr. Mostert can explain it to you, he wrote a whole book about it but if it is indeed a famous mark and the WIPO has agreed it should be preemptively excluded, I am suggesting that the presence of that string of characters in a domain would at least cause some administrative action to be made before it was actually registered so that if we determined that it was not being done inappropriately. I can imagine that the Porsche dealer in Newport Beach a proper person to say "Newport Porsche" I do not know that but what I am saying is that it is possible to pause in the registration process once one recognizes that something a famous mark is in included in something which is being applied for.

Chairperson: Thank you. Any other observations or questions?

Marc Partridge: Let me just follow up on that, it is Mark Partridge, Mr. Connelly then if I am following if in instances where there were legitimate conflicting interests we would not be, because of the preemptive exclusions, grating trademark owners greater rights than they have in the non-Internet world. We would simply use that to trigger an examination and so we could accommodate, for example, the legitimate uses of a family name say McDonald, or legitimate protest uses such as "NotMcDonalds.com" or something like that.

Robert Connelly: I would think so. The WIPO documents, as originally prepared, contain both general and specific so that, for example, a general exclusion would cut accorss all whatever the number might be, one, three or seven top level domains or a specific might apply to only one area, for example, something in the theatre area might have a specific exclusion under arts and yes, there would be some decision made when an attempt was made whether it was an existing preemptive exclusion to bring it down in the specific case.

Marc Partridge: One follow up on that. At that point, who do you suggest makes the decision. Should we have the registrars or the registries or should there be some independent body that would review this, examine this when the preemptive exclusion is triggered.

Robert Connelly: we registrars are not permitted to make any decision of that type. So it would be handled at something like a WIPO level.

Chairperson: Mr. Philip Sbarboro please.

Mr. Sbarboro: Thank you Francis. Bob, on your suggestion that a statement of purpose be listed are you contemplating human review of these applications?

Robert Connelly: We, certainly, as registrars are not permitted to, but that becomes a part of the record for WIPO to examine or anyone to examine who is saying "why did this person apply for this?". But it is part of our requirements, this is not something we generated, it came down to us from above.

Mr. Sbarboro: And what is a court imputes the knowledge of that purpose to you as a registry or registrar?

Robert Connelly: Would you say that in English?

Mr. Sbarboro: Sure. And I apologize because I have been on the other end of that bullet. If Sarah Deutsch puts down the purpose of registering "BellAtlanticSucks" and she puts down that I have put down for my first amendment rights, that is a whole lot different than taking "GTE.com" and putting down some obscure purpose that is not true, I mean if the rest of the application is not true, you can bet that purpose is not true, that the court is going to say that the registry or the registrar, the knowledge of that purpose listed on that application is imputed to you, so if that person is cybersquatting or deluding or infringing, you are contributing to that delusion or infringement. So, I am wondering if as these applications come in, if you are going to have a staff to review the purpose line?

Robert Connelly: We are told that we are not to. That this is, to any extent that we make a decision on one and miss another we would be in a spot that I guess Compuserve has been in.

Chairperson: I will take, yes, perhaps Mr. Don Heath and if there is one other and then we will break for coffee. Don Heath please.

Don Heath: Let me put some words in your mouth and see if you could agree. Would you recommend that registrars be excluded or preempted if you like from what Phil Sbarboro brought up, such that they collect the information but if a dispute arises that that simply becomes and that they turn over to some authority, whether that is a court or a WIPO process, and therefore they are nothing but an innocent third party in the process that does not have that liability imputed to them by any authority.

Robert Connelly: That is certainly our hope, I think NSI has had occassions where they have been determined to be an innocent third party so, perhaps it might obtained. Was there another question from the audience?

Chairperson: If there is another question or observation? There being none, I thank you Mr. Bob Connelly.

Robert Connelly: Thank you, let me just close by saying that the waiting period, as you know, was made to be optional but in, certainly the original draft from WIPO which I endorse highly, the statement was made that the fact that the person refused that opportunity would disadvantage him if indeed a case does appear to be cybersquatting and so that the administrative challenge panel would say "Uh huh, he was trying to get away with something because he refused the waiting period".

Chairperson: I suggest now that we break for a fifteen minute coffee break after which we will hear from, in the following order, Michelena Hallie of Viacom, Mr. Scott Evans, attorney of the Adams Law Firm and Harold Feld, the Assistant General Counsel of the DNRC. I am sorry, I am told that our agenda is wrong, please excuse me. May I ask Michelena Hallie, are you OK for your submission now? It is alright? Fine. I was too early I am sorry. I am sorry to ask you to did this without coffee.

