Here is the letter in its entirety
and I think speaks for us small business owners. Note the authors claim that
the Sunrise is against TM law.. Office of Advocacy
U.S. Small Business Administration
April
14, 2000
Sent via e-mail
Michael Palage
Chair of Working Group B
Internet
Corporation for Assigned Names and Numbers
Re: Small Business Impact of Famous
Mark Protection
(ltr from SBA Office of Advocacy)
Dear Mr. Palage:
As
you are aware, the Office of Advocacy of the U.S. Small Business Administration has
held a roundtable discussion and conducted other outreach efforts to ascertain the
small business impact of a proposal under consideration of Working Group B on the
Internet Corporation for Assigned Names and Numbers ("ICANN"), which is tasked with
the project of determining famous trademark protection. Regrettably, the Chief Counsel,
Jere Glover, is out of town this week and was unable to review the information gained
during the roundtable and our other outreach efforts. As a consequence, I am submitting
these comments under my own signature. The Chief Counsel will review and make additional
comments as needed when he returns to the office.
As a consequence of these outreach
efforts, Advocacy has concluded that the current "modified sunrise proposal" would
have a detrimental impact on small business and should not be adopted. Instead, Advocacy
recommends that the working group adopt one of the three alternatives that we describe
below.
To our understanding, the modified sunrise proposal contains the following
elements:
Registered trademark holders would have the option of registering their
trademark and a number of variations thereof, as domain names during a "sunrise period"
whenever a new general Top Level Domain ("gTLD") is added to the Internet. The sunrise
period would be a brief period of time before the new domain is available for the
general public to register.
The trademark holder could only use the sunrise period
to register in unrestricted gTLDs and chartered gTLDs that correspond to the class
of industry in which the trademark is registered.
The trademark holder would
have to pay for each registration.
Once registration is opened to the general
public, trademarks do not receive any further benefit. There would be no use of filters
on domain name registrations.
The sunrise period would be inapplicable to gTLDs
designated for personal and non-commercial use.
Flaws in the Modified Compromise
Proposal
Based upon information gained through our outreach efforts, Advocacy believes
that the modified compromise proposal has foundational flaws that prevent the office
from endorsing its adoption.
First, the sunrise provision allowing early registration
by trademark holders is not grounded in law. U.S. trademark law is a balance of the
rights of holders and the rights of non-infringing users of the mark. Furthermore,
under U.S. trademark law, the holder has duty to police its mark. An early registration
is granting trademark holders rights that are above and beyond the law. It is also
overly-broad and will impact entities who aren’t infringing the mark, as well as
giving preferential treatment to one class of commercial entities over another. Finally,
the sunrise creates a presumption that commercial use is the superior use of the
Internet. While Advocacy believes that commercial use of the Internet is valuable
to the economy, we do not believe that it should be given superior rights to individuals
and non-commercial interests.
Second, the sunrise provision will not be effective
in curbing trademark violations. The number of variations whether it be 5, 20 or
100 will never be enough to prevent all of the possible variations of trademark violation.
Also, trademark violation can occur at the third or fourth levels of the domain name,
such as www.nike.something.com. With the near infinite variations on trademarks and
ability to circumvent the sunrise protections, the sunrise will be overly-broad,
as discussed above, and underinclusive as it will not prevent trademark violation
while depriving thousands of non-trademark holders of the ability to register for
the name they desire to use in a non-infringing manner.
Third, as Advocacy started
in its April 4, 2000 letter, trademarks are already adequately protected by the Uniform
Dispute Resolution Policy ("UDRP") and the Anticybersquatting Consumer Protection
Act ("ACPA"). Also, through its outreach, Advocacy has learned private companies
are now offering a monitoring service, which will track domain name registrations
and notify a trademark holder when a domain is registered that is similar to the
holder’s trademark. Between the UDRP, the ACPA and these monitoring services, trademark
holders have all the tools they need to prevent cybersquatting and enforce their
trademark rights.
Fourth, there are factual differences between the circumstances
surrounding the introduction of new generic Top Level Domains ("gTLDs") and the historical
trademark violations in .com. All trademark holders will be on notice of the introduction
of new gTLDs. No one will be taken by surprise when a new technology erupts on the
scene like it did with .com. Also, the legal landscape has changed with the introduction
of the ACPA and the UDRP to prevent cybersquatting.
Fifth, Advocacy is concerned
that the sunrise period could create legal liabilities for ICANN. As a non-profit
corporation registered in California, ICANN is subject to U.S. law, and there is
a question whether this registration preference violates the First Amendment of the
U.S. Constitution as a restriction of free speech. In addition, it is conceivable
that a sunrise period would constitute a restraint in trade or an attempt to combine
with other persons to monopolize the name space, which is a violation of Sections
1 and 2 of the Sherman Act.
Alternatives that Protect Trademarks without Negatively
Impacting Small Business
Three alternatives were proposed by Advocacy or the participants
during the course of its outreach efforts. Advocacy believes that all three of these
alternatives satisfy the rights of trademark holders while preserving opportunities
for small businesses.
The first alternative is to introduce a large number of new
gTLDs. This expansion of the name space will provide alternative names to businesses
and diminish the value of cybersquatting. With each new gTLD, the ability for any
cybersquatter to extort payment from a particular trademark holder diminishes. Furthermore,
as new gTLDs are introduced to the Internet, consumers will become aware that a .com
Web site is different than a .biz Web site, lessening confusion. This alternative
is especially attractive because of the need for new gTLDs that currently exists
and the opportunities such an expansion will bring to small businesses. The total
number of gTLDs ultimately introduced must be high for this alternative to work effectively.
The introduction could be measured and at a reasonable pace but must be continual
and limited only by what the market will bear.
The second alternative is to create
a chartered gTLDs for use by trademark holders. This gTLD could be called .fame or
.tmk. It’s charter would allow all registered trademarks to register within it. This
insures that trademarks would have the domain name of their choice, assuming that
another trademark holder did not register it first.
The third alternative is a
variation of the modified sunrise proposal. Under this alternative, the holder of
a registered trademark could register the name identical to its trademark during
the sunrise period for a chartered gTLD whose charter corresponds to that trademark’s
international class of industry and service. This means that a the sunrise registration
would only apply to chartered gTLDs and that only those trademarks whose class of
industry or service corresponds with that charter could register during the sunshine
period. Furthermore, the holder may register the domain name identical to the trademark
— no variations. There would be no sunshine period for unrestricted gTLDs and gTLDs
whose charter does not correspond with a class of industry.
Advocacy believes that
this proposal will not have an overly burdensome impact on small businesses, while
affording some measure of special protection for trademark holders. Furthermore,
it will be efficient for registrars because they only have to ascertain that the
sunrise registered name is a registered trademark instead of ensure that 20 or so
other names are variations of a trademark.
To conclude, Advocacy asks the working
group not adopt the modified sunrise proposal. Instead, it should adopt one of the
three alternatives that Advocacy has listed in this letter. We will gladly continue
to work with you and the working group to reach a conclusion that is satisfactory
to all.
Sincerely,
Eric E. Menge
Assistant Chief Counsel
for Telecommunications