At 05:26 PM 4/13/99 +00-04, you wrote:
Hello! Something must be wrong with my email. What I read below
Iis not only quite garbled and incoherent, but an invitation to disaster.
It will be a cold day in hell when the United States allocates its right
to determine U. S. trademark issues under U. S. trademark law to
an entity which, at the risk of repeating myself, is a paper-pushing
bureaucracy -- and don't get me wrong; the world could not function
without them -- with neither the authority nor the expertise to do
one half of what Kathryn Kleiman proposes.
Bill Lovell
>
>
>You mean to tell me, there's a person who speaks clearly and
>concisely, who hasnt succumbed to quackery and politicking, who
>knows the problems -- and comes through with fair answers?
>
>She gets my vote for the Board, regardless of the constituencies.
>
>kerry
>
>==================
>wipo2.wipo.int/process/eng/dc2-transcript1.html
>[somewhat reformatted]
>
>...My name is Kathryn Kleiman and I am the Co-Founder and
>General Counsel of the Domain Name Rights Coalition. I am also a
>trademark and telecommunications attorney with a practice I call
>Internet Matters. [...]
>
>My purpose here is very straightforward. I have got three things I
>want to do. To review the problems we are trying to solve, to see if
>your Interim Report solves them and if not, to see how we can
>solve the problem together. First, what are the problems we are
>trying to solve. I have some sense of what these are. I have been
>working on domain name issues since 1995, I attended the
>September 1997 Consultative Meeting of WIPO in Geneva, I served
>on the 1996 U.S. State Department Working Group on Domain
>Names and testified before the U.S. Congress in 1998. I know what
>the problems are, we all do. A few people are registering a lot of
>domain names, let’s call them cybersquatters. And a few large
>companies are seeking to protect a lot of brand names and need a
>fast and inexpensive way to challenge those, challenge domain
>names as a number of registries and registrars grows and
>expands. Let's call this group large trademark owners. These are
>your problems. But there is also one more. And that's the mandate
>and concern that you not hurt the amazing thing that we know as
>the Internet. The Internet is an online world in which everyone's
>communication converges, large and small, individual, not for profit,
>commercial or non commercial. Domain names are the way
>individuals, small businesses, large businesses and organizations,
>and I will throw in ISPs since I work with them all the time, of all
>sizes label their space in the Internet and label their speech. You
>must assure that everyone in this group continues to have access
>to domain names and a stable and secure way of ensuring access
>to their sites, which are book-marked and linked and known
>worldwide. Sometimes even without multi-million dollar marketing
>budgets.
>
>So, does your Interim Report solve these typical but critical
>problems? Cybersquatters. I have looked in vain for a definition of
>cybersquatters. I thought this would be your first priority, a clear,
>narrow definition of those people who make their business in
>buying and selling domain names with no added value. And we
>need you to make this your top priority, so that we can separate
>the shark from the weak. So, that we can separate the prince.com,
>the software and high-tech consulting company in Britain, from
>Prince Tennis Rackets, the trademark holder in the United States.
>They are both legitimate businesses with legitimate rights to the
>Prince name, using Prince for legitimate reason. The British courts
>told this as much when they allowed the non-trademark owning
>Prince to keep the domain name.
>
>Where are your lines, where are your definitions, where have you
>clearly separated the token from the Prince? And, let's look at
>large trademark owners, have you made large trademark owners
>happy? Not really from what I hear. And I have been listening. They
>are unhappy for many reasons. But among them is included that
>this is not a global system, that it can't be imposed on all registries
>and registrars regardless of what country, that it is not
>comprehensive enough, that it does not reach enough intellectual
>property rights. They don't seem to be totally happy.
>
>And now have you done harm? Are there small businesses,
>individuals, organizations that flourish today on the Internet that will
>be hurt by what you propose? I think you have heard that very
>eloquently from the people that came here today. We believe there
>are, we believe you have thrown the baby out with the bath water.
>Professor Froomkin has so eloquently laid out many, many of the
>concerns and I would like to urge you Mr. Gurry to put a link on
>your website to Mr. Froomkin's critique .................. because I
>think people should be able to find it.
>
>And you will read in my written comments on Friday you know
>most of my critics and concerns. But I will just point to a few of
>them kind of in passing. One, is that you ask me as a small
>business and domain name owner, and I have mentioned this in
>talking with Ms. Anthony, just to mention the jurisdiction wherever
>the registrar or registry is located, which could potentially be in an
>entirely different country and different language. And you ask me to
>pay the full cost of arbitration, potentially pay the full cost of
>arbitration if I lose, even if in good faith I believe the words I was
>using in my domain name were being used in a generic way, as
>one example. Also, you ask me as an Internet attorney to sign an
>affidavit stating that I know that I don't believe in good faith of the
>registration of my domain name does not interfere or infringe the
>intellectual property rights of another party. Oh! my, you know this
>is a grey area of law. You don't even know, courts don't even know
>whether legal rights are
>
>infringed or diluted, particularly involving Internet issues, until they
>sit down and carefully weigh and evaluate the case of the rights
>that are being infringed with those specific issues before them.
