TIME WARNER INC.'S COMMENTS ON THE

[THIRD REVISED] DRAFT SUBSTANTIVE GUIDELINES FOR

ADMINISTRATIVE DOMAIN NAME CHALLENGE PANELS (Notice-98-01)

Time Warner Inc. ("Time Warner") appreciates the opportunity to comment on the [Third Revised] Draft Substantive Guidelines for Administrative Domain Name Challenge Panels (hereinafter "Guidelines"). Time Warner appreciates the time and effort of the Policy Oversight Committee ("POC") that were undoubtedly necessary to develop the Guidelines.

Time Warner is the world's leading media and entertainment company. As both an active online company, and the owner of internationally famous intellectual property, Time Warner understands the conflicting interests from which the Guidelines evolved, and commends the POC for its attempt to balance these interests. In order to assist the POC in providing an equitable balancing of these countervailing interests, Time Warner submits the following comments to specific provisions of the Guidelines.

Time Warner understands and appreciates the extensive efforts in which members of the POC have engaged to develop the draft guidelines, including the solicitation of these comments. It is also clear to Time Warner that many, if not most, states around the world have a significant interest in this aspect of the development of the Internet. Toward the goal of minimizing the development of differing frameworks or conflicting rules, then, Time Warner encourages the POC to consult and closely coordinate its efforts with such interested states.

I. Preliminary Comments

In order to analyze the potential effectiveness of the Administrative Domain Name Challenge Panels ("ACPs"), it is crucial for all interested parties to review the costs required for participation, and the time the ACPs expect to take in issuing a determination. Time Warner urges the POC to publish cost and timing guidelines for the ACPs as soon as possible.

II. Comments Regarding "General Principles": Review By Courts Of Competent Jurisdiction

With regard to the Guidelines' "General Principles," Time Warner encourages the formation of the ACPs as an informal mechanism to resolve domain name disputes. Through the ACP process, rights owners may achieve speedy resolution of disputes that would otherwise mire the parties, and the domain name system, in expensive and lengthy litigation. However, ACP proceedings must be an alternative to litigation, not its replacement. While the Guidelines recognize that use of the ACPs does not preclude resort to a court, the Guidelines do not address the effect a ruling of a court of competent jurisdiction will have on the ACPs. It is imperative to the integrity and endurance of the International Council of Registrars ("CORE") that the ACPs abide by the rulings of courts with competent jurisdiction, even where the ACPs have previously issued contrary opinions. Thus, Time Warner recommends that the Guidelines include an explicit statement that the ACP proceedings are a voluntary alternative to courts. This statement should recognize that courts are the ultimate authority, and should state that the ACPs will abide by rulings of courts with competent jurisdiction. In order to ensure the integrity of the CORE system, "competent jurisdiction" must be defined to include only those countries with strong and reciprocal trademark laws, as is required of the countries that are signatories to the Paris Convention.

III. Comments Regarding "Remedies"

A. General And Specific Exclusion

Time Warner agrees that in order to adequately protect intellectual property rights owners and the public, ACPs must address and prevent injuries inflicted by cybersquatters (Guidelines, section V(B)(a)). Time Warner further agrees that general and specific exclusion (Guidelines, sections V(A)(b)-(c)) are useful remedies to provide such protection. These remedies would also serve to avert repeated disputes involving the infringement of the same internationally famous trademarks. Of course, Time Warner agrees that exclusion of marks should be viewed as an extraordinary remedy. The standard for obtaining an exclusion should therefore be stringent, and should be based on longstanding and widespread use of an established mark, the rights to which have been recognized by various jurisdictions and/or competent authorities (Guidelines, section V(D)(f)). To ensure its effectiveness, exclusion of established marks should encompass marks which are "identical," "changes of punctuation," "minor changes" "translations or transliterations," or "clearly misleading" (as these terms are defined in Annex C of the Guidelines).

In order to clarify Section III(B) (entitled Particular Features for Exclusions) and to eliminate redundant language, Time Warner suggests that the first two paragraphs ("Pro-active exclusions" and "Modalities for seeking exclusions") be revised and combined as follows:

Pro-active Exclusions. A request for specific or general exclusion may be submitted pro-actively (without involving a Respondent) with respect to any gTLD(s) as follows: (i) proceeding pro-actively with respect to any gTLD(s) in which a third person does not yet hold registration or exclusion rights in relation to the SLD; (ii) requesting the cancellation of a registration held by a Respondent; (iii) requesting the transfer of a registration held by a Respondent and obtaining the exclusion in other gTLDs; or (iv) requesting the transfer of a specific or general exclusion held by a Respondent.

