| San Francisco regional consultation Fairchild Auditorium, Stanford University
Mr. Robert Connelly (Member, Council of Registrars (CORE)): Good morning to a large group of people. It was said that I should initiate my comments by saying I have lived in Japan 27 years, and that an American speaker always begins with a joke, a Japanese always begins with an apology and so my apology is that I have no joke. I am Robert Connelly, as stated. My company is called PSI. We refer to it as the other PSI, but I rather you think of it as the elder PSI. We formed the company in 1981 to translate Japanese government bid tender notices for foreign businesses. I would like to contradict your statement about RFC1. After the second world war closed, I was transferred from being a radio mechanic to being an IBM tabloiding machine operator at Fourth New Montgomery at San Francisco. So, that's where I became interested first in things which have become computers. I joined the American Chamber of Commerce in Japan. The first committee I joined was the License, Patent and Trademark Committee. It was at a time that pirating of both trademarks and patents were quite common in Japan. If you knew of a foreign invention you could file it and if in a satisfactory period of time the legitimate owner did not discover it, it was yours. We dealt with a lot of problems with that type. I became the Chairman of the Committee in 1977. One of my frequent speakers has been, Professor Doi who in 1971 aided this volume Digest for Japanese Court Decisions in Trademarks and Unfair Competition Cases. This was published in 1971. Unfortunately, we could not get the Chamber to publish a second volume. And that was published in 1977 by the Japan Group of AIPPI. Over the years I stayed with that License, Patent and Trademark Committee. I was on the Board of Governors from 1978 until 1990, five years as Vice President. Our selected Chair left the country rather early in the year in 1983 and I chaired the committee that year. And for the last two years I have been the Vice Chair of the IP Committee which is the successor to the old License, Pattern and Trademark Committee. I became aware of the work of the IAHC, the International Ad Hoc Committee in February of last year. About the same time we had Professor Doi again as a speaker and he edited the Japan section of Famous and Well-known Marks by Frederick Mostert. So, with that background when I read the documents of the IAHC and when I saw the first iteration of the administrative challenge panels, I said this is something that sounds interesting and we should be interested in. So, I went to Geneva where I first met Don Heath and we end up being a signatory to the gTLD-MoU. At that time there was no real thought of becoming a registrar because there was a lottery involved and there would be four registrars allocated to each of 7 geographical zones. It seemed not too likely that we could be successful and being drawn from a hat. However, shortly after that the lottery was canceled and we proceeded to become an applicant and we had the first application in to Arthur Anderson and we were in the first group of three. On the first day they announced the delegation of who is to be involved. To me, the ACPs were the centerpiece of the IAHC, and the concept of having preemptive exclusions of well-known marks and famous marks and I am becoming familiar with the difference between famous and well-known. I felt that, that was a very important thing and that was something that we, with my personal background, companies background would be totally in favor of. I want you to know that the Core group - I am on the Executive Committee of the Core group - the Core stands fully in favor of the ACPs. I have been very disappointed and been very outspoken about the fact that WIPO has not come forth with the ACPs. And this program has dragged on. I met yesterday with the people who have written the software for the shared registry system, the SRS for Core, and I passed it on just now and I would be happy to have the group make extra copies. The ones I dropped on the floor here. Make extra copies of this. This is the work which has been done by Emergent to satisfy the requirements of the Core -MoU. The Core MoU defines how the Core registrars are to operate and the software that they have prepared. The documents that they have prepared were submitted to WIPO in late February or early March of this year and there has been no response to it to this date. We feel that this is a very important thing. Originally, no one could even ask to be a registrar. Get the name and the hat. If they have registered in advance any of the 7 domain names which were suggested in the gTLD-MoU and final report. And then was decided that, that would be okay and then it was decided you could charge for it. And I'd like to share an anecdote. I can assure you that everyone of the registrars who has accepted any advance applications has in their queues many names you know should not be there and should not be delegated. Under the rules which we operate we are not allowed to make those decisions. I think if you think about it you will realize why. Because with the volume of registrations that exist there is no way that any one company can say, aha that's a well-known mark, or that's a famous mark it should not be taken by Joe Six Pack in Oshkosh, Wisconsin. I can tell you personally, we had one lad who requested Nissan which he misspelled and Sumitomo and Mitsubishi one morning, and the following day he just called and said no he could not pay the $15 fee. So, it was not of great interest to him, but they are out there and its very important. That is why the ACPs to me was the centerpiece of the whole program. There are a lot of other important things in there, but that along with the attempt to control cybersquatting and warehousing, the ACPs were very important to me and I think to making the Core work. So, I urge WIPO to get this system finished which we expected to be finished by February of this year. I am disappointed. We spoke in our Executive Committee Conference last week where, for the first time, I heard that your work would not be completed until March of next year. If that might mean that top-level domains will not be delegated to us until after that date. We find that very disappointing. I think that pretty well summarizes where we are, where I came from. No one is typical of Core registrars, because we all come from very different backgrounds. If there are any questions I would be happy to answer them. Mr. Mostert: Just a point of clarification on famous and well-known marks. Am I correct in assuming from your statements that you would require some form of comparable protection that famous and well-known marks have in the physical world in pursuant to Article 6 in the International Paris Convention, and what you are advocating is simply an extension of those rights in the physical world in cyberspace. Is that correct? Mr. Robert Connelly: It was my understanding that indeed lets take Coca Cola or Kodak as being what I grew up knowing as notorious trademarks. These firms could apply for preemptive exclusions of those names. So, if anyone attempted to register, the software would automatically say blip not available. Mr. Muls: I just want to make one clarifying statement and that is that I don't think you should assume that the addition of any new gTLDs is dependent upon the WIPO. On the other hand, I also don't want to say that, that would be even later than the WIPO but it is not dependent upon it. Mr. Connelly: That was the impression that Ken had last week, Ken Stubbs had last week on