>Some day someone is going to hold me to that. And they are going
>to say, didn't you know there were other Kleiman's out there? Didn't
>you know there were other people using Internet Matters? I mean,
>you have asked me to sign an affidavit that is essentially
>unanswerable, particularly by anyone who knows that legal rights
>on the Internet is a grey area and an area in formation.
>
>You also ask me as a public interest attorney to accept guiding
>principles. In paragraph 99 in kind of in the spirit of the document
>throughout that essentially freeze court decisions and domain
>name trademark conflicts in early 1997. These principles claim to
>be based on a review of the cases that have been cited in national
>courts. But, you fail to include, and this is by no means
>comprehensive, the fact that Canadian and U.S. courts have found
>that a domain name registration in and of itself is not a trademark
>infringement. You also fail to include cases that say that
>registration of CDs.com, that a registration can be generic, even if
>there is a trademark out there for the same word. It can be a
>generic and perfectly appropriate use.
>
>As I said, you will find most of this in my written comments and we
>have heard a lot of it today. So, let's talk about the real issue,
>which is HOW DO WE SOLVE THE PROBLEM TOGETHER. We
>need to stop cybersquatters and we need to give large trademark
>owners access to an avenue of appeal while preserving the rights of
>everybody else. And also, if possible, we need to preserve the
>procedural and substantive rights of certain laws. You know, I don't
>think this is an impossible problem. It is a hard task, I don't think it
>is an impossible problem. And I think the solution lies almost
>entirely in Process. I don't believe we need any new laws or any
>new guiding principles. Intellectual property laws, free speech laws
>and the United Nations Declaration of Human Rights treaties work
>well and they operate and courts today are making good decisions.
>
>That leaves as the real problem issues of speed and cost. Speed,
>because trials aren't just fast enough and cost because trials are
>too expensive. And this is a place where we all agree. I think we
>would all agree, domain name owners and trademark owners.
>Speed and costs and this is where we need your help. What can
>WIPO do to solve the problems of speed and cost? Mr. Gurry
>knows and Mr. Gibson because they are already doing it. They are
>taking the lead in developing an online form that can be used for
>domain name trademark disputes. They have within their power and
>they are doing it to create a model for other online forms. You can
>set the standard and I believe you are well on your way to doing it,
>other people will follow.
>
>What else can we do to keep the costs low and the speed high?
>What we can do is to keep the issues limited, focused and narrow.
>And here is how we do it. First, the dispute forms must have
>limited jurisdiction. Only look at domain name trademark issues,
>not copyright, not rights of personality and not anything else, just
>trademark. Second, the dispute forms must have a varied, limited
>remedy, keeping or revoking the domain name. Not damages, not
>fines, not penalties. Third, very limited scope. The online forms
>should be limited to so-called paper pleadings, all submissions
>should be in writing. If you want a full-blown cross-examination
>discovery, go to court. Just to have people submit materials, and
>let me go into some details here, because I think that these forms
>can be very lean and very mean.
>
>At the outset, make the trademark challenger meet their burden of
>proof. Let them show you that they have a trademark or service
>mark. Let them show you that the domain name owner is using
>that domain name in commerce, which is a critical part of both
>dilution and infringement under U.S. laws and other laws. Let me
>explain that actually, that the trademark owner is using the domain
>name in commerce or that the domain name owner is engaged in
>the business of buying and selling domain names, which is
>cybersquatting. Then, make the trademark challenger give clear,
>specific allegations of how the domain name is causing confusion,
>or infringement or dilution to their marks. Make these ..............
>requirements. Make them show very clearly and very specifically
>what is going on. Don't let them get away with babbling, Network
>Solutions let's them do that, sorry Mr. Sbarbaro. Don't let them get
>away with babbling, make them show what is going on, because
>remember what is at stake here, that when you take away that
>domain name you are going to be taking away that speech, that
>business, that identity on the Internet that people have. Let them
>know, whether it be through advertising or word of mouth, those
>links mean something to domain names that are located and they
>mean something.
>
>Okay, so the trademark owner has met the burden of proof, shift it
>to the domain name owner to respond. Let them show you why
>they think they have rights in the domain name that they have
>registered. Let them show you that they are in apple growing using
>the word apple in a generic way. We are the only ISP on the
>Internet using the word Intercom as a corporate name and
>operating for years without causing any confusion to any other
>Internet service provider or to a real estate firm in California, this is
>a real example I am talking about. And, let them show you why
>they are not cybersquatters. Let them present their defense in as
>formal or informal way as they can handle in a court.
>
>And then have the panel sit back and evaluate. The panel can meet
>in real space, cyberspace, telecom space, satellite space or a
>combination of all the above. And the panel is actually very
>important, it should not be one person. I absolutely believe it
>should be five people. Two attorneys who are known for being pro-
>trademark and an absolutely equal number of attorneys, actually I
>am sure you really need attorneys, but people on the other side
>who are pro-domain name attorneys. And a fifth party who is an
>expert in evidence, choice of law and arbitration. All of the panel
>should be well versed in the domain name system, intellectual
>property law and litigation generally. And from this panel I think will
>emerge a sense of fairness as to what the decision is. Because
>the scope of the authority is so limited, because the material is in
>writing on paper, the evaluation should be very straightforward and
>very fast. One to two hours per case per person maybe one
>afternoon a week to clear all the challenges.
