As an attorney, I, Mark Leventhal, hereby submit the following comments:
Don't
create a list of famous names that would either (a) get first crack at registering
names in the new top level domains (via a sunrise period), or (b) get a "special"
top level domain (e.g., .TMK or .FAME). Having WIPO and/or ICANN decide what
names are "famous" would be disasterous. U.S. courts have had a tough time
deciding what names are "famous" under the Federal Trademark Dilution Act (FTDA)
(15 USC Section 1125(c)), and what one judge might determine is famous, another judge
may not. In addition, there is the issue of whether fame should be determined
by whether a name is famous in a given industry or on an at-large basis. Further,
for ICANN and/or WIPO to say name A is famous, name B is not famous, etc. is not
necessary. In the alternative, I propose the following:
If a registrant
comes forward with a certified copy of a trademark registration from the United States
Patent and Trademark Office (or from the analogous government agency in any other
country), then the registrant will be able to get that same exact (identical) trademark
in the new top level domains during the so-called "sunrise period". This proposal
is based on the old Network Solutions, Inc. dispute resolution policy by which the
"cybersquatted" name had to be identical to the trademark for the trademark owner
to get the "cybersquatted" name back. So, for example, if McDonalds had a trademark
with the US PTO for "McDonalds", then they would be able to get "McDonalds" in the
new top level domains during the "sunrise period". McDonalds, however would
not be able to get "McDonaldsrestaurant" in the new top level domains if they did
not have a trademark with the US PTO for "McDonalds Restaurant". If someone
registered "McDonaldsrestaurant" in the new top level domains, McDonalds could
still get these domains names, either by (a) filing an arbitration proceeding under
ICANN's Uniform Dispute Resolution Policy, or (b) paying the person who registered
these domain names.
This proposal prevents WIPO and/or ICANN from having to decide
whether a name is "famous". It also prevents WIPO and/or ICANN from having
to decide whether to give a company a "substantially similar" name that is "confusingly
similar" to its trademark. Moreover, this proposal implements the best of the
old Network Solutions, Inc, dispute resolution policy and the new ICANN Uniform Dispute
Resolution Policy.
If you have any questions about this proposal. please feel
free to contact me.
Regards,
Mark Leventhal, Esquire
202-530-1322
mleventhal@ablondifoster.com
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