our telecom that it might be that nothing would happen until after the WIPO work was completed. I am not even sure that even that is determined at this point. We are ready, willing and able to accept names which are submitted to us under any proper authority and say okay these are not available in our data base. No one could ever take them. Mr. Gibson: Thank you very much Mr. Connelly, and I thought I would also at least address one point about the speed at which we are making this process go forward. It is something that we have reflected now as a comment in our WIPO RFC-2. We received in a sense two different points of view on the question of how quickly can we accomplish the work of this process. On the one hand, we received comments that were very similar to those that were made by Mr. Connelly, which is we should move very quickly. This issue has been out there for quite sometime. And then on the other hand, we received comments that were very different, saying you have to go very carefully and deliberately, we have to digest these issues, that there are important interests at stake and they need to be carefully thought out. In our response right now to that, and in the first meeting that we had with the panel of experts, we came to the conclusion that for now, we are going to maintain the deadlines and the timetable that we had posted in our RFC-1. And we are going to try and move forward on that basis and impose a measure of self-discipline to try and keep things going forward as quickly as possible in order to convene an international process. We thought we couldn't do the work that we are trying to do in a shorter time scale, so this is essentially where we are today on that issue. And now I think we will ask for another speaker. Mr. Michael Bosworth (Trademark Attorney, Oppenheimer Wolff & Dunnelly): Good morning. My name is Mike Bosworth, I'm with the firm of Oppenheimer Wolff & Dunnelly, with offices in San Jose. I have been practicing trademark law for around twenty years and on the Internet for not quite ten. My main purpose for being here today is to urge support of the directory method of listing different trademarks for different Internet names. I am sure most of you here know that the directory method is, for example, if a person were to type in dominos.com, they would end up with a page listing domino pizza, domino sugar, domino computer and other owners of the domino trademark, and the user then would be able to select which one of those dominos they wanted. That is the essence of the directory service. I think adopting this would avoid a lot of the conflict that would stem from having one domain name appear only for one particular company and that is my main purpose of being here, to urge the committee to accept that suggestion. That would seem to solve a lot of the dispute resolution problems that arise with the current system. Thank you. Questions? Mr. Connelly: With things dragging along so slowly, I met Paul Caine from the U.K., I met him at 1997 in Kuala Lumpur. And Paul has put together something with the support of some U.K. IP specialists called Internet One and they have been allowed to use the ".io" top-level domain which is delegated to the British Indian Ocean Territory. And they have such a system. And you could go to your browser and look up Lloyds.io and you can see a sample of Lloyds bank, Lloyds insurance and the Lloyds chemists of the U.K. And a fourth listing which shows, that maybe just a fictitious thing something which is in adjudication, lets say someone misusing the name. We happen to have taken PSI, so if you look for psi.io, you would get our two companies, our US and our Japanese companies. So, that is a means by which a directory system has already been created. Mr. Muls: I have a question on the directory services or listing services. I think most people in the crowd will understand what you are referring to. I would like to hear your views on how in such a system the person who registers in such a listing service would have to designate a key word by which he wants to be known and that key word would be associated with your web pages. Mr. Bosworth: Are you saying there would be dominos in sugar or dominos in pizza. That the pizza and sugar is that. Mr. Muls: Well a good example is United. Lets assume that there are 10 "united" companies in the world and they all want to be known as United. So, lets assume that there is a company or an entity that runs such a listing service and the system would work as follows. Anybody can register in that service or in that entity as United, and next to the word United they would register a descriptive of their company, and then in the system there would be a link to the respective URL of the various companies in question. So, the practical result would be if a user by using whatever tool is available enters the key word "united" then the list would come up with 10 Uniteds and next to each United their would be a descriptive of the company in question. Therefore, the user would know which United he really wants to have and then goes to the web page in question. I think this is certainly the way that Internet wants this to work and a possible approach to what you are suggesting. One question that I think may come up is what level of controls at the registration stage in the keyword system would you think would be useful to prevent that a person or a company that pretends to be United, but is not really United uses that name to appear in the same list. Mr. Bosworth: I see that you are asking two questions, and the answer to your first question of what kind of key word or descriptive we use for. A symbol or a emblem would be really helpful. Mr. Muls: Maybe I should rephrase. Should there be in your opinion any verifications at this stage, at the entry stage as it were. Should a person who wishes to be registered in such registrations system, should that person be required to show that there is a genuine connection between the person in question and United, or would you register that automatically a little bit like domain names are registered now. So, that there is a risk that somebody purports to have an association with United, that in reality may not exist. Mr. Bosworth: I would favor the second. Let the person register and if some of the other registrants of United disagree, they could take that to the dispute resolution or court. The reason for his is some of my clients have a domain name that is not the same as their company name, and if they have an association between the domain name and the company name this would preclude that practice. And sometimes domain names that are chosen are catchy. They describe what the company does but they are not the same as that company name. So, there would be no link to the product but there is an association. Mr. Gibson: But then you would have a solution at the back and if a third party has a problem with the association there would be a possibility for that third party. Mr. Fockler: I am just a little confused, if you could just paint me a picture of you sitting at your screen or your browser as to what this directory approach would do and how it would work. Mr. Bosworth: If you were to type in www. say dominos.com, you would end up with a screen showing probably in order of trademark classes or something like that. There would be dominos the symbol that one particular dominos, say for pizza, uses and then you are out to the Dominos Pizza web page. Number two on the list would be dominos for sugar and if you have the logo, you are out to Dominos Sugar. It would just be a sequential listing and I don't know in what kind of order. |