Michelena Hallie: I had coffee on the way down. First of all, I would like to just confirm the appreciation of Viacom and myself to have the opportunity to discuss this crucial issue in what is a very exciting and informative process. I have talked to several of my colleagues who attended the California sessions and who found it very informative and I appreciate being part of the East Coast contingency. Initially, I would like to reiterate my statements that I submitted several weeks ago. Viacom is truly dedicated to a broad open and expanded use of the Inernet and we do not just say that, we do that, the entertainment industry as a whole, Viacom, in particular through Paramount, MTV, Nickelodeon, has found the Internet an invaluable tool to promote, exploit and generally broadcast our invaluable properties worldwide. However, in developing a structure to permit the Internet to achieve the potential it promises, it must be realised that there is a cottage industry dedicated to registering and warehousing hot marks which threatens the very future of the Internet and it is not just us, as trademark owners, who have this problem. It is a really consumer confusion problem as well. Registrants using our marks to direct traffic to their sites frustrate users. I have received innumerable calls from such users, who are just confused on how they are to use the Internet to find our sites because they are misdirected so regularly. This lack of reliability threatens broad use of the Internet. Viacom and its divisions, since we are in the entertainment industry, is probably particularly vulnerable to this, we are very high profile, our properties are title, and therefore trademark, driven and the Internet is a recognized marketing tool for us. Consumers realize that we are on the Internet so they use the Internet to find us. A year ago I had to sue somebody for registering "TrumanShow.com". I probably have to send claim letters out and pursue people on a majority of the motion picture titles that we are coming out with and we have recently confirmed that there are growing numbers of people who watch the MPAA, so that they can register domain name sites as soon as the MPAA registers our titles which is months and months before those movies appear and I cannot conceive of any legitimate use for registering Truman Show a year before the movie is going to be appearing in the theaters, except to hold us up. The ease of registration and the global nature of the Internet makes this problem one of Viacom’s most significant enforcement problem and the threat that gTLDs will be increased only increases this problem. All of this means that it is crucial, I believe and Viacom believes, that there is a centralized procedure with one set of precedents to handle this problem. I am terrified at the notion of forum shopping by an innumerable addition of gTLDs which would lead me to have to sue people worldwide and even if I won every one of those litigations but one, I would have an international enforcement problem on my hands by that one site which had worldwide jurisdiction. So, with all of that as background, I would like to highlight what I believe are the most crucial procedural elements we should be setting into place here. I am not going to go through all of the details, some of which have been hit on before, but just the ones that we believe are the general ones should be focused on:

First is, some clearance is necessary, I have heard people argue that requiring some clearance of names for gTLDs or for the domain name sites would be a novel concept, I respectfully disagree with that notion, I think that trademark offices throughout the world have similar such clearance procedures in place and I would suggest that those clearance procedures that are in place in trademark offices are more similar than the ability for somebody to just go out and use somebody’s trademark, for the following reason: once you get your site registered with the domain office or the registrar then nobody else can use that site, so there is that exclusionary notion that is similar to what happens when we get our marks registered with the Patent and Trademark Office. Hand in hand with the exclusionary notion, I would suggest means that there should be some clearance before somebody can have such exclusive rights. With that in mind, I would suggest clearly no identical marks should be registered on each gTLD. We should not register virtual identical marks. We have found in the last year a growing number of people who, when StarTrek.com is registered by Paramount will register Star-Trek or StarTreks in order to get around it and try to get people to their sites and I would also suggest some clearance of the Trademark Office, of the registrar, the person who is seeking to register the domain name so that if that person is in the U.K. and trying to register ParamountPictures.com and we have a registration in the U.K. for Paramount Pictures that they be excluded as well.

I would also suggest domain names should not be activated until payment is received, it is amazing how many people out there are ware-housing marks and do not even pay for the ability to ware-house.

Third, that the registrars should be authorized to accept service, we have found it increasingly more difficult lately to even find the people who have registered the domain names, even though they are theoretically to provide addresses it leads nowhere. We have to have somewhere that we can serve these documents. Proof of a registration prior to the domain name registration, and I mean trademark registration, should lead to automatic temporary suspension. I know that this is a controversial issue but for us to have to wait and prove, and spend the time to prove, before that site is not active, is a very hampering tool particularly in line with how easy it is to get that site activated under the current procedure. The losing party should bear reasonable costs, I think this would be a tremendous deterrant against the people who are out there ware-housing site and waiting for us alleged "deep-pockets" to come after them if they knew that they would have to pay for the litigations that would ensue. Judicial resolution should remain an option, there are other thing that in particularly egregious circumstances we, as trademark holders, may want or have to go after, including broader injunctive relief damages and broader issues than domain name issues and we should have the option to do so through the pertinent courts with jurisdiction and finally, I would strongly recommend a famous marks program that would protect what I believe are the primary targets of cyberpirates. A centralized list of marks that once a high threshold is met, cannot be registered by third parties. One recommendation would be proof of worldwide registration, for example, 50 registrations in 30 countries would constitute a famous mark. In order to halt abuse of this process, I would also endorse periodic revisiting or renewal of evidence that has to be filed to maintain the status, an ability for people who disagree with the status being implemented to attack that status and I also recognize the need for legitimate co-existence of other sites. However, I would caution not to permit that co-existence to swallow the rule, as was mentioned previously, it is easy for a third party to come in and say they are going to use a site for fair comment but to assure that that happens is something that should be built into the system.

