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browse comments: Comments on RFC-2

Comments on RFC-2
Peter Weiss (katygirl@compuserve.com)
Wed, 4 Nov 1998 17:01:44 -0500

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November 4, 1998

Via e-mail process@wipo2.wipo.int

Mr. Francis Gurry
World Intellectual Property Organization

RE: Domain Names and Famous Marks (Our Ref: .48)

Dear Mr. Gurry,

I refer to our conversation concerning the above subject at the FICPI Open
Forum in Florence.

In view of the impending November 6 deadline and the fact that I have just
returned from Europe, I shall confine my comments to the topic -
"conundrum" might be a better word - of famous marks. In doing so, I shall
resist the temptation of distinguishing between famous marks, well known
marks and marks of high repute, unlike the German author who has already
attempted to do so in an article published in GRUR. I shall assume that
most truly famous marks, such as CHANEL, COCA-COLA or MERCEDES-BENZ are
recognizable as such on sight. I shall also assume that owners of arguably
famous marks of a somewhat lower degree of fame than those just mentioned
will wish and be entitled to protection against confusion or dilution
through the unauthorized registration and use of identical or highly
similar words as domain names. Finally, I will assume that whatever agency
is eventually charged with the registration and administration of gTLDs
will have neither the desire nor the competence - at least initially - to
decide whether a given trademark is famous and, if so, whether a given gTLD
"infringes" the mark.

What I would propose, instead, is a system under which
· all gTLDs are electronically published, but
· do not become usable until after the expiration of a
waiting period of, say, thirty days, during which
· owners of famous marks who consider themselves
prejudiced by such names have an opportunity to
object, which
· results in the suspension of the gTLD application
pending resolution of the conflict.

The difficulty, of course, lies in how to resolve the conflict. In this
respect, I venture two suggestions:

· The formulation of a set of guidelines, and
· the constitution of a panel of trademark experts to
advise the administering authority, or actually to
decide the questions put to it.

The guidelines should not be too difficult to formulate in view of the
wealth of precedents from administrative and judicial decisions from around
the world as well as legislative enactments from countries such as Taiwan
which have made provision for special registers of famous marks. The
factors to be considered will presumably include length and geographic
extent of use, published decisions of administrative and judicial
tribunals, volume of sales and publicity expenditures, number of
registrations, recognition survey results, media mentions etc.

A more difficult problem will be the extent of protection with respect to
non-competitive business activities and domain names similar but not
identical to famous marks.

With respect to the former, it may well be that highly distinctive famous
marks such as KODAK, COCA-COLA or CHANEL should be protected against use as
domain names across the economic board, while other less distinctive ones
should be protected only in terms of Art. 16(3) of TRIPS, i.e. in
situations giving rise to the suggestion of a connection between the goods
or services of the owner of the famous mark and the use of the domain name
and provided that the interests of the trademark owner are likely to be
damaged by such use.

As to the scope of protection of famous marks against non-identical gTLDs,
what must be avoided at all costs is the kind of problem illustrated by the
following true example: Chanel, at one point, objected to the registration
of "chanel-boutique.com" as a domain name on the basis of its registration
for a trademark consisting of the words CHANEL BOUTIQUE accompanied by the
well known CC Monogram, only to be told by Network Solutions that it would
not invoke the dispute policy because the name was not identical with the
mark. Here the assistance of trademark experts could, it seems to me, play
a very useful if not indispensable role in determining, inter alia, whether
domain name A’ is confusing with trademark A and whether the use of the
name is likely to indicate a connection with the owner of the mark and is
likely to damage the owner of the mark. On the other hand, obvious
conflicts involving minor discrepancies, e.g. COCACOLA (one word, no
hyphen) or COCA-COLLA, should be able to be resolved by the administering
authority without recourse to trademark experts.

There is, of course, a special problem in analogizing trademark versus
trademark principles to trademark versus domain principles in that, in the
former case the use and registration of each mark is limited to certain
defined goods and/or services, while in the latter case no such limitation
exists for the domain name, except in terms of the extremely broad
definitions, e.g. "firm" or "store", which may eventually be given to
gTLDs. Two thoughts occur to me in this connection:

· The resolution of this problem may benefit more from trademark
vs. trade name than from trademark vs. trademark experience, since
trade names are normally registered - although not normally used -
for very comprehensive business descriptions and

· It may ultimately be desirable to limit the use of commercial
domain names to certain defined activities, e.g. "an agricultural firm"
or "a hardware store", either initially or as a way of resolving a
conflict which may have arisen with a mark or another name.

As to the panel of experts, WIPO has so much experience in selecting such
panels that it would be superfluous for me to make any suggestions.

Sincerely,
PETER WEISS
Senior Intellectual Property Counsel
The Chanel Company Limited
9 West 57th Street
New York NY 10019
Phone: 212 303 5714
Fax: 212 303 5984

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