Thank you,
Theresa Swinehart
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MCI RESPONSE TO NOTICE-97-03
MCI appreciates the opportunity to comment on the [Second Revised]
Draft Substantive Guidelines for Administrative Domain Name Challenge
Panels ("Guidelines") and welcomes the efforts of the World
Intellectual Property Organization ("WIPO") in preparing these
Guidelines together with private sector participation.
MCI, a signatory to the gTLD-MoU, supports the establishment of the
Administrative Challenge Panels ("ACPs"). MCI believes that while
resolving the trademark problems is important, it is even more
important to resolve problems with the present domain name
registration process. It will take time, while addressing the domain
name registration process, to resolve the trademark issues. One should
not preclude the other from moving forward.
MCI believes that the ACPs will play an important role in the
resolution of trademark disputes in the context of domain names,
trafficking, and domain name speculation. The WIPO is in a unique
position to establish a dispute resolution system for the trademark
and Internet domain name system by which all parties could abide.
The Second Revised draft raises a number of significant new questions
and concerns, including the scope and role of the ACPs, enforceability
of decisions, and the role of internationally known marks and
demonstrable intellectual property rights. The Second Revised draft of
the Guidelines changes the original focus and intent of the ACPs,
which is set forth in Section 2(f) of the MoU. The Second Revised
draft deletes the concept of "internationally known" marks altogether,
substituting a set of complex, detailed entrance criteria for ACP
decision making. This exceeds the policy, and appears, moreover,
unlikely to provide the quick, efficient and inexpensive dispute
resolution system originally foreseen by the MoU signatories.
While MCI agrees with much that the Private Sector Working Group
("PSWG") sets forth in its response filed on December 5, 1997. MCI did
not sign on to this response because it disagrees with PSWG's stated
position that the trademark problem should be resolved before
de-monopolizing gTLD registration and further disagrees with PSWG
regarding the exact number of new gTLDs to be introduced. MCI has
additional concerns that were not addressed by the PSWG. For example,
the Second Revised draft does not adequately address a definition of
demonstrable rights that ensures that new marks incorporating similar,
pre-existing trademarks, or which are a part of a family of marks, are
also governed by the Guidelines.
MCI does believe, however, that, as proposed by the PSWG, the use of
the Paris Convention or TRIPs agreement countries' registrations is a
good basis to determine proof of the existence of a trademark
registration. This creates a reliable standard, and further encourages
non-signatory countries to sign those treaties, or a subsequent treaty
harmonizing trademark law. The Guidelines should also include
reference to any subsequent harmonizing treaty so that this remains
self-enabling when such a treaty is passed.
Section 2(f) of the gTLD-MoU notes that "a policy shall be implemented
that a second-level domain name in any of the CORE-gTLDs which is
identical or closely similar to an alphanumeric string that, for the
purposes of this policy, is deemed to be internationally known, and
for which demonstrable intellectual property rights exist, may be held
or used only by, or with the authorization of, the owner of such
demonstrable intellectual property rights."
MCI understands this to mean that the ACPs are reserved for
internationally known or recognized marks, for which demonstrable
intellectual property rights exist. However, the Second Revised draft
does away with this concept, replacing it apparently with the concept
of marks for which demonstrable intellectual property rights exist.
This lowered bar may be appropriate for ACP consideration in the
future, but it is beyond the policy contained in Section 2(f) for the
ACPs, and must therefore be carefully considered before adopted. While
there is no established definition for internationally known marks,
MCI believes that internationally known marks should be examined. This
may likely require a treaty, but such a treaty would certainly assist
in resolving some of the problems currently faced.
With regard to demonstrable rights, although it is not appropriate to
protect only registered trademarks against abuse on the Internet, it
is appropriate to protect trademarks in accordance with their
respective strength. While registered trademarks can be strong, this
is not always the case, and the mere existence of a registered
trademark should not, on its own, automatically afford strong
protection on the Internet. At the same time, unregistered rights
should receive careful consideration, so as to draw a balance between
protecting legitimacy and preventing abuse. Therefore, the criteria
set out for demonstrable rights must be carefully thought out and
agreed upon as applicable for trademarks in the context of domain names.
MCI believes that these Guidelines will require much work to ensure
that the ACPs do not exceed their intended scope and adequately ensure
protection for trademarks with regard to domain names on the Internet.
MCI looks forward to reviewing the Third Revised draft of these
Guidelines.