[gnso-iocrc-dt] RE: Summing up Option 7

["Gomes, Chuck" <cgomes@xxxxxxxxxxxx>]

I have one question Jim:  Are you suggesting that an exact match of one of the 
names should not be allowed to be registered by another entity even if the RC 
or IOC does not elect to register the names?

Chuck

From: owner-gnso-iocrc-dt@xxxxxxxxx [mailto:owner-gnso-iocrc-dt@xxxxxxxxx] On 
Behalf Of Jim Bikoff
Sent: Friday, February 17, 2012 5:22 PM
To: Neuman, Jeff (Jeff.Neuman@xxxxxxxxxx); gnso-iocrc-dt@xxxxxxxxx
Subject: [gnso-iocrc-dt] Summing up Option 7

Jeff,

This note, like yours, is made not as an IPC member, but rather in my 
individual capacity.

This note includes the Olympic and Red Cross terms, although we understand that 
the IRC will submit its own comments on the options.

The first parts of Option 7 look appropriate as you have summarized them, i.e.:

"Option 7:  Treat the terms set forth in Section 2.2.1.2.3 as "modified 
reserved names" meaning:

    a)      The names are available as gTLD strings to the International 
Olympic Committee, International Red Cross and Red Crescent Movement, as 
applicable.

    b)      Applied-for gTLD strings are reviewed during the String Similarity 
review to determine whether they are similar to those in Section 2.2.1.2.3. An 
application for a gTLD
             string that is identified as too similar to a Reserved Name will 
not pass this initial review."

In section c), the core issue is, if an application fails to pass initial 
string similarity review, what standard should be used  for an applicant to try 
to overcome the adverse review?  I suggest:

        (1) If the applied-for TLD matches any of the terms in 2.2.1.2.3 (e.g., 
".Olympic" or ".RedCross"), it cannot be registered by anyone other than the 
IOC/RC.

        (2) If the applied-for TLD is not identical to any of the terms in 
2.2.1.2.3, but fails initial string similarity review with one of those 
protected terms, the applicant may attempt to:

            (a) obtain a letter of non-objection from the IOC or Red Cross; or

            (b) claim that it has a legitimate interest in the string; and

            (c) explain why it believes that the new TLD is not confusingly 
similar to one of the protected strings and makes evident that it does not 
refer to the IOC, the Red Cross, or any Olympic or Red Cross activity.

                (d) A determination in favor of the applicant under this 
provision would not preclude the IOC, the Red Cross, or other interested 
parties from bringing a legal rights objection or otherwise contesting the 
determination.

{Explanation:

In (b), a claim of "legitimate interest" would encompass a broad range of 
attempted justifications (including, as you have noted,"traditional knowledge 
and cultural heritage,"), without unduly suggesting that the applicant has 
"rights," or that the claim of legitimacy would prevail over the protected 
terms. A showing of ordinary trademark rights would not typically suffice to 
overcome the protections afforded the Olympic and Red Cross marks, because they 
are afforded superior legislative protection that trumps ordinary trademark 
rights. This was enunciated by the U.S. Supreme Court in San Francisco Arts & 
Athletics v. United States Olympic Committee and International Olympic 
Committee, 483 U.S. 522 (1987).  See also the Greek Statute Article 3 Law 
2598/1998, a translation of which is attached, reserving the right to use the 
terms "Olympic" and "Olympiad" to the Olympic Committee.

In (c), by the same token, the IOC and Red Cross are afforded a high level of 
statutory protection against dilution of their trademarks through use by 
unauthorized parties, even in the absence of confusing similarity. See e.g., 
San Francisco Arts & Athletics, supra. So a showing that an applied-for TLD is 
not confusingly similar to a protected string would not, standing alone, 
overcome an initial refusal.

If, on the other hand,  in an exceptional case, an applicant can demonstrate 
that it has an established legitimate interest in its applied-for TLD string, 
and that the TLD is not confusingly similar to one of the protected strings and 
makes evident that it does not refer to the IOC, the Red Cross, or any Olympic 
or Red Cross activity, then that might constitute an appropriate basis for an 
appeal, to be considered on a case by case basis.

In (d), the provisions allowing an applicant to seek recourse from an adverse 
initial string similarity review permit the applicant to express its claims 
fully.  These provisions should not be construed to imply that an applicant's 
claims would  necessarily prevail over the protected terms, nor should they be 
construed  to prejudice, restrict or diminish in any way the IOC 's,  Red 
Cross' or other interested parties' ability to enforce their legal rights and 
contest an application.}

Best regards,

Jim

James L. Bikoff
Silverberg, Goldman & Bikoff, LLP
1101 30th Street, NW
Suite 120
Washington, DC 20007
Tel: 202-944-3303
Fax: 202-944-3306
jbikoff@xxxxxxxxx<mailto:jbikoff@xxxxxxxxx>