Provisional exclusion of domain names during the pendency of ACP general or specific exclusion proceedings is an appropriate remedy. In order to clarify section III(B), which discusses this issue, Time Warner recommends that the last sentence in the third paragraph of this section be revised as follows:

The provisional exclusion shall remain in effect while the ACP reviews the claim for pro-active specific exclusion or pro-active general exclusion.

B. Standard For Suspension

Suspension of a respondent's use of a domain name during the pendency of an ACP proceeding should also be viewed as an extraordinary remedy (Guidelines, section VI). Because this remedy terminates a respondent's use of a registered domain name prior to an ACP's determination, a significant standard for obtaining such relief should be established. Time Warner recommends that the emergency ACP board require a showing similar to that required to obtain a preliminary injunction; namely, that a claimant demonstrate (1) a strong probability of success on the merits; (2) that irreparable injury is threatened if a suspension is not issued; and (3) that the balance of harm favors the claimant.

    1. Time Limit
      2.

      Time Warner believes that in order to maintain the continuity of the domain name system, section III(D) should be revised as follows:

      ACPs shall not consider any claim that is submitted more than one year after the date of registration or exclusion with the gTLD-MoU system of the domain name to which the claim relates.

      IV. Comments On "Determinations And Criteria"

      A. Rights And Interests Of Claimant And Respondent

      The Guidelines use different factors to analyze the respective rights and interests of claimants and respondents (Guidelines, sections V(D)(a)-(b)). This appears to be based on an assumed paradigm in which the claimant is an established trademark owner, and the respondent is a modest concern. Time Warner recommends that the Guidelines utilize identical factors to examine the respective rights of respondents and claimants. This will allow for a determination free from prejudgment of the nature of each party’s interests.

      B. Expand Criteria For Determinations

      Annex A and section V(D)(a) of the Guidelines list factors which "may be capable of establishing the existence of an intellectual property right." Time Warner recommends that this section be revised to acknowledge that evidence of rights comes in many forms. Therefore, this section should state that the listed factors are non-exclusive. This non-exclusive list should be expanded to include the type of evidence often used in trademark disputes, such as consumer surveys and evidence of actual confusion.

      Time Warner further recommends that the term "fame" be added to subsection V(D)(a)(i) as follows:

      (i) the original date, duration, extent and geographical area of any existence or registration(s), promotion, fame, market presence, or use of the right;

      C. Criteria For Bad Faith

      Under section V(B)(b) of the Guidelines, the "ACP may make a determination in favor of a Party when it finds that the other Party has manifestly acted in bad faith." Section V(D)(d) lists circumstances which may constitute bad faith. Preliminarily, Time Warner recommends that this section be clarified to ensure that the list is not viewed as exhaustive. Bad faith is a fact-specific inquiry and therefore must be based on the circumstances of each specific dispute before the ACPs.

      Section V(D)(d)(iv) of the Guidelines states that "the procurement by a Respondent who does not use its domain name of a corresponding intellectual property right without intention to use such right," may constitute bad faith. Time Warner suggests that this provision is not warranted by existing trademark law. Procuring trademark rights in order to better one's position in trademark disputes does not necessarily constitute bad faith. In fact, acquiring rights from others is a common and accepted practice. It appears that this section was included to address a situation in which a respondent acquires a right simply to harass a trademark owner without any intention to actually use the acquired rights. However, if the respondent does not use its domain name, this conduct will likely be addressed under section V(D)(d)(i) (registration "for the purpose of disrupting [a] competitor's business"). Therefore, there does not appear to be any reason for the inclusion of this subsection and Time Warner recommends that it be stricken.

      Time Warner applauds the recognition in section V(D)(d)(ii) of the Guidelines that domain name disputes are often exacerbated by the failure of domain name registrants to provide accurate information. Time Warner agrees that the submission of false or misleading application information constitutes bad faith, and expects that as a result of this provision, cybersquatters will no longer be able to hide behind aliases and false addresses.

    2. ACP Determinations

Section V(A) lists four alternative determinations which an ACP may make. It appears, however, that subsections (a) and (d) conflict. Under subsection V(A)(a), an ACP may deny or grant "part of the claim". Subsection V(A)(d), which addresses alternative resolutions such as modification or re-assignment of SLDs, requires that these alternative resolutions be "subject to the agreement of both Parties." It appears as though subsection V(A)(a) allows for the ACP to force these alternative resolutions on the Parties.

In order to clarify the phrase "part of the claim" in subsection V(A)(a), Time Warner requests that this phrase be sufficiently defined to avoid conflict with V(A)(d). Alternatively, Time Warner recommends that subsection V(A)(a) be revised as follows:

    1. To grant or deny a claim

V. Conclusion

Time Warner thanks the POC for the opportunity to participate in the drafting of the Guidelines.

Submitted on Behalf of

Time Warner Inc.