Chairperson: Thank you very much indeed. Are there any questions or observations please? Madam.

Kristina Rosette: My name is Kristina Rosette, I am a trademark attorney at a firm in town, Covington & Burling and one of the problems that I have been struggling with in connection with this whole process is particularly with the proof of a trademark registration. What are your thoughts for accommodating those instances where two entitities have legitimate claims to the same mark and, in fact, have sought successfully to register those. For example, I mean, as I am sure you know, the PTO does not consider dilution, they just look at likliehood of confusion and, again, there is an argument that block-buster for motion pictures and rental videos is not likely to be confused with Block Buster for fireworks.

Michelena Hallie: Did you pick my mark on purpose?

Kristina Rosette: Well, I am just curious as how you propose to address those concerns because ......

Michelena Hallie: Actually, we sued somebody for fireworks.

Kristina Rosette: Right, I am aware of that but I guess my point is that it is entirely conceivable that in that instance the Patent and Trademark Office could have granted a trademark registration, in which case what would you do when both parties with their trademark registrations in hand? And to me, I think that is the big battle that we have not seen yet.

Michelena Hallie: Now, I recognize that concern and share it. One possible, maybe limiting, solution and then one solution for this process. The possible limiting solution is that there are ways to distinguish two domain names, possibly witha second word Paramount Pictures would certainly only refer to our site but Paramount Hotel or some other co-existence could be alloted for. I also think that there is something to be said for the process that this new cooperation is contemplating putting forward to only deal with the clear cyberpirates. These legitimate trademark co-existance issues are probably something that is too knotty for the kind of on-line arbitration that is being contemplated here.

Kristina Rosette: So the recommendatin that the proof of a trademark registration would apply only in the context of a clear cyberpiracy situation or cybersquatting.

Michelena Hallie: Right and I have thought of some possible solutions. Another companion problem is the ones who go out and obtain a registration. I mean we cannot get a registration in time for our movies and that is another problem that I have. But if a pirate goes out there and registers the Truman Show in one of the countries where they can get that registration in a matter of weeks and I do not bother doing that preemptively because I think it is inappropriate then I have the same registration problem and I think those all have to be considered in the process.

Kristina Rosette: Thank you.

Chairperson: Mr. Harold Feld please.

Mr. Feld: Thank you. If I can make just one or two quick questions. First, I am struck by your comparison when you say that clearances are not at all a novel process for domain names because, after all, they are used in trademark all the time. I assume from your comments that you have a simple domain name equals trademark equation or is there room in the universe that you propose for domain names that are simply addresses or even domain names that are used for non-commercial speech. Again, I will go back to poky.org where you have somebody who is registering their nickname. They have no registration, we do not anticipate that people will start registering their personal nicknames in the near future with the PTO but under the equation that you are proposing it seems that that is automatically barred in favour of the trademark holder. The other question I guess I would have is, of course, Viacom, as the holder of many famous marks related to Star Trek is very used to the problem of dealing with the fan sites on the Internet and, in fact, there was something of a problem I understand initially with the IP attorneys leading out, going after the fan sites and then a sort of a negative backlash in Fandom. By contrast, a competing science fiction television show, Babylon 5 and, to a certain extent, the X-Files also, has encouraged fan sites and, as a result, has enjoyed considerable popularity among fans for that purpose and I just wonder in a broader sense to what extent the IP arm of Viacom coordinates with the business arm and vice-versa for all trademark holders here, recognizing that businesses are not, as a general rule, in the business of trademark production, but are in business to sell some other product.