>
>Who should adopt these panels? I believe it is the registrars. After
>all it is their businesses in question, they are the ones dealing with
>the end-user, they are the ones dealing with the domain name
>owners. The domain name owners will have a very good idea where
>the registrars are located. And I should say that where country
>codes are concerned you know sovereignty is in question, so of
>course it should be the local registrar.
>
>Now, we get to the real interesting issue. Who should pay the
>cost? I want to make sure that domain name owners are sitting
>down, because I am going to say that domain owners should pay
>the cost, but in a very interesting way. Let one dollar for every
>domain name registration go to the registrars’ fund for arbitration.
>Don't let the registrars use this, you know, take this fund and use it
>for anything they want. It goes for arbitration. Require that the
>money is only used for arbitration. And then let the cost of bringing
>the domain name challenge be free and let the cost of defending
>the domain name challenge be free. I think this is fair for a big
>trademark owners who are bringing multiple challenges and to
>small businesses, individuals and community organizations who
>are defending the domain name challenge. No one will have to drop
>out of the Process merely because they can't afford to pay.
>
>Is there a role for the World Intellectual Property Organization in all
>of this? Absolutely. I absolutely believe that these panels cannot
>be chosen without your input. Also, without the input of the Domain
>Name Rights Coalition, the American Arbitration Association, the
>International Trademark Association, we are all going to have to
>work together to create fair and balanced panels. And particularly
>to create them for the different registrars that are out there. Further,
>the World Intellectual Property Organization can take the lead in
>keeping these panelists up-to-date on domain name and trademark
>laws and their development in different countries around the world.
>This stuff is moving very, very quickly and it is hard to keep track of
>all the different cases in different countries. I think that is a very
>special role for the World Intellectual Property Organization, so
>providing names and providing information and education.
>
>Now, let's take a step back. Does this system work? Does it solve
>the three problems I set out. Does it create a way of stopping
>cyberpiracy? Yes, it is fast and quick and clean. Does it lower the
>cost and increase the speed for large trademark owners who need
>to police their mark? Yes, it is cheap and fast and it is an online
>solution ................ for the Internet. Does it compromise rights?
>No, it creates no new laws, no new regulation of the Internet.
>Because arbitrators have to find existing laws in traditional choice
>of law principles. So, I think I have met the requirements that we
>are looking for. We have got something of limited scope, limited
>remedies, limited pleadings, limited time, and it works to solve the
>specific problems that we have, but not hurt the existing people on
>the Net. I also think that it will work because it is so clear and so
>easy and so persuasive. The only way things really get done on the
>Internet, the only way you are going to get the country codes to
>follow you is by setting up a Process that they want. Intimidation
>on the Internet ................. are real hard to impose. This will buy
>them up.
>
>Create a Process that is persuasive, that people want, that is quick
>and fast and cheap and it will work without that. So, I think by
>virtue of persuasion an example others would follow it. So, I plead,
>don't throw the baby out with the bath water. We can protect
>everyone with this Process of carrots not sticks and Process not
>law. Thank you.
>
>(Mr. .......................): My question is where do you see this issue
>of mandatory (the rest is inaudible) ........... domain name
>resolution policy that you propose?
>
>(Ms. Kathryn Kleiman): Not mandatory as imposed by ICANN, but
>perhaps as voluntarily adopted in the registrars contract with the
>domain name registrants.
>
>(Mr......................): I see. So if I applied as a domain name holder
>to one of these registrars who followed this procedure, it would be
>part of my agreement that I would participate in this dispute policy?
>
>(Ms. Kathryn Kleiman): I think that would be reasonable.
>
>(Professor Michael Froomkin): Would you be offended by, just
>suppose we believe everything you said that it is all wonderful
>(interruption) ..............
>
>(Ms. Kathryn Kleiman): I believe everything *you* said.
>
>(Professor Michael Froomkin): Ah! no, no don't do that. Let me
>............ something to discourage frivolous ................... of the
>procedure. Wouldn't we have to charge something to keep people
>from doing this to other people?
>
>(Ms. Kathryn Kleiman): As you know I have put in a lot of thought
>to frivolous law suits and the fact that I have defended a lot of small
>businesses from them. But what we have not ............. is very hard
>under the current rules. I think that actually this may be the beauty
>of the quick and dirty Process is that I am not sure there is much
>cost of frivolous suits, because the panel would probably, at least
>the frivolous trademark owner if that what we are talking about, the
>frivolous trademark owner has to put down on paper why they think
>what's going on is infringing. They have to make some kind of
>accurate showing more similar to a preliminary injunction than to
>kind of what we do under Network Solutions Policy, the domain
>name owner will respond. And I think the panel will very clearly and
>very quickly recognize what is going on, particularly if you see the
>same trademark owner again and again and again. I think the panel
>at some point will start dismissing them because they will
>recognize they are frivolous. Just as I think they will be able to spot
>cybersquatters pretty quickly.
>
>----------
>
