[At-Large] [GTLD-WG] IRT working group report

[Bret Fausett]

With regard to the IRT's GPML, those who have been around ICANN since  
the beginning will remember that this is the second time we have been  
down the "globally protected" path. Back in 2000, it was called  
"globally famous."

Please see ICANN Board Resolution 00.17. It's quoted below.

The Board then, as it should now, referred the issue to WIPO, which  
could not resolve it because it was too politically contentious. The  
only the thing that the ICANN IP interests -- who are not the same  
players as the worldwide IP interests -- have changed is that they are  
calling this "globally protected" and have devised a brightline test  
for what constitutes "globally protected."

The fact that "globally protected" is easy to implement, however, does  
not make implementing it wise. The number of registrations selected is  
arbitrary, not agreed by the nations of the world as significant of  
anything at all, and still does not solve the political problems.

In 2000, the political problems with "globally famous" were twofold.  
First, the trademark community itself couldn't decide whether it liked  
the idea because giving "super protection" to one class of marks  
necessarily meant that some marks were quite so super. Companies with  
strong national and transnational marks, but not necessarily globally  
famous marks, stated that they'd rather have no super protection than  
not be included in the supermark category. (You can already see  
comments complaining about the GPML from trademark owners on the IRT  
comment board.)

A second issue, which we will see again with the so-called "GPML," is  
that giving special consideration to "globally protected" marks  
predominately benefits North American and Euro brands. It would  
largely exclude words like "UNITED" and "APPLE" and "MARS" from the  
TLD space, even making registering such words as an SLD the after  
effect of a UDRP-like process. People in parts of the world where  
United does not fly, where apples are the things that grow on trees,  
and where Mars is not a candy bar but a red dot in the evening sky  
will be limited in their use of language by Western labels. I  
appreciate that some folks will see nothing wrong with that, but it  
was politically contentious before, and I suspect it will be again.

So those of you who weren't here in 2000, read the resolution below  
and ask yourself why, if ICANN asked WIPO to do this before, was it  
not done? The answer is that WIPO couldn't navigate the idea through  
the political swamp. And if WIPO, an intellectual property  
organization, couldn't do it, what makes anyone think ICANN can?

      -- Bret

P.S. Sometimes I think that I only stay involved in ICANN so I can be  
here when these history questions pop up. :-)

--

INFORMATION FROM WIPO

The Board resumed discussion on Mr. Cohen's suggestion that WIPO be  
requested to prepare a list of globally famous trademarks. Several  
Board members expressed concern that ICANN should not affirmatively  
promote an agenda for the protection of famous trademarks; those  
matters are more appropriately dealt with by governments and  
intergovernmental organizations such as WIPO, rather than a technical  
coordination body such as ICANN. Although having a list prepared by  
WIPO might be helpful to ICANN in coordinating technical matters in a  
manner that does not unnecessarily clash with intellectual property  
rights, ICANN should not take the lead in formally requesting  
preparation of such a list. As a result, the Board agreed that it was  
more appropriate to simply note the utility of such a list, rather  
than making a formal request.

Upon motion duly made and seconded, the Board unanimously approved the  
adoption of the following resolution:

    Whereas, the World Intellectual Property Organization in its April  
30, 1999 report to ICANN has offered to prepare a list of globally  
famous trademarks;

    RESOLVED [00.17] that the Board notes such a list would be helpful  
to its assessment of proper action on expansion of the TLD space.

http://www.icann.org/en/minutes/minutes-10mar00.htm