Michelena Hallie: Let me address the second issue first. I think that your question/statement is built on a misconception that is, I know, broadly held. Viacom is very careful about what sites they go after. On Star Trek in particular. There are thousands of fan sites out there. We do not go after all of those fan sites. We recognize the first amendment right and, quite frankly, the right of the fans and the jewel that we hold to protect the right of the fans in those sites. We are very careful about who we pursue. The fact though is that those people that we pursue are the ones that perhaps complain and spread the news around on the Internet and I would suggest it has gotten to the point where there is just no understanding of our real enforcement program. When you refer to Babylon 5 I think Warner Bros would be shocked to hear that they do not protect their properties on the Internet. That is not what I understand what Warner Bros is doing on the Internet. As far as your first question about trademark use, I recognize that there is a significant group of people who use the Internet for personal use, nothing to do with the commercial use that I am concerned about primarily, but there is a group, and it is a growing group of cyberpirates, who register famous marks, recognizing the trademark value of those registrations and our ability to go after those growing groups, even if they are doing it for no commercial gain, which a lot of them are, will protect consumers and our trademarks from misuse of our trademarks and misdirection of people looking for our sites to those sites.

Chairperson: Thank you very much. Madam, please.

Sally Davis: My name is Sally Davis and I am with Casie. I had two quick question for you. First of all, could you speak to whether or not Viacom’s experiences that you have been discussing have been limited to the gTLD world or if they have also begun to occur for you at the country code Top Level Domains. One of the things that our members, we are a trade association, and our members are saying now is that cybersquatting, cyberpiracy is now spreading out to those country code domains that are either actively marketing themselves, or are simply just accepting whoever comes into them. Is this an issue for you at this point and is this is something that you think that WIPO should address? And I will give you my second question as long as I am here: with respect to the gTLDs, and maybe this was a more appropriate question for Bob Connelly, if they are to add gTLDs, would you advocate some sort of a threshold? For instance, if CORE were given a gTLD and it happened to be .arts, would be there any sort of an inquiry that you would advocate so that only organizations that were somehow related to the arts would be using that gTLD?

Michelena Halle: On your first question, country codes. I do see that as a growing problem and it becomes even more complicated because many countries’ case law is not as developed as this country’s and this is where these issues first arose and so it is more difficult for us to pursue people who have ware-housed and registered our marks in other countries. Another reason that we see the centralized procedure as crucial and very helpful. Could you please repeat the second question?

Kristina Rosette: Yes. The second question had to do with new gTLDs having some threshold in relation to you r........

Michelena Hallie: Right. When I first read about the new gTLDs and the limitations by the .arts etc. I was very concerned that people would just ignore it and use it as a tool to get access to the Internet in an easier way than they may initially. Another problem with these descriptions is that many companies, Viacom included, could fit into almost all of them and so for us to say that we would only have to be concerned about one or two of these gTLDs would be disingenuous. We are in a lot of different businesses so, even if there are descriptions and levels that these groups have to meet in order to be able to qualify for those gTLDs, that is not a fool-proof method of limiting our problem, but it is certainly a first step.

Chairperson: Thank you very much. Mr. Don Heath.

Mr. Heath: Michelena, could you, just to confirm when you talked about "some clearance must be necessary" that indeed you mean a waiting period kind of a thing. And then along those lines to elaborate because you use the words "some clearance" would that also allow the possibility of not necessarily a waiting period but maybe a conditional registration sort of period?

Michelena Hallie: I recognize the concern with the waiting period and while I would certainly endorse such a waiting period I think conditional registration would probably also solve the porblem.

Chairperson: Professor. Froomkin? I am sorry, it was Mr. Ken Fockler.

Mr. Fockler: It is perhaps on the same point, the words you used at one point were "automatic temporary suspension" was that different from the waiting period? Was that when a concern had been registered?

[Scott Evans]: .............. as INTA has stated in its official response to the Clinton administration’s Green Paper, and it reiterated and its executive vice-president, Anne Chasser, testified before Congress on the hearing on trademarks, electronic commerce and the future of the domain name assignment system on June 10, 1998, INTA fully supports WIPO’s efforts and the effort to develop recommendations in accordance with its charge under the White Paper. For this reason, I am pleased to be here today and hopefully, my comments will assist this Panel in fulfilling WIPO’s mandate.

