Module 5 Comments Re: trademarks

[MATT HARPER <mattharper@xxxxxxx>]

To the ICANN DAG Review Committee,

In accordance with the GAC's definition of trademarks that are  
"protected by a statute or treaty".  Both word marks and figurative  
trademarks must be included in the DAG. Sections 2.2.1, 3.2.13.2.3  
need to be amended to include figurative registered trademarks.
Both UDRP panels and WIPO (who will handle any NEW GTLD Applicant  
trademark contentions) hold the view that; in dealing with figurative  
marks, panels argue that figurative elements may be ignored and the  
analysis then proceeds to compare the non-figurative text with the  
domain name. Even if the text of the mark and the domain are not  
identical, panels regularly opine that there can still be confusing  
similarity if the dominant textual element of the figurative trademark  
is reproduced.
UDRP panels applying the above guidelines frequently cite Borges,  
S.A., Tanio, S.A.U. v. James English  (Borges.com). Borges stated that  
“it is open to a Panel to make a finding under the first element of  
the Policy, based on the “dominant [word] elements” of a mark.” The  
decision argues that considering the figurative elements would “always  
place the owners of such marks at a significant disadvantage” and  
“[t]he terms of the Policy include no such limitation against owners  
of such marks.”
The Borges panel concluded that “the more distinctive or particular  
the textual elements of the trademark, the greater the likelihood of  
it being identical or confusingly similar.” In the stroke of a pen,  
§4(a)(i) was rewritten and figurative marks carry the same weight and  
identity as word marks.
The ICANN GAC “Government Advisory Committee” will always favor the  
initiatives of trademark holders as, the countries which they  
represent, have granted such trademark rights.
The GAC noted in its Nairobi communiqué the recommendations of the  
Special Trade Marks Issues Review Team further clarified the inclusive  
nature of all trademarks "protected by a statute or treaty" as set  
forth below.
The GAC Chair stated in his letter dated 10 March 2010 to the ICANN  
Chair regarding DAGv3 "that it is important to ensure that  
intellectual property rights are properly respected in the new gTLD  
space consistent with national and international law and standards".
The GAC expects that the proposed Trademark Clearing House should be  
made available to all trademark owners, irrespective of the legal  
regime they operate under.
Therefore, the developed UDRP/WIPO panel precedent and the clearly  
inclusive intention of the GAC towards both figurative trademarks and  
word marks leave ICANN with a clear directive to include both legally  
recognized forms of trademarks in the DAG and the ICANN Trademark  
Clearinghouse.
Respectfully Submitted,

Matt Harper
Managing Partner
Global Digital LLC
1100 Glendon Ave.
17th Floor
Los Angeles, CA.
90024

V. 805 208 6455 UTC -8
F. 310 689 7272


2.2.1 One entity will authenticate registrations ensuring the word  
marks qualify as registered or are court-validated word marks or word  
marks that are protected by statute or treaty. This entity would also  
be asked to validateensure that proof of use of marks that are from  
jurisdictions that do not conduct substantive review before  
registration.is provided, which can be demonstrated by furnishing a  
signed declaration and one specimen of current use.
3.2 The proposed standards for inclusion in the Clearinghouse are:
3.2.1 Nationally or multi-nationally registered word marks and  
FIGURATIVE marks from all jurisdictions (including from countries  
where there is no substantive review)..
3.2.2 Any word mark that has been validated through a court of law or  
other judicial proceeding.
3.2.3 Any word mark and FIGURATIVE marks protected by a statute or  
treaty