What is amazing is how trademark law becomes so contorted to commercial interests at ICANN. This proposed list a good example. What is supposed to be a mechanism to protect consumers from confusion about competing goods winds up becoming the creation of a list to prohibit a word's use all together in a name space, for a fee of course. Actual trademark rights and their boundaries, limitations, etc. are irrelevant. Robin On Aug 19, 2012, at 7:07 AM, Milton L Mueller wrote: > Excellent points, Edward. > > From: NCSG-Discuss [mailto:[log in to unmask]] On Behalf > Of Edward Morris > Sent: Friday, August 17, 2012 5:11 PM > > Thank you for the heads up Kathy. This proposal is dangerous not > only in terms of intent but also in terms of proposed implementation. > > Melbourne IT proposes replication of the .XXX Sunrise B rollout for > famous marks. Sunrise B allowed those claiming interest in a word / > mark to make it disappear from the .XXX world by paying a one time > fee that would lead ICM to disappear the word forever. If the brand > owner later wanted to resurrect the word for use in commerce: no luck. > > Forget transparency: there is no public record of who paid to > disappear the word and, in fact, if the three Deltas (faucet, > airline, dental) each wanted to disappear the word in conjunction > with .XXX, ICM would gladly pocket the fee from each of the three > with no one being the wiser. In ICM's ideal world all businesses > would be call "Smith", all Smith's would pay to disappear the word > and ICM would be very rich for doing nothing more than delisting a > single moniker. > > For those of us who live in jurisdictions with use requirements for > trademarks, this novel means of 'defensive registration' turns > that concept on the head with a 'nonuse' requirement. Once delisted > the mark can never be used. This does not so much help consumers > avoid confusion as it does reduce competition and reduce linguistic > possibilities. It is the anti-trademark or, if you will, the > 'nonuse' trademark. > > Trademarks historically are limited by geography and product class. > The internet disrupted these concepts, concepts that are somewhat > akin to fair dealing in other i.p. worlds. The introduction of new > gTld's presented a great opportunity to reintroduce the concept of > product class to the online environment. Politics being what they > are that did not happen. Instead we are once again faced with an > attempt by intellectual property owners to expand i.p. rights > online in a way they could not and have not been able to achieve > offline. > > These efforts must be resisted. If not, let me introduce you to the > 'domain name navigation right' : one of several new magically > created i.p. rights that are being bantered about in the i.p. > community. If they can achieve in ICANN a list of famous marks, > something brand owners have been trying to do since 6bis was > introduced to the Paris Convention in the '20's, who can blame them > for turning to ICANN whenever their attempts to expand i.p. > protection fail elsewhere? > > -- > > Kathy Kleiman [log in to unmask] via alumni.usc.edu > 8:48 PM (1 hour ago) > <cleardot.gif> > <cleardot.gif> > <cleardot.gif> > to NCSG-DISCUSS > <cleardot.gif> > Hi All, > I don't know how many people remember our work on the GPML - the > Globally Protected Marks List. It was a proposal of the > intellectual property community to create a "reserved list" of > words that would be ineligible for registration as second-level > domain names in the new gTLDs. At least, not until the user first > proved that there was no remote likelihood of confusion with any of > the trademark owner's users. > > Needless to say, this is not ICANN's balliwick. It's not a word > smith, or a trademark forum, it's a technical organization. So we, > NCUC, responded that the right place to create protections for > "famous marks" is somewhere other than ICANN. > > We pointed out that while trademarks have international protections > via treaty, famous marks don't. There is simply no consensus > internationally on famous marks, no international list of famous > marks, and no international standard of protection on famous > marks. So Orange, Caterpillar and Virgin are famous marks to > some, and normal words to others. > > So, sigh, the issue rears its head again. Melbourne IT released a > paper called Minimizing HARM where it posits the creation of an > infinite number of "High At-Risk Marks (HARM)," their new term for > Famous Marks, and a permanent protection in all new gTLDs -- > including takedown by the URS dispute process in two days (2 days!) > unless the registrant responds **and pays**. We fought against two > weeks as too short -- especially for the many new gTLD domain names > that will be registered by individuals, small organizations, small > businesses, and people from countries where English is neither a > first (nor second) language. Two days!!?? > > One bright note is that new "HARM" famous marks are supposed to "be > distinctive" and "not match common words," but the paper notes that > "marks like Apple or Gap may not be eligible." The use of the word > "may" instead of will-definitely-not-be-eligible-because-they-are- > normal-words-used-by-everyone suggests to me that the "slippery > slope" of expansion has already begun. > > Plus there's no limit -- infinite numbers of these new soon-to-be- > famous registrations possible. > > So let the fun begin, a new proposal to massively expand > intellectual property rights now takes the floor. > > Press release by Melbourne IT is posted by Reuters at http:// > www.reuters.com/article/2012/08/16/idUS121841+16-Aug-2012 > +BW20120816. It includes a link to the "Minimizing HARM" paper > released yesterday. > > Sigh and best, > Kathy > > > Kathy Kleiman, Esq. > Internet Counsel, Fletcher, Heald & Hildreth, Arlington, Virginia, US > Co-Lead Internet Law and Policy Group > [log in to unmask] IP JUSTICE Robin Gross, Executive Director 1192 Haight Street, San Francisco, CA 94117 USA p: +1-415-553-6261 f: +1-415-462-6451 w: http://www.ipjustice.org e: [log in to unmask]