First, I would like to turn to the issue of dispute prevention. As INTA has repeatedly maintained, we believe that minimum standards must be developed for domain name registration in order to ensure the stability and integrity of the Internet. This is not a trademark specific issue. Such standards are necessary in order to ensure that the consuming public will have confidence that the Internet is not simply an unseemly world populated by faceless and nameless fly-by-night operations, pornography peddlers and confidence schemes. Accordingly, INTA suggests that the domain name registration contracts must, at a minimum, require the following: information identifying the applicant, including the applicant’s name, the applicant’s state of incorporate or partnership, if applicable, the applicant’s address, a telephone and facsimile number and an e-mail address. A designation of an agent for service of process, including the agent’s name, address, telephone and facsimile number and an e-mail address. This information will greatly assist Internet users seeking redress. A statement of the applicant’s bona fide intention to use the domain name within a time certain, within a time certain is critical. In order for the applicant’s statement of intent to have meaning, there must be a point at which the applicant must be using the domain name or the domain name returns to the public for use by another party. A statement of a bona fide reason for using the domain name, by requiring such a statement the registration contract would provide trademark owners and the public with the information necessary to evaluate whether a particular domain name is in conflict with its trademarks or trade name. A statement of the intended use of the domain name, such statement would assist in avoiding problems of cyberpiracy. Also, an agreement to submit to person jurisdiction concerning law suits related to the domain name in any country where the applicant or registrant resides, in any country where the root server is located, in any country where the registry is located and in any country where the registrar is located. Of course, this type of agreement should not prevent a challenger from bringing legal action in any country where jurisdiction is otherwise proper. All domain name contracts and applications should be examined for completeness and if not complete, should not be accepted. All application must be renewed annually, such a requirement will assist in keeping all information on the registrant current and clear out all deadwood by returning all non-renewed domain names to the pool of available domain names. A party that willfully supplies false or misleading information in its registration contract must suffer the penalty of losing its domain name registration. All applications must be posted on a publicly available searchable website as soon as possible and practicable.

INTA firmly believes that there should be a 30 to 60 day waiting period before a domain name is activated. Such a waiting period will allow parties time to identify any potential disputes before the applicant invests a considerable amount of time and/or money in its domain name and before any potential consumer confusion can occur on the Internet. Additionally, it is imperative that no domain name be activated until such time as the applicant or registrant has paid the appropriate fee for obtaining the domain name or renewing the domain name. Such a practice will strongly discourage cybersquatters from registering a plethora of domain names identical or similar to known trademarks. In July of 1997, I hosted an INTA round table luncheon to discuss the proposed administrative challenge panels and Green Paper which were in consideration at that time. This meeting was attended by trademark practitioners from small firms, from large firms and from fortune 500 companies located throughout the Carolinas. At this meeting, the great majority of practitioners and trademark owners agreed that the greatest problem with the Internet to date was its first come, first served policy with regard to the registration of domain names. Specifically, it was felt that the creation of an inter-registry registrar directory would greatly alleviate current disputes, i.e. everyone felt that a system should be developed whereby owners of identical or similar domains could co-exist as do the owners of similar or identical trademarks in the actual world. Simply put, everyone at that luncheon felt a system must be developed whereby an Internet user that types in for example: "dubdubdub.domino.com" would be sent to a directory page containing hypertext links to various websites using identical domains. Each listing on this directory page would have a 20 to 25 word description of the goods, services or information available under that domain name. For example, you might find, "dubdubdub.domino.com", a franchiser of pizza delivery services or "dubdubdub.domino.com", a manufacturer of sugar products located in Sugarland, Texas or even perhaps a site in honor of the 1950s rock and roll star Fats Domino. In the alternative a system that requires domain name registrants to include a generic term in the second level domain space, for example: "dubdubdub.fordauto.com" as opposed to: "dubdubddub.fordmodel.com" representing the Ford motor company and the Ford modeling agency. Such practices or requirements would virtually eliminate, in the opinion of the practitioners present at the luncheon, a cyberpirate’s incentive and eliminate, if not all, most conflicts between legitimate concurrent users. Whatever the resolution, it is essential that all registries and registrars, as well as country code top level domains, adhere to these policies. Without such adherence the solutions are nothing more than a pipe dream and remember, consumers and Internet users will ultimately bear the cost of our failing to resolve the current situation in an adequate and effective manner. It is also inappropriate for country code top level domains to market the ISO 31 66 country code as a commercial domain to private vendors. However, it should be pointed out that, in my personal opinion, the current attractiveness of such quasi-commercial sites is probably caused by the current monopolistic climate whereby trademark owners and domain name registrants have no reasonable resolution for their conflicts short of full-blown litigation when a domain name is in dispute. INTA continues to maintain its position that a system for dispute resolution with regard to limited issues, such as cyberpiracy and falsification of information in a domain name registration or application or renewal, should be developed. However, such a dispute resolution process should be non-binding on the national courts. It is also imperative that any dispute resolution be consistent across all generic top level domains and country code domains. In addition, INTA believes that a system allowing owners qualifying as famous marks to proactively exclude the famous mark from availability. Such a system would help to reduce cyberpiracy it is believed. INTA would like to remind the panel today of the ground breaking work conducted by the Internet Ad Hoc Committee and the Policy Oversight Committee with regard to the ACP process. INTA strongly urges that the work previously conducted in this area not be ignored but rather be expanded upon. While INTA believes that a system must be developed to provide qualifying famous marks additional protection in all generic top level domains and country code top level domains, such a system must have a uniform standard for determining which marks qualify for the designation "famous". At a minimum, famous marks should be reserved only for those marks for which an owner demonstrates an overwhelming level of notoriety in the market place. Such factors as length of use, amount of sales under the mark, advertising expenditures for the mark, could serve as a non-exclusive list of factors that a trademark owner must demonstrate in order to qualify its mark as famous. Given the monopolistic nature of such protection, famous marks that is, procedure should also be instituted to allow challenges to any such status determination.

I also want to let this group know, and the panel know, my experiences having dealt with the current dispute resolution system that is available in the United States and in doing so, I would like to relate a story of a client. I have a client that has used a mark since 1929. I was called one day because, apparently, the information technology people with my client had sought to register their mark as a domain name, in the .com domain and they had, unfortunately, waited forty-five minutes too late. Somebody had acquired the domain only forty-five minutes before. My client’s Head of Management of Information Technology sent a letter to the domain name registrant requesting that they relinquished the domain and were willing to pay the cost to cover the transfer. No answer, no response, they called me. I get the letter, I look at the policy, they do not want to pay me a whole lot of money in this unknown area, I say "well, here’s what we do, we will submit the letter you’ve sent, you tell them you own the mark, we’ll follow the policy". So we wrote a letter, we sent it in, it is registered by NSI under the policy because the letter was "not a clear indication of infringement" so, I call my client, I explain the situation. Frustrated, they tell me to write a cease and desist letter, I write a cease and desist letter and two days later receive a declaratory judgment action in Houston, Texas for my client who at his point is frustrated and furious with the system and their attorney. Another problem I would like to explain is a client of mine who has an alphanumeric mark, the registration for this alphanumeric mark is block letters on a red square. They seek to register their alphanumeric mark and find someone else has it. They go to the site, they monitor it for four and a half months and it says "site under construction". They client calls me and says "what do you do?", I laugh and say "nothing but there is a policy, you can find it here, I’ve got it in the notebook, let me read what we need to do". The local in-house counsel writes a letter and is told that their registration because it is the block letters on a square is a design and they are sent back their information. The client is frustrated with the system, frustrated with their attorney. The current system that is in place today in the United States in unworkable and unacceptable.

With regard to new generic top level domains, INTA does not believe the time is right to add new generic top level domains. The reasoning for this was pointed out earlier by the panel: process must be developed before we forge on into an unknown area. Until we can resolve the problems that face us today, it would be very much a violation of the public trust to forge ahead and only create further problems in this area. Throughout this debate it has been opined that the trademark community is asking too much of the technical community and the registries and registrars. I beg to differ with this opinion and as I stated earlier, this is not an issue of trademark owners versus domain name holders. On the contrary, it is an issue of developing a system of self-governance that will inspire confidence in a medium of expression and commerce that is currently testing the very boundaries of current laws and precepts. The challenge is to develop solutions and processes that will enable all parties with an Internet interest; trademark owners, consumers, Internet service providers, registries, registrars, courts, to have confidence in the brave new world of virtual reality. It is our hope at INTA and, in Charlotte, North Carolina, that all parties involved in the current debate will continue an open and honest discord that will soon lead to the development of solutions for the myriad of issues faced in developing this grand experiment of self-government.

Chairperson: Scott Evans, I thank you very much. Before opening the floor, if I may I would like to ask one question: you supported the idea of directory services and I just wanted to follow up with you on how you see this idea working in practice? It is possible for two friends to agree to do anything or almost anything, so it is possible for two corporation or two individuals at the moment to decide to put up a common page. In your support which would serve as a directory to their respective individual and unique websites, in your support of directory services, do you see something beyond that? Do you see it as an obligation at some stage, to share a page when there is identical claims, or similar claims, or similarly waited claims? How in practice do you see it operating?

Scott Evans: Well. There is a system now that is already working under the .IO plan and I would say a model based on that system would be appropriate. I would say it would be an obligation, just as trademarks exist in the world today in different areas, the problem is that Timex Steel cannot use Timex.com if Timex Watches has it. So there has to be a system by the new corporation or by the registries and registrars in cooperation with each other that develops a directory whereby co-existence can occur. This is a problem, this problem causes the majority of problems on the Internet. Cyber-squatters have an incentive to grab up names because they know if you do not have it, you cannot get it, whereas if you went today into a telephone directory and somebody has a listing for J. Scott Evans Law Firm and somebody else has J. Scott Evans Law Firm they can be there together and a consumer can then decide which of the two J. Scott Evans Law Firms they want to call. And that is what I am trying to do, to give a tool to consumers whereby they can make a choice.

Chairperson: I understand the idea. I am just wondering as to its mechanics. Is this any time? Would you suggest that any time you have identical domain names, any time you have identical claims to use of a domain name, that you require those persons to share? That is your position, that is the way you see it?

Scott Evans: Yes. That is correct. If the parties believe that there is cyberpiracy or trademark infringement, the courts in most jurisdictions have laws on the books that will assist in resolving those disputes.

Chairperson: Thank you. Mr. Ken Fockler please.

Mr. Fockler: Thanks. Did I hear you suggest that there might be more information in the second level domain, the Ford example?

Scott Evans: Yes. That is one of the suggestions that came up at. Requiring that any registrant use a generic identifier in the second level domain name would alleviate confusion problems such as Fordmotors.com or Fordauto and so that yes, you have to use a generic just as you would use in proper trademark use if you do not want to lose rights in your mark, always use a generic with you mark.

Mr. Fockler: And do you think you could go back and ask this or is this a going forward position?

Scott Evans: I think that you can go back and ask for it if it is technically feasible. I apologize that I am not a technician so I am not aware but I would suggest that it needs to be a system, any system or model adopted needs to try to capture as many of these as possible.

Mr. Fockler: Probably technical, I just wondered if IBM or Ford would be willing to do that. How we encourage.

Scott Evans: You make it a requirement of having a domain name.

Mr. Fockler: OK. Thank you.

Chairperson: Any observations or comments or questions from the floor please. Mr. Harold Feld?

Mr. Feld: I know, no doubt, that the Panels and trademark holders are getting annoyed with hearing from me but it will be their turn soon. I have two questions, if I may, the first is: are you troubled or have any concern over the fact that all of the solutions that you suggest to the problems that you perceive impose new burdens on new entrants into the market and on registrants and the second is regarding your personal stories, well I certainly understand the frustration of your client and lament that he is frustrated with his attorney over something that is a system problem, as you perceive it. I question why this is not the correct result, that is to say, the willingness of the party in Texas to file for a declaratory judgment certainly would indicate, it seems to me, that this was not a frivolous registration or a cybersquatter but somebody who genuinely believes that they have the right to the use of the name. That being the case, why should they not enjoy the right to the use of the name until the courts have decided it. In the second case, this sort of analysis between representations of marks goes on all the time in the trademark world. I do not understand why it should be the case why we should not engage in that sort of analysis when we look at a domain name as opposed to any other sort of mark comparison.

Scott Evans: Well, under the current policy there is actually no analysis. It is simply a blanket rule that if you are there first, and unless you fall under the points identifying in NSI’s policy, you are disqualified. There is no analysis. Do you have a design with your mark? You are out. It does not matter if there is confusion or not. Do you have a registration that predates the use date of the domain name or the activation date of the domain name? You do not, you are out. If you are a common law user, you are a small company, a small, small company that has used your name for years and somebody else has a trademark registration, you are out.

Mr. Feld: I agree with that, that is a problem.

Scott Evans: You know, and so this cuts both ways and I am not sure I can remember your first question, I apologize.

Mr. Feld: The question was is there a problem with the fact that everything that you are suggesting to remedy this imposes burdens on new entrants?

Scott Evans: I see no great burden on new entrants. I see that a system would be developed where they would have to meet the requirements of the system which I find to be not onerous at all to say "I will use a generic descriptor with my name", I see no costs ensued with that except perhaps on your next printing of your advertisement, down at the bottom you are going to have to change that. But that is not new entrants, new entrants just merely pony-up to the system that is there and meet the requirements, whatever they may be.

Chairperson: Thank you. The gentleman here please.

Jeff Newman: Hi. How are you doing? Can you hear me? I’ll just face this down. My name is Jeff Newman, I work for a law firm, Art & Hadon down town and we represent a whole bunch of sports organizations and one issue that I wanted to ask and raise for you is, one of the concerns is expanding trademark rights beyond what they already have, for example in the United States. One of my question for you is, if we have a proactive protection for famous marks, are you not going to provide greater protections than what they currently enjoy in the United States? For example, even under the theory of dilution, you require a commercial use of the mark. So, proactively preventing any famous mark from being registered is giving them greater rights. For example, if I am, let us say, a New York Yankees fan, I want newyorkyankeesfan.com, if there is a proactive prevention of famous marks being registered that would kick my mark out and I would not even get the chance to dispute the mark.

Scott Evans: Well, I agree that there should be a provision, a procedure that would allow domain name or potential domain name holders to challenge proactive exclusion if they believe that it is over-reaching and I think that that is being proposed today but famous marks today, in the United States enjoy extremely broad protection. Coca-Cola, you are not going to have a car called Coca-Cola, I mean it is just not going to happen, you may try to get a registration but Coca-Cola is going to slam down hard on you in an opposition proceeding and if you, let us say you are really crafty, you lose at the trademark office but you decide, "well, that has nothing to do with use, I’ll go ahead and use it", you are going to be sued. So they still have protection outside the boundaries of their registration and so I think it is kind of a false argument to say that they are getting more than they already have. If they qualify for famous mark treatment, they already receive, in many countries, very broad protection.

Chairperson: Thank you. I had Mr. John Wood, are there any other interveners? Mr. Mark Partridge. Fine, we will take those two and then we will move to the next speaker. Jon Wood please.

John Wood: Good morning, good afternoon, I cannot quite work out which one it is right now. I would like to go back into the area of famous marks and both the work that was done previously under the gTLD MoU and working around, not only the quantitative and qualitative aspect, but the originality aspect because, obviously, one of the issues about famous trademarks is also one is not nearest to a specific region where that identification is very strong. What are your thoughts now having gone through the process before of the 28 by four kind of definition as to how we may develop that. The second part was that you had made reference to the IAHC process which was a very positive development but implied in that IAHC process was almost an exclusivity, do you see that other approaches apart from say of WIPO, say of ICC and other dispute resolution policies would also be included, and if you do, would you be looking towards creating a sort of bench mark requirements or principals that they would all adopt.

Scott Evans: First, let us see if I can remember the question. When I was at Fruit of the Loom we often invoked 6bis under the Paris Convention and, in doing so, we went into jurisdiction where we had minimal or no use but by supplying to the court a reasonable amount of evidence such as: advertising expenditures, magazines with worldwide circulations, regional figures for expenditures in those areas, we were able to prove our mark was famous in that particular jurisdiction and I would say that you could do similar things under this type of proactive exclusion and there should be an acknowledgment that no all trademark are going to be "world" famous, they may have some regional fame and that just needs to be acknowledged under the system and the appropriate criteria set forth. With regard to your next question, I am having the hardest problem remembering the second question.

Chairperson: Exclusivity.

Scott Evans: Exclusivity. Your question was regarding the system that they have developed under the IAHC and POC coordination and I think, yes, there should be benchmark standards for dealing with these particular issues. What you do not want to have happen, is there to be form shopping and that is going to require that all the institutions and organizations that have dispute resolution processes to agree upon one set of standards that they will apply. It is going to require a little bit of maturity on the part of the participants.

Chairperson: Thank you. I will take two more and then we will move on. This is Mr. Mark Partridge.

Mark Partridge: Yes, when Mr. Connelly was up we talked about proactive exclusions or preemptions and the idea was put forward that possibly that proactive exemption would not result in an automatic prohibition against the use of a famous mark but would trigger review by someone. Presumably, by someone other than the registrar. I would like you to comment on that and that and then if we have a desire to allow conflicting legitimate interests to co-exist then is this the stage where you would see the directory coming into play as a way to resolve that?

Scott Evans: From a trademark practitioner’s point of view, I have no particular preference for how this is done. I think that certainly if it is perceived or would be a fairer process to only have a trigger or review then certainly that is what we should do. The whole point here is not to give trademark owners more rights than they already have but to allow them to enforce the rights they currently have and so, certainly, I think that it would be fine if the directories conducted this function and it was merely to bring up a red flag that would require review of whether this domain name should be excluded.

Chairperson: Thank you. Mr. Sbarbaro.

Philip Sbarbaro: Thank you. Scott Evans, a question on where someone can bring one of these suits. I am Prince PLC, I am a small ISP in England. The Prince Sports company has just come after me, under your suggestion I could sue the Prince Sports company, where the registrar is, where the root server, I presume under normal jurisdictional bases, where the plaintiff is, where the damage occurs. But suppose I choose to use that system and I sue them in New Jersey, now under your scenario, that would be allowed, that would be where the registrar is. If Prince Plc, the ISP from England has no connection, no nexus, no jurisdictional basis for being in New Jersey, would you cause them to come to the United States to defend themselves.

Scott Evans: Yes.

Chairperson: Shall we leave it at that or are you going to elaborate.

Scott Evans: No. Well I mean, I think that

Chairperson: No, no, you need not, please.

Scott Evans: Well, yeah OK.

[????]: I just happened to note the Counsel of Prince PLC sitting there having a mild cardiac arrest.

Chairperson: Thank you very much Scott Evans for your presentation. Now I have on our list the following person for the remainder of the day: first of all, Mr. Harold Feld, secondly, Mr. Eric Robertson, is he here? He registered, he is not here apparently. Mr. Griffith Price, is here I believe, Yes, Mr. Jong Long is here? Not at the moment. Susan Anthony is here and Bob Allisat is here? Not at the moment. Let us take first of all, Mr. Harold Feld who is going to give us some food for thought and will be succeeded by lunch.